Tiếng Việt- In the case where a mark international registration in Vietnam of a mark proprietor who is a national of a nation contracting only to the Madrid Protocol is invalidated under Article 6 of the Madrid Protocol, such person may file a converted mark registration application to IP Vietnam for registration of protection of the very mark for part of or all goods or services on the list of goods and services recorded in the invalidated mark international registration under Article 9quinquies of the Madrid Protocol. A converted mark registration application shall be accepted if it satisfies the following conditions:
(i) The application is filed within a time limit of 03 months from the date of invalidation of the relevant mark international registration;
(ii) The international registration has never been before subject to any refusal, termination, or cancellation in whole in Vietnam;
(iii) The application is made using Form provided in Appendix II to this Decree 65/2023 (with the list of goods and services in Vietnamese in the converted application smaller or equal to the list of goods and services that are invalidated in the respective international registration);
(iv) The application satisfies all other formality requirements for mark applications in accordance with the laws of Vietnam;
(v) The applicant adequately pays fees and charges as the same as those applicable to mark registration applications filed under the national procedures, unless otherwise specified at the section 2(ii) below.
A converted mark registration application is allowed to bear the filing date as the international registration date or the late designation date (in case of late designation of Vietnam). In the case where the international registration enjoys the right of priority, the converted mark registration application shall be recorded with the respective date of priority, unless there are grounds to abrogate such right.
- IP Vietnam shall examine the converted mark registration application in accordance with the following principles:
(i) Regarding formalities accepted by the International Bureau in the respective international registration, IP Vietnam shall not perform the re-examination, unless otherwise the application has deficiencies (lack of 3-dimensional illustrative photos or drawings of the mark, etc.).
IP Vietnam shall issue a decision to refuse the application in the case where the application fails to satisfy the conditions specified in the above section 1.
(ii) IP Vietnam shall not re-examine any mark registration application converted from an international registration already granted protection in Vietnam. In the case where the application satisfies the conditions for conversion specified in the above section 1, IP Vietnam shall perform procedures for notifying the intended grant of the protection title, issuing a decision on grant of the protection title, recording it into the National Industrial Design Register, and publishing the decision on the Industrial Property Gazette as for applications filed under the national procedures.
(iii) Regarding valid conversion mark registration application that does not fall into the case specified at above section 2(ii), IP Vietnam shall perform procedures for valid application acceptance, application publication, and content examination and carry out other procedures as for mark registration applications filed under the national procedures.