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Trademark Filing and Prosecution

1. Legislation

(1). Law No. 50/2005/QH11 of November 29, 2005, on Intellectual Property (2006).

(2) Law No. 36/2009/QH12 of June 19, 2009, amending and supplementing a Number of Articles of the Law on Intellectual Property (2010)
(3) Law No. 42/2019/QH14 of June 14 2019, Amendments to some articles of Law on insurance business and Law on intellectual property (2019)

(4). Decree No. 103/2006/ND-CP dated 22 September 2006 detailing and guiding the implementation of a Number of Articles of Vietnam IP Law regarding Industrial Property, supplemented and revised by Decree 122/2010/ND-CP.

(5). Decree No. 105/2006/ND-CP dated 22 September 2006 on detailing and guiding the implementation of a number of articles of the IP Law on protection of IPRs and State management of IP, amended and supplemented by Decree 199/2010/ND-CP.

(6). Circular No. 01/2007/TT-BKHCN of 14 February 2007, guiding the implementation of Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding the Implementation of a Number of Articles of Vietnam IP Law regarding Industrial Property.

(7).  Circular No. 16/2016/TT-BKHCN of June 30, 2016, amending and supplementing a number of Articles of Circular No. 01/2007/TT-BKHCN of 14 February 2007.

(8). Decree No. 99/2013/ND-CP of 29 August 2010 on sanctioning of administrative violations in industrial property.

(9). Circular No. 11/2015/TT-BKHCN June 26, 2015, detailing and guiding a number of articles of Decree No. 99/2013/ND-CP on sanctioning of administrative violation in the field of industrial property.

(10). Law No. 105/2016/QH13 dated 06 April 2016 on Pharmacy (Law on Pharmacy 2016)

2. Trademark in Vietnam – basic things to know

A trademark, as provided under Article 4.16, Vietnam IP Law, is defined as a sign used to distinguish goods or services of different organizations or individuals. Trademarks under the laws of Vietnam can be categorized in five types as follows:

(i). Trademark including service mark means any sign used to distinguish goods and/or services of different organizations or individuals (Article 4.16, Vietnam IP Law).

(ii). Collective mark means a mark used to distinguish goods and/or services of members from those of non-members of an organization which is the owner of such mark (Article 4.17, Vietnam IP Law)..

(iii). Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods and/or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods and/or services bearing the mark (Article 4.18, Vietnam IP Law).

(iv). Associated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated (Article 4.19, Vietnam IP Law).

(v). Well-known mark: means a mark widely known by consumers throughout the Vietnamese territory (Article 4.20, Vietnam IP Law).

For trademarks to be eligible for protection in Vietnam, they must meet the following requirements:

(i). To be visible signs in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours, and

(ii). To be capable of distinguishing goods or services of the mark owner from those of other subjects as provided under Article 72, Vietnam IP Law. A mark is distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination. Three-dimensional signs (shapes) can be registered as trademarks under the laws and practice in Vietnam.

Thus, the unconventional trademarks based on sound and smell which are not visible are not yet recognised.

Trademark rights are established on ground of a decision issued by the IP Office of Vietnam on trademark registration or protection in Vietnam (with an exception of well-known trademarks where trademark rights can be established on use) as provided per Article 6.3(a) of the IP Law 2005. Vietnam’s trademark regime operates on a first-to-file basis, protection for unregistered trademarks is only granted in limited cases (e.g. an unregistered trademark in Vietnam is enforceable when (i) it is recognized as a well-known mark in Vietnam under Article 4.20 and Article 75 of the IP Law of Vietnam or (ii) it is falls within the scope of “unfair competition” under Article 130 of the IP Law of Vietnam).

3. Establishment of industrial property rights to trademarks in Vietnam

3.1. Right to register trademark in Vietnam

In general, an entity or individual shall be entitled to file an application for a trademark to be used for the goods or services produced or supplied by such entity or individual. Vietnam adopts the first-to-file principle, which grants exclusive trademark rights to the first party that applies for registration of the mark.

An entity or individual legally engaged in the trade of a product manufactured by a third party shall be entitled to file an application for a mark to be used for such product, provided that the manufacturer neither uses such mark for the product nor objects to such filing. This right-to-file principle serves as a ground for initiating a trademark opposition and/or trademark cancellation in Vietnam in case a third party files or registers a trademark of a legitimate owner on bad faith.

3.2 Methods of filing an application for registration of establishment of industrial property rights to inventions

Trademark can be protected in Vietnam by filing an application for registration directly with the IP Office of Vietnam or by filing an International Application under Madrid system.

The application for a mark registration must be filed directly or by mail, to the IP Office of Vietnam or its brand offices in Ho Chi Minh City or Da Nang:

 

INTELLECTUAL PROPERTY OFFICE OF VIETNAM (“IP Office of Vietnam”)

384-386 Nguyen Trai Street, Thanh Xuan District, Hanoi

Tel: 84 24 3858 30 69 / +84 24 3558 82 17

 

IP Office of Vietnam's Branch Office in Ho Chi Minh City.

