Part I. Trademark Use in Vietnam
1. Based on the advertising regulations in Vietnam, the Vietnamese competent advertising regulatory authority is entitled to request your client to provide the relevant documents for the advertising purpose, of which the Trademark Registration Certificate in Vietnam is one those documents.
2. In case that your client changed the mark into a different format, it depends on the competent person who can accept or refuse your client's provided Trademark Registration Certificate. On the negative sign, he may say that the trademark used on the advertising documents is not the one which was registered. What we are trying to say here is that your client's Vietnamese distributor who filed the dossier for advertisement needs to exchange with the the competent advertising authority in order to obtain his approval.
In light of (2) above, we recommend that your client may submit a written comment which clearly indicates the followings:
(i) Article 87 of the IP Law of Vietnam stipulate that "Organizations and individuals shall have the right to register marks to be used for goods such organizations or individuals produce or for services such organizations or individuals provide". That is to say, in principle, the registration of the mark is not compulsory in accordance with the relevant law of Vietnam;(ii) the changed form of the trademark is, in fact, the trademark as registered and it does not infringe any third party's IP rights(ii) your client pledges that he shall take any legal responsibility if any appeals concerning such use arises.
3. Whether it is prohibited in using any slightly changed form of registered trademark in Vietnam?
There has not been any clear regulations under IP Law and other IP related legal document which regulates the use of slightly changed form of registered trademark. However, in thiscontext, the relevant advertising authority may still refuse to grant the Advertising Permit for your client's distributor in Vietnam if the mark is not the same with the one registered in Vietnam.
4. Whether any legal risks or some adverse consequences will occur if the client continues to use its changed form of the mark in business without indication of "Registered Trademark".
Yes, there remain some possible legal risks or some adverse consequences
(1) The third party may apply Article 95.1.d of the IP Law of Vietnam to file a 5-year non-use invalidation request.
Arctile 95.1.d regulates about the termination of validity of protection titles as follows: 1. The validity of a protection title shall be terminated in the following cases:... d) 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.
Although your client may say that the changed form is similar to the registered trademark and can not be considered that the registered trademark has not been used. However, the third party may say that such changed form is not the registered trademark and what that are targetting is the registerred trademark, not the changed form and the third party may also confirm that he is not aware the changed form is used by the trademark owner or the person or organization allowed by the trademark owner.
Our proposed course of action
Having considered your client's actual situation, the filing of further trademark applications covering the different format of the mark is recommended in order to avoid the possible legal risks as indicated in 4) above.
Part II. Examination of the international application in Vietnam
Examination of the international application in Vietnam
1. Examination by WIPO's IB
The WIPO's IB is the body to administer the Madrid system. It is responsible for international registration and related duties as well as all other administrative tasks, under or concerning the international registration of trademark under Madrid Agreement and/or Madrid Protocol.
2. Receipt of Int'l Trademark Registration
The IB receives applications for international registration of trademark through the Offices of Origin. The application may be addressed to the IB by mail, by fax or by electronic means in a way agreed upon between the IB and the Office concerned. If the int'l trademark application is sent to the IB by telefacsimile, the original of the page of the official form bearing the reproduction of the mark should be sent to the IB then.
The IB shall promptly inform the concerned Offices of Origin of the receipt of international application by facsimile or electronic means agreed between the IB and the Offices of Origin concerned
3. Formality examination
The examination as to conformity of the international application with the applicable requirements will start (i) upon receipt of the original documents of the Int'l Trademark Application, previously sent to the IB by facsimile if such an original is received within 1 month from the date of facsimile transmission; or (ii) upon expire of the period of one moth from the date of facsimile transmission if the original of international application is not received by the International Bureau.
The WIPO's checks that the international application complies with the requirements of the Agreement or Protocol and the Common Regulations, including requirements relating to the indication of goods and services and their classification, and that the required fees have been paid.
The Office of Origin and the applicant are informed of any irregularities that must be remedied within three months, otherwise the application will be considered abandoned.
4. Registration and publication of Int'l Trademark Application
Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. A certificate of registration will be issued and transmitted to the trademark holder.
