Question 5. How to process Madrid Applications designating Vietnam?

1. After receiving a notice of the International Bureau on a Madrid application designating Vietnam, IP Vietnam shall conduct substantive examination of the application following procedures applicable to mark registration applications filed under the national procedures. Within a time limit of 12 months from the date on which the International Bureau issues the notice, IP Vietnam shall make a conclusion on protectability of the mark.
2. For protectable marks in accordance with the laws of Vietnam, IP Vietnam shall carry out the following procedures:
3. a) Before the above time limit of 12 months ends, issue a decision on grant of protection of the internationally registered mark in Vietnam, record the information to the National Industrial Design Register (in “Internationally Registered Marks” Section) and send to the International Bureau the statement of protection recognition;
4. b) Publish the decision on the Industrial Property Gazette within a time limit of 02 months from the date on which the decision is issued.

The scope (volume) of protection shall be certified as requested in the mark international registration application recorded by the International Bureau and certified by IP Vietnam.

3. If the mark has a part of or the whole goods and services unprotectable or the international registration of a protectable mark has deficiencies (3D photos or illustrations of the mark, etc.), before the above time limit of 12 months, IP Vietnam shall issue a notice of temporary refusal specifying the intent and reason for such intended refusal, and send such notice to the International Bureau.
4. Within a time limit of 03 months from the date on which IP Vietnam issues the notice of temporary refusal of a part of or the whole goods and services, the applicant may correct the deficiencies or appeal against the intended refusal of IP Vietnam.

Any correction or appeal against the intended refusal shall be adopted/conducted following the same procedures applicable the mark registration applications filed under the national procedures, including regulations on filing methods.

5. In the case where IP Vietnam intends to refuse a part of or the whole list of goods and services specified in the notice of temporary refusal, if the applicant adopts qualified corrections and/or has justifiable appeal against the intended refusal within the time limit of 03 months, IP Vietnam shall:
6. a) Issue a decision to accept the protection of the mark internationally registered in Vietnam with the scope (volume) of protection respective to the protectable goods and services, record the information to the National Industrial Design Register (the “Internationally Registered Marks” Section), and send the statement of protection after temporary refusal notice to the International Bureau;
7. b) Publish the decision on the Industrial Property Gazette within a time limit of 02 months from the date on which the decision is issued.
8. In the case where IP Vietnam intends to refuse a part of the list of goods and services specified in the notice of temporary refusal, if the applicant fails to correct deficiencies or adopts unqualified corrections, or fails to have any appeal or has unjustifiable appeal against such intended refusal after the time limit of 03 months, IP Vietnam shall apply the procedures specified in section 5 above solely to protectable goods and services (those not specified in the notice of temporary refusal).
9. In the case where IP Vietnam intends to refuse all of the list of goods and services specified in the notice of temporary refusal, if the applicant fails to correct deficiencies or adopts unqualified corrections, or fails to have any appeal or has unjustifiable appeal against such intended refusal after the time limit of 03 months, IP Vietnam shall issue a decision to refuse the protection of the internationally registered mark in Vietnam and issue a notice of official refusal to the International Bureau.
10. Procedures for complaining and resolving complaints about decisions shall be similar to those applicable to mark registration applications filed under the national procedures if there are grounds to believe that such decisions are made contrary to the laws regarding their contents and the issuance process. The applicant shall be notified of the results of the complaint resolution by IP Vietnam. In the case where a part of or the whole list of goods and services that was refused under such decisions is now protectable or the exclusions are changed (not separately protected) as a result of the complaint resolution, IP Vietnam shall send to the International Bureau the subsequent decision that affects the mark protection, using the form of the International Bureau regarding respective issues.
11. From the date on which the protection of mark international registration is granted in Vietnam, upon request of the mark proprietor, IP Vietnam shall issue a certificate of protection in Vietnam of the internationally registered mark, provided that the requester pay the fees and charges as per regulations.

10. From the date on which the Madrid Application is published by the International Bureau on the Gazette until the date on which the decision on grant of protection is made, or after the time limit of 12 months from the date on which the International Bureau sends the notice of the application designating Vietnam, whichever comes first, if a third party raises concerns about the Madrid Application designating Vietnam, such concerns shall be considered as references during the processing of the application.