Address: 27B Nguyen Thong Str, Ward 7, District 3, Ho Chi Minh City, Vietnam

Tel: 84.28. 39322714, 39322715 Fax: 84.28. 39322716

E-mail: noipvp2@hcm.fpt.vn

 

IP Office of Vietnam's Branch Office in Da Nang City

Address: 3rd Floor, No. 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang City, Vietnam;

Tel: 84-236 3889955         Tel: 84 236 3889977

Foreign applicants can obtain a mark registration in Vietnam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Viet Nam through the Madrid Agreement or the Madrid Protocol or both of them.

3.3. First-to-file principle

Vietnam operates under a ‘first-to-file’ system. Hence, it is important to register trademarks in Vietnam as early as possible. In such respect, monopoly trademark-based rights are conferred to the person who is the first to file a trademark application for registration thereof. If there are 2 or more applications for registration of the same mark, for the same goods and/or services, under the same priority conditions, all of the applicants are required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused. In addition, in case there are several applications filed by the same person for identical trademarks for identical goods/services, a trademark registration may only be granted for a trademark claimed in a valid application having the earliest date of priority or filing date among the applications that satisfy all the conditions for registration.

3.4. Priority principle

Per Article 90 of Vietnam IP Law, trademark applicants for subsequent trademark application are allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or such a member country.

As Vietnam is party to the Paris Convention for the Protection of Industrial Property (“Paris Convention”), applicants for trademark registration are entitled to a ‘right of priority’ if the same filing has been made within the last six (6) months in any other country which is also a party to the Paris Convention.

For trademark filing in Vietnam to claim priority based on Paris Convention, the applicant is required to submit a certified copy of priority document for claiming priority right under the Paris Convention (if any) (priority data are acceptable at filing, provided that the certified copy is submitted within 3 months from the filing date).

3.5. Trademark filing in Vietnam: Fees and requirements

3.5.1. Trademark filing fees in Vietnam

Official trademark related fees in Vietnam:

3.5.2. Requirements for trademark application in Vietnam

Requisite Information:

1. Full name, address and nationality of the applicant;

2. Description of the trademark: meaning, colors claimed, translation or transliteration of characters into English if the mark contains foreign characters;

3. List of goods/services to be covered by the trademark and if possible, the class(es) of the respective goods/services according to the International Classification (if known);

4. If a priority is claimed: statement of country, application number and filing date of the original foreign application from which the priority is claimed.

 

Requisite Documents:

1. Power of Attorney from the applicant (notarization is not required);

2. 15 specimens of the mark (the size of each specimen is not smaller than 15mm x 15mm and not larger than 80mm x 80mm);

3. If the Convention priority is claimed: a certified copy of the priority document(s) and the English translation thereof.

Note:

         A copy of the executed Power of Attorney can be accepted at the time of filing trademark application, but the original one must be submitted within 30 days from the filing date.

Important Notes:

In accordance with the legal regulations on trademark in Vietnam, We provides the following advice for possible reference:

1. List of goods/services - Must be clear to specify the goods and services. Vietnam has long adopted the International Classification of Goods and Services even though it has not yet acceded to the Nice Agreement. As of 1 October 2017, the IP Vietnam has acceded to the 11th edition of International Classification for Goods and Services.

2. A trademark application can cover more than 01 class. The priority right belongs to the person who first files application for trademark registration, it is advised to file application for trademark registration as soon as possible.

3. The time limit from the filing to granting date is 12 months, of which 01 month is for formality examination, 02 months are for data preparation for publication of the application and 09 months are for substantive examination and publication of trademark application;

4. The protection title of a trademark is a Trademark Registration Certificate, which is effective from the granting date;

5. The validity term of a Trademark Registration Certificate is 10 years from the regular filing date and can then be renewed indefinitely for consecutive periods of 10 years;

6. A Trademark Registration Certificate can be suspended by a request made by any third party if it is not used in five successive years without any proper reason.

7. Since the fee for filing trademark application depends on the number of goods/services in a class, all the generic terms are not accepted for registration. The applicant, therefore, is required to clarify all the generic terms (if any) in the list of goods/services.

8. To assist clients, during the examination of the trademark application, we do not charge fees for sending Notification of Formality Examination, Notification of Substantive Examination as well as translating those Notifications from Vietnamese into English.

3.5.3. Trademark Application in Vietnam

The following documents are required for a trademark application to be filed with the IP Office of Vietnam:

(i). An application for trademark registration

(ii). Documents, samples, information identifying the trademark claimed for protection in a trademark application.

(iii). Document attesting the entitlement to file an application if the applicant has been assigned that right from another person.

(iv). Priority document if priority is claimed.