By the end of 2007, there were 483,210 international trademark registrations in force in the international register. They contained some 5.4 million active designations and belonged to 159,420 different trademark holders (of which many are small and medium-sized enterprises - SMEs)7
5. Examination by National Trademark Offices as designated Contracting Party in Vietnam
Each designated contracting party has the right to accept or refuse the protection of the international registration in its territory. In those countries where the trademark law is characterized by the substantive examination, like Vietnam, an Int'l Trademark Application will be subject for the substantive examination under the national law and regulations similar to that applied to the trademark applications filed directly.
6. Competent authority
In Vietnam, the competent authority for this responsibility is the Intellectual Property Office of Vietnam (IP Viet Nam) under the Ministry of Science and Technology.
At IP Vietnam, there are following divisions responsible for international applications designating Vietnam: Trademark Division No. 1, Trademark Division No. 2 where the trademark examiners carry out the substantive examination of both international and national applications of trademark. As of March 2008, there are 7 examiners of international application among total 27 trademark examiners in Trademark Division No. 1 and 8 examiners of international application among total 28 trademark examiners in Trademark Division No. 2 of IP Vietnam.
7. Substantive examination criteria
The basic requirements for substantive examination applied to the Int'l Trademark are, in principle, are similar to that applied to the national trademark. However, in the substantive examination of Int'l Trademark Applications, in a certain contracting parties, the classification of goods/services is also checked. In Vietnam, in relation to International Trademark Application, the classification of goods/services seems not to be a reason for refusal.
Similar protection criteria are provided by Vietnam IP Law that is the standard regulations for substantive examination of international applications of trademark designating Vietnam. The common reasons for refusal of international application usually raised by the trademark examiners in Vietnam are also dissatisfactory to the requirements on the distinctiveness of the mark, unity of the application and the First-to-File rule and public interest.
8. Provisional refusal issued by IP Vietnam
Any provisional refusal must be notified to the International Bureau by IP Vietnam as the Offices of the Contracting Parties within the time limit, i.e. 12 months.
The provisional refusal is recorded in the International Register and published in the Gazette and a copy is transmitted to the holder of the international registration.
In the provisional refusal, the trademark examiners should indicate the reasons for refusal and legal regulations applied. However, it is somehow difficult for the holder of international applications that is subject for refusal while in the provisional refusal written by the IP Vietnam, only the number of article in the national legislation is quoted, but not the specific indication of the reason for refusal. In such case, in a very limited time, the holder of international application should seek for the local attorney's consultation.
The time limit to file an appeal against the provisional refusal for Int'l Trademark Application designating Vietnam is 3 months counted from the date the notification is notified by the International Bureau to the holder of Int'l Trademark Application. This time limit may be extended by filing a request for time extension at the IP Vietnam through an authorized local IP Agent.
9. Grant of protection for Int'l Trademark Application
In Vietnam, IP Vietnam will not issue a positive decision on registration in relation to the Int'l Trademark Registration if they find no reason for refusal. The protected trademark will be published in the IP Official Gazette and recorded in the National Register. The Certificate of Trademark Registration may be issued upon the holder's request.
In Vietnam, the trademark right shall be valid for 10 year from the date of international registration and may be renewed for consecutive periods of ten years. The Trademark Register based on the Int'l Registration uses the Int'l number granted by IB and IP Vietnam do not give any additional number for international registration.
10. Other procedures concerning Int'l Trademark Registration
Any procedure subsequent to the refusal, such as review, appeal or response to an opposition, is carried out directly between the holder of the international registration and the Offices of contracting parties, without any involvement on the part of the WIPO's IB. However, a statement should be sent to the WIPO's IB once all the procedures before the Offices of contracting parties have been completed, indicating that the provisional refusal is confirmed or is totally or partially withdrawn. This statement is also recorded in the International Register and published in the Gazette.
Any assignment of trademark right under international registration may be made for some or all of the classes specified and for some or all of the designated contracting parties. Such assignment is effective only if the assignee is the one being entitled to file international applications and it is recorded in the International Register. One key point is that a request for recordal of trademark assignment can be filed at trademark offices in contracting parties (and WIPO's IB will record such assignment when it receives from relevant trademark offices) or directly to IB at WIPO by the Assignor, but not by the Assignee.