A pre-filing trademark search in Vietnam is undoubtedly critical before you make any financial investment, time and efforts to secure a trademark registration, then, promote a trademark, launch a website, SEO campaigns and register domain names. It enables you to save considerable expense and headaches. It not only sheds light on the risks associated with use and registration of your proposed trademark, but also the mark's strength and future expansion potential. Putting off a pre-filing search may make you pay an expensive price, e.g. a period of 16-18 months is wasted to wait for the substantive examination outcome from the IP Office of Vietnam, but the applied-for trademark is rejected. In a serious circumstance, use of an unregistered trademark may pose a range of potential risks for infringing other’s prior trademark rights. This results in various costs of defending legal action, in addition to costs of rebranding and the associated loss of market recognition, this can cause a company to become crippled, or at least, put a significant break on its growth.
Benefits of a pre-filing trademark search in Vietnam
Although pre-filing trademark search entails an additional expense, it often saves Clients significantly in the long run. A trademark search report prepared by the professional trademark attorney will identify potential obstacles, i.e. whether a proposed mark may face an absolute and/or relative refusal ground (i.e. figuring out whether a proposed mark is deemed inherently distinctive or confusingly similar to other prior marks) which block the registration thereof in Vietnam.
A pre-filing trademark search may be useful in assessing the relative strength of a proposed trademark by indicating how many other similar trademarks are already available in the Register or possibly, in the marketplace. By going through the trademark search outcome, you will have a clear picture of the situation with a list of possible conflicting marks and then determine whether the said proposed trademark is safe to use and/or register.
Challenges of pre-filing trademark searches in Vietnam
Pre-filing trademark search has become increasingly complicated. This has resulted from the following facts:
The number of new applications filed annually in Vietnam for the past five years always exceeds over forty thousand trademark applications. The larger the number of trademark applications are filed, the easier it will get for a proposed mark to be conflicted with earlier ones.
In Vietnam, services may be considered similar to any goods for which such services could be applied to and vice versa, the goods may be considered similar to any services if such goods are the subjects provided/rendered by the service. For instance, the goods “beer” in Class 32 can be considered similar to the “food and drink catering service”, the goods “cigarette” in Class 34 can be regarded similar to the “cigarette trading service” in Class 35 and the goods “cars” can be deemed similar to the “car repair services” in Class 37.
It is as such required to make an extensive trademark search in Vietnam and assessment based on the prior found marks.
Tools To Facilitate Your Trademark Searches Properly in Vietnam
When looking to run a trademark search before registering a new mark in Vietnam, it is advisable to resort to a professional trademark attorney to conduct the search. However, you may try to figure out some obstacles (e.g. to figure out whether an identical prior trademark is found). The following websites are public for your possible use: