Things to note about trademark in VietnamAAA IPRIGHT2
Trademark in Vietnam is one of the very complicated and profound topics that make most individuals and organizations planning to register a trademark in Vietnam have to step back. This is because if an inexperienced party wants to register a trademark in Vietnam, they will have to spend a lot of effort, continuously responding to requests of the NOIP on time and amending the application according to the requests of the NOIP. That’s why, before registering a trademark in Vietnam, it is best that the applicant consult a reputable law firm on IP and learn about the notes to pay attention to when applying for a trademark registration in Vietnam. So, when you want to register a trademark in Vietnam, what are the things that applicants need to keep in mind?
Trademarks in Vietnam
A trademark in Vietnam is a sign used to distinguish the products, services and goods of the parties from each other. More specifically, signs here include figurative signs, word signs, numeral signs, or a combination of figure, alphanumeric, and numerical elements.
In Vietnam, there is a common confusion that most individuals and organizations intending to register a trademark, and including consumers often make, which is the difference between ‘trademark’ and ‘brand’.
Nowadays, the word ‘brand’ is the word that is used more often in everyday life.
However, according to the current law of IP in Vietnam, there is no term regarding ‘brand’ at all. Instead, brand is just a general word to talk about a product/service or a business and is created by many factors such as history, quality, scope,…, including the value of trademarks.
Thus, brand registration, brand exclusive registration, brand protection, etc. or other terms are all used to refer to the act of “registering a trademark” or “trademark registration”.
Classification of trademarks in Vietnam
In Vietnam, trademarks can be divided into word marks, visual marks (logos) or combined marks. This is one of the ways to classify and categorize trademarks.
However, at present, for the sake of simplicity in terms of management and trademark registration procedures in Vietnam, trademarks are divided into 5 main categories, including:
- Collective trademark: Construed as a sign used to distinguish products/services of members of the organization owning the mark from other individuals and businesses who are not members of the organization.
- Certification mark: Mark used to certify that the products/services bearing the mark ensure the characteristics, raw materials, origin, materials, quality, accuracy, etc. have been properly pre-established by an organization that has the function of certifying and authorizing use.
- Affiliate mark: Mark that meet the following criteria: Registered by the same owner, identical or similar, for similar or equivalent products/services that are related to each other.
- Well-known trademark: Mark is considered well-known when it meets Article 75 of the Vietnam Intellectual Property Law according to which the mark needs to gather a large amount of recognition, territorial scope, sales volume, time of use, reputation of the brand, number of countries protected, etc.
- Trademarks containing geographical signs: This is a special type of mark in which the mark includes a geographical element (District name, Province, Region). A trademark containing a geographical sign can be a common mark (no place name part protected) or a collective mark, certification mark or geographical indication.
The remaining types of trademarks are common trademarks.
Right to register a trademark in Vietnam
Individuals and organizations that have the right to register trademarks in Vietnam include:
- Collective organizations (People’s Committees, Cooperatives, Associations, etc.): Register a collective mark managed by that organization.
- Agencies and organizations with certification and control functions: Register certification marks and are responsible for approving and permitting the use of such certification marks.
- Individuals and organizations: Register trademarks for products/services that they produce or provide.
- Enterprises, organizations or individuals: Registering exclusive trademarks even though they do not directly produce but have outsourcing contracts or distribution contracts (with the permission of the manufacturer and the manufacturer does not directly trade products on the market).
- Agents, representative offices, subsidiaries: Registering exclusive trademarks for products/services of parent company, manufacturer (If these subjects agree)
Procedures for trademark registration in Vietnam in 2022
Apply for trademark registration
The first step in the trademark registration process in Vietnam in 2022 is to file a trademark registration application.
Applicants can file on their own or through an Industrial Property representative.
An application for trademark registration in Vietnam will be sent to the National Office of Intellectual Property of Vietnam (or a representative office of the National Office of Intellectual Property of Vietnam).
