Registration of trademark in Vietnam

Registration of trademark in Vietnam. Exclusive trademark registration means the trademark owner carries out registration procedures at the Vietnamese Intellectual Property Office to be granted a Trademark Registration Certificate.

What is a trademark?

According to the provisions of Clause 16, Article 4 of the Intellectual Property Law, a trademark is a sign used to distinguish goods and services of different organizations and individuals. Trademark owners, after submitting an application for registration and being granted a Certificate of Trademark Registration, will have the exclusive right to use that trademark for their goods or services.

Types of trademarks in Vietnam

Collective mark

According to the provisions of Clause 17, Article 4 of the Law on Intellectual Property, collective mark means a mark used to distinguish goods or services of members of an organization which is the owner of such mark from marks of non-members of such organization

Certification mark

According to the provisions of Clause 18, Article 4 of the Law on Intellectual Property, certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such mark.

Integrated marks

According to the provisions of Clause 19, Article 4 of the Law on Intellectual Property, integrated marks mean identical or similar marks registered by the same entity and intended for use on products or services which are of the same, similar or interrelated type.

Well-known mark

According to the provisions of Clause 20, Article 4 of the Law on Intellectual Property, well-known mark means a mark widely known by consumers throughout the territory of Vietnam

Normal mark

Normal mark means the mark that do not fall into the above cases. Most of the registered trademarks today are normal marks.

Roles of trademarks

1/ The main function and also the most important function of a trademark is its distinguishing function. Trademarks help consumers distinguish the goods or services of one supplier from the same or similar goods or services of another supplier.

2/ Through its distinguishing function, trademarks contribute to building the image and reputation of products, services and suppliers, creating trust for customers about a certain brand based on characteristics and qualities of the products or services bearing that mark. Thereby, the mark motivates suppliers to constantly invest in improving the quality of products and services to bring good reputation to the mark and increase sales and profits.

3/ When a trademark is granted a Certificate of Trademark Registration, it will be protected by State against the actions of competitors who market products and services bearing the same or confusingly similar mark as the manufacturer’s trademark. Without trademark registration, the investment and marketing of the suppliers will become futile and the supplier cannot apply handling measures to the subject of trademark infringement. This not only reduces the revenue and profits of the supplier, but also damages the reputation of the product if the product of the infringer is of low quality.

Term of trademark protection in Vietnam

Trademarks are protected from the date of issuance of a Certificate of Trademark Registration by the Intellectual Property Office of Vietnam, trademarks have a term of protection of 10 years from the date of filing, trademarks can be extended many times consecutively, every 10 years with the condition of paying the renewal fee.

Conditions for protection of trademark in Vietnam

– A trademark must be a visible sign in the form of letters, words, images, drawings, including holograms, or a combination of such signs, presented in one or more different colors. Currently, Vietnam only protects visible signs, not trademarks expressed in other forms such as scent marks, sound marks, etc.

– A trademark must be able to distinguish the goods and services of the trademark owner from the goods and services of other organizations and individuals.

– Signs identical with or confusingly similar to national flags or national emblems.

– Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.

– Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.

– Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.

– Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

– Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;

– Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;

– Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;

– Signs describing the legal status and business sector of business entities;

– Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark;

– Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;

– Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark;

– Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;

– Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;

– Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;

– Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;

– Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.

Well-known trademarks are automatically protected without having to go through a registration procedure. When a dispute arises, the trademark owner is obliged to prove that the mark is a well-known mark to a competent state agency according to the following criteria:

– The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

– The territorial area in which goods or services bearing the mark are circulated.

– Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

– Duration of continuous use of the mark.

– Wide reputation of goods or services bearing the mark.

– Number of countries protecting the mark.

– Number of countries recognizing the mark as a well known mark.

– Assignment price, licensing price, or investment capital contribution value of the mark.

Instructions for trademark registration in Vietnam

Who can register a trademark in Vietnam?

Vietnamese organizations and individuals, foreign individuals permanently residing in Vietnam, and foreign organizations and individuals having production or business establishments in Vietnam shall file applications for registration of establishment of industrial property rights either directly or through their lawful representatives in Vietnam.

Foreign individuals not permanently residing in Vietnam and foreign organizations and individuals without production or business establishments in Vietnam shall file applications for registration of establishment of industrial property rights through their lawful representatives in Vietnam.

Organizations have the right to register collective marks for their members to use, including: cooperatives, unions of cooperatives, groups of companies, associations and other organizations that satisfy the conditions 02 members or more and established in accordance with the law. Members of organizations produce and trade goods, services independently.

Organizations with the function of controlling and certifying quality, properties, origin or other relevant criteria of goods or services shall have the right to register certification marks, provided that such organizations are not engaged in production or trading of such goods or services.

Organizations and individuals that have the right to register a mark have the right to transfer their registration right to another subject in the form of a contract, for inheritance in accordance with law.

Searching trademarks

The purpose of a trademark search is to see if the mark intended to be registered is identical or confusingly similar to another’s trademarks which was registered in Vietnam for the same type of product or service. This search is required before filing a trademark application for the following reasons:

1. When building a mark, the mark owner has invested a lot of money in developing a mark identity system. In the end, the establishment of ownership rights to that mark depends on the approval of the competent State agency for protection.

2. Time to carry out procedures of trademark registration usually lasts from 18 to 24 months. If protection is denied, the trademark owner will not only lose registration costs but also waste time in vain. Therefore, by a pre-registration search, the trademark owner will save time and money.

