Trademark Registration in Vietnam

Trademark registration in Vietnam is the process of establishing ownership rights to the trademark of the applicant. Trademarks granted protection titles bring a lot of benefits to businesses. However, how to register a trademark is a question of many people. Let’s find out through the article below.

What is a trademark?

Pursuant to Clause 16, Article 3 of the 2005 Intellectual Property Law: “Trademark means any sign used to distinguish goods or services of different organizations or individuals”.

Trademark registration in Vietnam is really important. It ensures that the trademarks of organizations and individuals are protected by law.

This is becoming more and more important in the face of economic development and integration. To keep your trademarks and services from being copied by other subjects.

The owner has the right to register the trademark

As aforementioned, trademark registration in Vietnam brings plenty of benefits to businesses. However, not all subjects have the right to register a trademark.

Pursuant to Article 86 of the 2005 Intellectual Property Law as amended and supplemented by Clause 16, Article 1 of the 2009 Intellectual Property Law, the subjects with the right to register a trademark include:

– Organizations and individuals may register trademarks to be used for goods they produce or services they provide.

– Organizations and individuals that conduct lawful commercial activities may register trademarks for products they are marketing but produce by others, provided that the producers neither use such trademarks for their products nor object to such registration.

– Lawfully established collective organizations may register collective marks to be used by their members under regulations on the use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or signs indicating the geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

– Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification trademarks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or signs indicating the geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

Two or more organizations or individuals may jointly register a trademark in order to become its co-owners on the following conditions:

a/ This trademark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners;

b/ The use of this trademark causes no confusion to consumers as to the origin of goods or services.

– Persons having the registration right defined in Clauses 1, 2, 3, 4, and 5 of Clause 16, Article 1 of the 2009 Intellectual Property Law, including those having filed registration applications, may assign the registration right to other organizations or individuals in the form of written contracts, bequeathal or inheritance under law, provided that the assigned organizations or individuals satisfy the relevant conditions on the persons having the registration right.

– For a trademark protected in a country is a contracting party to a treaty which prohibits the representative or agent of a mark owner to register such trademark and to which the Socialist Republic of Vietnam is also a contracting party, this representative or agent is not permitted to register the trademark unless it is so agreed by the trademark owner unless a justifiable reason is available.

General conditions for trademarks to be eligible for protection

Pursuant to Article 72 of the 2005 Intellectual Property Law, a trademark shall be eligible for protection when it satisfies the following conditions:

Firstly, it is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors.

Secondly, it is capable of distinguishing the goods or services of the trademark owner from those of other subjects.

The procedure for trademark registration in Vietnam

Pursuant to current law, the procedure for trademark registration in Vietnam includes:

Formality examination

The trademark application as filed shall be subject to examination as to formality within 01 (one) month as from its filing date; however, in practice, it may be extended to further 01–02 (one to two ) months due to the workload of the Trademark Office.

In this process, the trademark application shall be examined as to the accuracy of the information, proper classification of goods/services, etc. If the trademark application is rejected due to its incompliance with the formal criteria, the applicant will be given 01 (one) month for amendment or correction.

If the trademark application meets all requirements as to formality, the National Office of Intellectual Property of Vietnam (NOIP) shall issue a Decision on acceptance as to formality for the trademark application. Any related information of the trademark application shall be accordingly recorded.

Publication of Application

The application is then published in the National Gazette within 02 (two) months from the signing date of the Acceptance Date for opposition purposes. During a period from the publication date to the date on that, a decision on granting/refusal of a certificate of trademark registration is issued, any third party shall be entitled to file opposition(s) against the pending application(s) with the NOIP.

Substantive examination

The application is subsequently examined as to registrability to identify whether or not it meets the criteria for protection such as distinctiveness, availability, etc. The result thereof is expected available within 09 (nine) months from the publication date.

Upon completion of the substantive examination, if the trademark meets the protection criteria, the NOIP shall issue the Decision on intention to grant a Certificate of Trademark Registration and request the applicant to pay the registration fee. On the contrary, if it does not meet protection criteria, the NOIP shall issue a Notification of refusal and give 02 (two) months for the applicant to respond.

In case, the applicant does not file the response to NOIP’s Notification in due course or the submitted response is not accepted by the NOIP, the NOIP shall issue a Decision on refusal to grant a Certificate of trademark registration and give 90 (ninety) days for the applicant to proceed with Appeal.

Registration

Fees for granting and publication must be paid in a period of 01 (one) months as from the signing date of Decision on intention to grant a Certificate of Trademark Registration. After the given time, if no fee is paid, the application will be irrevocably dismissed. Whereas, if fees are sufficiently paid, the NOIP shall issue a Certificate of Trademark Registration and forward the original to the applicant.

In Vietnam, the legal protection of a trademark begins from the date on that the certificate of trademark registration is granted and shall be valid for a period of 10 (ten) years from its filing date and can be renewed for consecutive periods of ten years.

The registered trademark needs not to be in use in Vietnam at the time of registration, but it is vulnerable to an expunction if it is not used for 05 (five) consecutive years calculated backward in time from the date on which a request for termination of the validity of the registration is made by any third party. However, if the trademark is used or re-used at least 03 (three) months prior to the date of the request for termination, the mark likely avoids invalidation.

Required documents of trademark applications in Vietnam

The mark application shall consist of the following documents:

– A request made in a prescribed form (as prescribed in Circular No. 01/2007/TT-BKHCN);

– Documents, samples, information identifying the trademark as provided for in Articles 105 of the 2005 Intellectual Property Law of Viet Nam (e.g. the mark samples and list of goods and services bearing the mark, and regulations on the use of collective or certification marks where the mark is sought for protection is the collective mark or certification mark;

– Power of attorneys, if the application is filed through a representative;

– Documents evidencing the right to registration, if acquired by the applicant from another person;

– Documents evidencing the priority right, if claimed;

– Receipt of fees and charges.

All documents of the application shall be in Vietnamese, except for the documents mentioned at points 3, 4, 5, and other documents supporting the applications, which can be made in another language but shall be translated into Vietnamese at the request of NOIP.

Trademark registration in Vietnam is not a complicated procedure. However, knowing the legal provisions on trademark registration will make the registration process easier. We hope that the above article has brought readers a lot of useful information.

Hanoi Head-office

F4 Building No 112 Trung Kinh Street, Yen Hoa Ward, Cau Giay District, Hanoi City, Vietnam
(84) 2462852839 – Mobile: (84) 981.378999

Email: lienhe@luathoangphi.vn