KENFOX trademark prosecution services do not end when a trademark is successfully registered. We understand that getting your IP in place is important, but it’s just the start. Managing intellectual property is a vital ongoing task once patent protection, trade mark protection or design registration is in place. Trademarks, like any type of intellectual property, require consistent attention. To maintain IP such as trademark protection, you must pay renewals on time.
A company’s trademarks are the DNA that makes up its identity and sets it apart from the competition. As such, proper protection of a company’s trademarks requires focused and proactive measures. Trademark renewal is an integral part of such measures. We understand that when it comes to the safeguarding and maintenance of such valuable assets you can’t afford to cut corners or take risks. Reinstating lapsed IP rights is difficult at best, if not impossible. Because of this, it’s vital to monitor deadlines and never miss renewal dates. You need to be sure you are entrusting the safety of your IP rights to an IP agent that has the expertise and stability to protect them.
KENFOX attorneys provide full registration maintenance and renewal services for domestic and international trademarks. The firm’s attorneys proactively monitor the clients’ trademark portfolio and handle the filing of required documents throughout the life of each mark. We prosecute and maintain many trademark applications and registrations in various jurisdictions, such as Vietnam, Laos, Cambodia, Myanmar and other ASEAN countries every year.
1. When a trademark renewal request must be filed in Vietnam?
In Vietnam, the validity term of a trademark registration in Vietnam is ten years from the date of filing and can be renewed each time for ten years unlimitedly. A request for trademark renewal is required to be submitted to IP Vietnam within 6 months prior to the expiry date of the trademark registration. A grace period is available, requiring a trademark owner to submit a renewal request no later than 6 months after the registration's expiration date, with a payment of a surcharge.
A surcharge of 10 percent of the normal renewal fees (USD 6) will be charged per class for each month late.
2. What documents are required for trademark renewal in Vietnam?
To renew a trademark registrations in Vietnam, the following documents should be provided to us:
(i) Original Trademark Registration Certificate/s (if any).
(ii) One original duly signed/sealed Power of Attorney (“PoA”).
› Trademark Registration Certificate for renewal in Vietnam: It is optional for trademark owners to submit their original Trademark Registration Certificate/s for renewal purposes in Vietnam.
• If an original Certificate is submitted, IP Vietnam will affix a renewal note directly thereon. The original Certificate affixed with such a renewal note will be returned to the trademark owner after renewal completion.
• If the original Certificate is not submitted, IP Vietnam will issue a Decision on renewal after 3-4 months from the filing date of the renewal request. IP Vietnam is under no obligation to send such a renewal Decision to us.
› PoA : The PoA should be signed and sealed only. Neither notarization nor legalization for the PoA is required. To avoid Office Action, the POA should be signed by the legal representative with such acceptable titles as Director, General Director, Chairman, President.
3. Is it possible to renew our trademark in Vietnam without submitting the original Trademark Registration Certificate?
Yes, it is possible. For further information, please refer to our remarks in point 2 above.
4. Is it mandatory to submit evidence of use when renewing a trademark registration in Vietnam?
A trademark owner is not required to submit evidence of for the purpose of trademark renewal in Vietnam.
5. What if we don’t file a request for renewal of our trademark within the prescribed time-limit?
If no request for renewal of a trademark registration is filed within 6 months prior to the expiry date of the trademark registration or within the grace period (6 months after the registration's expiration date), the trademark is automatically lapsed.
6. Will IP Vietnam notify the owner/agent of the trademark expiration due to non-renewal?
Vietnam IP Law and the subordinate regulations do not provide for this. In practice, the trademark owner or his agent will not be notified of the trademark expiration due to non-renewal.
7. Can a lapsed trademark be restored?
It is theoretically possible. However, restoring a lapsed mark in Vietnam has not been tested in practice. To restore a lapsed trademark, the trademark owner is advised to submit evidence of force majeure that prevented him from renewing his trademark registration in a timely manner.
8. Can a trademark be re-registered by third parties after lapse or is there a certain time period during which re-registration by 3rd parties is blocked?
Statutorily, a lapsed mark is blocked from re-registration by third parties for 5 years from the expiration date unless it has not been in use within 5 years before the expiration date.
9. How Much Does it Cost to renew a trademark registration in Vietnam?
Fees for renewing a trademark registration in Vietnam depend on the number of class/es in each trademark registration.
Official filing fee for renewing a trademark registration in Vietnam is US$54 for the first class of goods/services in each trademark registration and, US$40 for each further class, from the second one. Our firm offers flat fee services for trademark renewal filings in Vietnam. To obtain a quote simply contact us by sending your trademark registration number.
10. Is it required to record a recordal of IP agent change if a trademark renewal request is filed through another IP agent different from the previously recorded one at the initial filing?
No, it is not required.
11. Will the Vietnam IPO issue a trademark renewal certificate?
No, the Vietnam IPO will not issue a trademark renewal certificate. If a trademark owner submits the original trademark registration certificate for renewal, the Vietnam IPO will affix a renewal note directly thereto and return it to the trademark owner upon completion of the renewal.
If no Original trademark registration certificate is submitted, the Vietnam IPO will issue a Decision on renewal and publish the trademark renewal in the industrial property of Vietnam within 3-4 months of the renewal being completed.
12. Must the trademark owner proceed with recordal of his address change concurrently with renewing his trademark registration in Vietnam?
No, recording the trademark owner's address change concurrently with renewing his trademark registration in Vietnam is not required. In other words, a trademark owner in Vietnam can renew his or her trademark registration without having to record a change of address. Please keep in mind that the trademark owner's address on the Power of Attorney (PoA) must match/be identical to the address on the trademark registration.
Despite the foregoing, a trademark owner is advised to record his address change concurrently with renewing his trademark registration in Vietnam to avoid delay in subsequent enforcement actions if a trademark infringement is detected. When it comes to the trademark enforcement (if any), there may be a problem in that (i) an alleged infringer may question about the actual address of the trademark owner in an attempt to halt the enforcement proceedings, (ii) the Vietnamese enforcement authority may agree to seek clarification on the issues raised by the alleged infringer and (iii) enforcement actions may be delayed as a result of the alleged infringer's request for clarification.
For your information, as a statutory requirement, the PoA for enforcement actions in Vietnam must be notarized by the notary public in the applicant’s country. Therefore, if a trademark owner obtains notarization for the PoA (with their new address), but the address on his trademark registration differs from the address on the PoA, he must then file a request for recordal of his address change in order for the Vietnamese enforcement authorities to accept his petition for IPR infringement. Please keep in mind that address changes require 2-4 months to be recorded, which means that the trademark owner must wait 2-4 months for address changes to be completed at the Vietnam IPO before initiating enforcement actions. If this is the case, the infringing/counterfeit products may be sold or dispersed at any time, rendering enforcement actions ineffective.