- Vietnam Intellectual Property Office: No. 384 to 386, Nguyen Trai, Thanh Xuan District, Hanoi City.
- Representative office in Da Nang: No. 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang City.
- Representative office of NOIP in Ho Chi Minh City: No. 17 to 19 Ton That Tung Street, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
Organizations without headquarters, non-manufacturing in Vietnam and/or foreigners who do not reside in Vietnam are required to apply through an Industrial Property representative.
Individuals and organizations residing in Vietnam or having headquarters and production in Vietnam can apply for trademark registration by submitting the application to the National Office of Intellectual Property.
Formal examination of a trademark application
From the date of receipt by the National Office of Intellectual Property, the trademark registration application in Vietnam will be examined in formality within 01 month.
If the registration application is invalid, the NOIP will issue a notice of its intention to reject the valid application and request the applicant to amend and supplement it.
If the application is valid, the NOIP will issue a notice of acceptance of the valid application.
If the application is valid in formality, the NOIP will publish the application in the Industrial Property Official Gazette.
The publication of the application will take place within 02 months from the date the trademark registration application has received a decision to accept the valid application.
Substantive examination of a trademark application
The substantive examination’s purpose is to assess the objects stated in the application according to the protection conditions whether they are capable of protection or not and determine the corresponding scope of protection.
The time limit for substantive examination will not exceed 09 months from the date of application publication.
Decision on grant of trademark protection certificate
If the application is valid and the applicant fully pays the fee on time, the NOIP will give a decision to issue the Trademark Registration Certificate and request the fee to be paid.
If the application is not valid, the NOIP will notify the refusal of the application and specify the reasons for the refusal, along with the needed amendment and supplementation.
Notes on the case of refusal to grant a protection certificate
Usually, the refusal to grant a protection certificate will revolve around the following cases:
The subject stated in the registration application does not fully satisfy the protection conditions
The subject stated in the registration application does not fully satisfy the protection conditions usually has the cause from before the trademark registration procedure, at the search stage.
Specifically, the incomplete and in-depth search will lead to errors in the assessment of the capability to register and protect the trademark, thereby leading to the time and money-consuming implementation of registration procedures.
Applicant not responding, late response
If an applicant files a trademark application in Vietnam through an Industrial Property representative, late or no response is almost never possible. Even if it does happen, it is the fault of the Industrial Property representative and the applicant is fully entitled to claim compensation for their loss.
However, if the applicant submits his/her own application, the NOIP’s non-response or late response to the NOIP’s request occurs frequently.
Because everyone has their own job and expertise. Dealing with one’s own business consumes a lot of the time of the applicant, resulting in them sometimes forgetting to receive notifications, respond to notifications, monitor the progress of trademark registration and make necessary amendments, additions.
Even if they respond on time, the amendments and supplements at the request of the NOIP will sometimes be too complicated for individuals and organizations without IP expertise.
Therefore, applicants who file by themselves often have a low success rate of trademark protection.
Objection by third parties
As mentioned above, sometimes an applicant will not have enough experience to deal with every situation that arises.
One of the most common cases leading to a failed trademark registration is due to objections from third parties.
The objection of a third party is one of the important factors that can affect the decision of the NOIP when considering making a decision to grant or refuse to grant a protection certificate to the requesting IP asset.
Therefore, usually, individuals and organizations without expertise will not be able to give convincing arguments and evidence to oppose the opposing party’s arguments.
The applicant does not pay the prescribed fees in full
Failure to fully pay the prescribed fee is a problem that occurs especially often when registering trademarks not only in Vietnam but also around the world.
This is usually caused by:
- The applicant changes their mind, no longer needs to register for trademark protection;
- The applicant don’t know that they have to pay a registration fee to be granted a trademark certificate;
- The applicant forget to pay fees because they are busy with work;
*** Other Articles***
– You could visit here to see the Trademark Registration in Vietnam.
– You can also check the Vietnam Trademark Law: Detailed Guide And Legal Notes.
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