Many enterprises have the desire and ambition to bring their products to foreign markets, even though they face fierce competition. Consumers use trademarks to identify, buy, create and maintain product usage habits. The registration for trademark protection in the market, especially the foreign market is more critical. It helps to protect the trademark’s owner and creates a basis for handling trademark infringement, limiting copying or negotiating a licensing agreement, franchise agreement or other agreements. In this way, enterprises are not afraid of losing their intellectual property rights, which will fall into the hands of others. Accordingly, this article will demonstrate some fundamental issues for trademark registration abroad.

1. How many ways to register a trademark overseas?

There are three main ways to register for the trademark abroad:

1.1 Registering directly in the target country

Registering directly in the target country is a form of registration of protection directly to the country’s industrial property or intellectual property office (hereinafter referred to as “Designated Country”).

With this registration path, the applicant must understand the intellectual property regulations in the Designated Country. Specifically, these regulations are the conditions for a trademark, the documents to be prepared, the registration process… For language to register, the applicant may need to translate the application into a specific language, usually the official language of the Designated Country. The fees should also be paid according to the fees fixed by the Designated Country. Some countries will require the applicant to have an intellectual property representative to work with the IP office in the Designated Country. 

This way of registration will not be appropriate for trademark owners planning to register for trademark protection in many different countries because the trademark owners must meet all conditions for each Designated Country. Furthermore, when the owner is in the process of finding an export market, or a potential licensing partner, the direct registration will be expensive (in terms of costs) and complicated to implement.

1.2 Registering through regional regimes

Registering by regional regimes is a way of registration filing a single application for trademark protection in the entire region (for some countries in some territories that have established regional agreements related to the registration of intellectual property protection). Currently, there are many regional intellectual property agencies, such as the African Regional Intellectual Property Organization (ARIPO) is a regional intellectual property office for English-speaking African countries[1], European Union Intellectual Property Office (EUIPO) is an intellectual property office that protects trademarks and industrial designs, giving owners a uniform right to be valid in all EU member states through a procedure[2].

1.3 Register by the international regime

The Madrid System is an international trademark system administered by the International Office of the World Intellectual Property Organization (WIPO) to create advantageous conditions for the registration of trademarks in many countries around the world at the same time.[3]  The international application and registration system administered by WIPO significantly simplifies registering intellectual property protection. Instead of filing multiple national applications in various languages, the international application and registration system allows the applicant to file a single application in one language and pay in a specific currency.

The Madrid System is governed by two primary legal documents: the Madrid Agreement and the Madrid Protocol. The Madrid Agreement concerning the international registration of marks was concluded in 1891 and the Madrid Protocol was concluded on June 27th, 1989, in Madrid.  Whether the trademark owner chooses to register under the Madrid Agreement or the Madrid Protocol will have some differences in the registration process. Vietnam has joined the Madrid Agreement and the Madrid Protocol so Vietnamese enterprises can apply to member countries of both regimes.

2. Some notes to registering trademark abroad

2.1 It is advisable to evaluate the possibility of trademark protection and conduct the trademark clearance search

It is very important to evaluate the possibility of trademark protection and conduct the trademark clearance search. Due to many objective reasons, the trademark intended to be registered may be refused because the intended trademark belongs to the case identical, similar/confusing with the protected trademark. Evaluating and conducting a preliminary trademark search helps applicants to avoid the possibility of refused trademark registration. If the applied-for mark is considered to be similar and confusing similarity, thereby leading to low protection level, the applicant may consider adjusting the applied-for mark or changing a new mark.

Although many different objective reasons may limit the ability to evaluate and research tools, conducting a trademark clearance search is an effective way to help the trademark owner decide whether he should spend time on or invest money in registering a trademark in that country.  

2.2 Deadline for fee payment

Depending on the way of registering trademark, the form of payment and fee schedule may differ. For direct registration in the Designated Country, the application deadline and application fee will be automatically applied according to the regulations of that country. Meanwhile, if filing through the Madrid System, the fee is a basic fee of 653 Swiss Francs (or 903 Swiss Francs, if the mark is coloured); or a standard designation fee of 73 Swiss Francs.

The above overview of the ways to register for trademark protection overseas. There is not a one-size-fit-all way. Instead, it depends on the specific circumstances. Understanding the overview of trademark registration overseas creates opportunities for enterprises to choose an appropriate form of registration for their businesses.