Dossier for trademark registration in Vietnam

A trademark registration dossier in Vietnam includes the following documents:

1. 02 registration declarations according to form 04-NH.

2. 07 Trademark samples.

3. Regulations on using collective marks or regulations on using certification marks (if the registered mark is a collective mark or a certification mark)

4. Power of attorney (if the trademark owner applies through a representative).

5. Documents proving the applicant’s right (if the applicant receives the right to register the mark from another person).

6. Documents proving the applicant’s priority right (if the applicant has a claim for priority right). Documents proving the right of priority include: a copy of the application or the first applications certified by the competent authority that received the first application or the transfer of priority right if the applicant receives such priority from others.

7. Proof of payment of fees.

Trademark samples

The applicant must describe the mark to clarify the constitutive elements and meaning of the mark (if any), translate figurative words and translate words of foreign language into Vietnamese words.

The trademark sample must be clearly printed with a size not exceeding 80mm x 80mm, consistent with the trademark sample box in the registration declaration, in which each component of the mark must not be larger than 80mm and not less than 8mm.

If the mark is a hologram, the mark template must be accompanied by a photograph or drawing showing the perspective image and may be accompanied by a descriptive model in the form of a projection.

Regarding the color of the trademark sample: If the mark has a claim for color protection, the correct color of the claim shall be presented. If color protection is not claimed, the trademark sample is presented in black and white.

Classes of goods and services

The goods and services written in the registration declaration must be classified in accordance with the International Classification of Goods and Services under the Nice Agreement. If the applicant does not self-categorize or classifies incorrectly, the Intellectual Property Office of Vietnam will classify and the applicant must pay a service fee.

Where to register trademark in Vietnam?

The applicant may submit a trademark registration application in person or by post to one of agencies of the Intellectual Property Office of Vietnam, as follows:

– Head Office of the Intellectual Property Office of Vietnam, address: 386 Nguyen Trai, Thanh Xuan District, Hanoi City.

– Representative office of the Intellectual Property Office of Vietnam in Ho Chi Minh City, address: 7th floor, Ha Phan building, number 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.

– Representative office of the Intellectual Property Office of Vietnam in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My Ward, Ngu Hanh Son District, Da Nang City.

Registration of trademarks online

To file an online registration of trademark application, the applicant needs a digital certificate and digital signature, registers an account on the Online Application Receipt System and has an account approved by the Intellectual Property Office of Vietnam.

After registering an account on the Online Application Receiving System, the applicant shall declare and submit a trademark registration application on the System. After that, the System will send back to the applicant the Online Confirmation Form.

Within 01 month from the date of submitting the online application, the applicant must go to one of offices of the Intellectual Property Office of Vietnam to present the Online Confirmation Form, attached documents and submit fees.

Certificate of Trademark Registration in Vietnam

After registration, if the mark satisfies the protection conditions in Vietnam, the applicant will be granted a certificate of trademark registration by the Intellectual Property Office of Vietnam.

Validity maintenance of Certificate of Trademark Registration in Vietnam

Within 06 months before the date of expiration of the certificate of trademark registration, the trademark owner must submit a request and fees for validity maintenance.

An application for validity maintenance may be filed later than the above-mentioned time limit but must not be filed later than 06 months from the date of expiration of the certificate of trademark registration and the trademark owner must pay an additional 10% of fees for trademark validity maintenance for each month of late submission.

Termination of validity of Certificate of Trademark Registration in Vietnam

The validity of a Certificate of Trademark Registrationshall be terminated in the following cases:

 – The owner fails to pay the stipulated validity maintenance fee;

– The owner declares relinquishment of trademark;

– The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;

– The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;

– The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;

– The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations.

Cancellation of effectiveness of Certificate of Trademark Registration in Vietnam

A Certificate of Trademark Registration shall be entirely invalidated in the following cases:

– The applicant for registration has neither had nor been assigned the right to register the mark;

– The mark failed to satisfy the protection conditions at the time the Certificate of Trademark Registration was granted.

A Certificate of Trademark Registration shall be partly invalidated as to the part which failed to satisfy the protection conditions.

Any organization or individual may request the State administrative body for industrial property rights to invalidate a Certificate of Trademark Registration, provided that such applicant pays fees. The statute of limitations for exercising the right to request invalidation of a Certificate of Trademark Registration in Vietnam shall be five (5) years from the grant date, except where the Certificate of Trademark Registration was granted as a result of dishonesty of the applicant.

Based on the result of the examination of a request for invalidation of a Certificate of Trademark Registration and the opinions of the parties involved, the State administrative body for industrial property rights shall issue a decision on entire or partial invalidation of the Certificate of Trademark Registration or shall notify refusal to invalidate.

The above provisions shall also apply to the invalidation of international registrations of marks.

Trademark registration service in Vietnam

Trademark registration service in Vietnam includes the following tasks:

– Check the possibility of trademark registration and counsel on adjusting the trademark sample.

– Counsel on documents, order and procedures for trademark registration.

– Drafting trademark registration documents.

– The trademark owner’s representative shall submit the trademark registration application, fees at the Intellectual Property Office of Vietnam and respond to the IPVN’s documents during the application examination.

– Receive the Certificate of Trademark Registration and hand it over to the trademark owner.