(v). Power of Attorney if the application is filed through a representative, and

(vi). Filing fee.

The Trademark Application in Vietnam should consist of the following particulars: 

1. The name and address of the applicant.

2. The presentation and description of the claimed trademark.

3. The name and address of the representative if the application is filed through a representative.

4. Priority information including the country where the corresponding application was filed, the filing date and the number of the priority application, and

5. The designation of goods and/or services to bear the claimed trademark in accordance with the International Classification of Goods and Services under the Nice Agreement.

The trademark description must be provided in the Trademark Application filed with the IP Office of Vietnam by pointing out each of the elements forming the mark and the significance of the mark. If the mark contains words in a foreign language, the pronunciation and the Vietnamese translation thereof must be specified. In general, the features constituting the distinctiveness of the mark should be identified. 

For designation of goods and services, it is required to specify particular goods and/or services of interest. Multiple class applications are applicable in Vietnam, that is, the applicant can claim up to 45 classes of goods/services under one trademark application to be filed in Vietnam. The goods and/or services claimed under the application must be classified based on the International Classification of Goods and Services under the Nice Agreement, currently, the 11th edition of International Classification for Goods and Services.

Sample Trademark Application for registration in Vietnam: (Download)

Sample Trademark Registration Certificate in Vietnam: (Download)

3.5.4. Trademark examination in Vietnam

Under Law on Intellectual Property of Vietnam, a trademark application must undergo 02 phases of examination, i.e., formality examination (or examination as to form) and substantive examination (or examination as to substance).

(1) Formality examination

 

The formality examination will assess whether the application follows the formality standard and the information relating to the identity of the applicant, the description of the mark and classification of the goods/services is sufficient and appropriate. If formal requirements are satisfies, the IP Office of Vietnam will issue a Notification of Acceptance as to form to confirm the filing date and the application number. The formality examination will last 01 month counted from the filing date.

Notice for formality acceptance or Request for correction and amendment

Before the expiration of the time limit above, the IP Office of Vietnam shall complete the formality examination of applications and send notices on examination results to applicants.

- For a valid application, the IP Office of Vietnam shall send to the applicant a notice on acceptance of valid application.

- For an application failing to meet formal requirements, the IP Office of Vietnam shall send to the applicant: a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of two months from the date of notification for the applicant to give opinions or correct errors.

(2) Substantive examination

Then, the mark will be published in the third month from the date of the acceptance as to form and examined as to substance within 09 months as from the date of publication. The substantive examination aims at appraising whether the mark is available for registration and use in connection with the applied goods/services. However, in practice, the time for two phases is often prolonged and in most cases, it takes 12-15 months for a trademark to be registered. The time may be longer if the trademark application is required to be amended or the mark is opposed or provisionally refused.

Notices of Substantive Examination Results

On the date of expiration of the time limit for substantive examination of an application at the latest, the IP Office of Vietnam shall send to the applicant one of the following notices:

- A notice on its intended refusal to grant a mark registration, clearly stating the reason(s) for refusal and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements. The aforesaid time-limit can be extended once, if the signs claimed in the application fails to satisfy the protection conditions;

- A notice on its intended grant of a mark registration and request the applicant to pay the registration/granting fee, if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit above.

Responses to Substantive Examination Results

The deadline for responding to the IP Office of Vietnam’s Notices of substantive examination is within three months of the notice having been issued – this is extendable for a further three months.

Ways to overcome the trademark refusal in Vietnam

A relative or absolute objection grounds may be overcome by:

(i). Submitting arguments in rebuttal;

(ii). Providing a Letter of Consent from the conflicting trademark owner;

(iii). Initiating a non-use cancellation against the other party;

(iv). Providing evidence of use to support a claim for honest concurrent use or prior use.

Decision of refusal

If the applicant to whom the IP Office of Vietnam has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the IP Office of Vietnam shall send a Decision on its refusal of the application.

When dissatisfactory with the IP Office of Vietnam’s refusal Decision, the applicant may proceed with filing an appeal against the refusal Decision or initiate lawsuits at court in accordance with administrative procedures.

Issue the Mark Registration Certificate

Within 10 days after applicant pays fully and on time the prescribed fees and charges, the IP Office of Vietnam shall carry out the procedures for granting the Mark Registration Certificate.

Entry into the National Register of Industrial Property and publication of the Mark Registration Certificate

The Mark Registration Certificate shall be recorded in the National Register of Marks and the decision on granting the mark registration shall be published by the IP Office of Vietnam in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicant pays a publication fee.

For the international mark registered through the Madrid system, the IP Office of Vietnam shall, if accepted for protection, issue and publish a decision on acceptance for protection of an internationally registered mark in its Industrial Property Official Gazette. At the request of an internationally registered mark owner, the IP Office of Vietnam issues a certificate of protection in Vietnam of the internationally registered mark.

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