Sound trademark registration in Vietnam

Until now, Vietnam’s Intellectual Property Law has not recognized non-traditional trademarks such as: sound marks, odor marks, etc. However, the amended and supplemented Intellectual Property Law of 2022 has added a sign that can be considered as a trademark next to other signs in Clause 1, Article 72, which is “an audible sign expressed in graphic form”. This is the first time that Vietnam’s Intellectual Property Law recognizes a non-traditional trademark, which is a remarkable advancement in our country’s Intellectual Property Law. Surface regulations about sound trademark registration in Vietnam is also a mandatory requirement under Article 18.18 of the CPTPP to which Vietnam is a member. Article 18.18 CPTPP.

Condition of sound trademark registration in Vietnam

According to the provisions of Article 105.2 of the Intellectual Property Law 2022, the applicant must submit:

• Magnetic recording of the mark on a medium allowing easy playback. Currently, the most popular media are CDs, DVDs and MP3 records; and
• Graphical representation of that sound mark (i.e. an sound mark in Vietnam must be represented graphically) to check the distinctiveness and usability of the sound for registration purposes.
• In addition, in order to ensure a strict protection mechanism for sound marks and avoid overlapping of sound trademark rights with copyright for works related to/accompanying sound, Clause 7 of Article 73 (Signs not protected in the name of trademarks) is added to the Intellectual Property Law 2022 to provide for one more case as a basis for refusal of an sound mark, which is“a sign containing a copy of a work, except with the permission of the owner of that work”.This is a fairly open rule and can be used in many trademark cases other than those involving sound marks. For example, a long piece of musical notation, such as an entire orchestra or piano piece, is unlikely to meet the sound trademark ability requirements.

Some contents are still inadequate related to regulations on registration of sound marks

Intellectual property Law Amended and Supplemented in 2022 stipulates that sound marks are “represented in graphic form” behind “sound marks” which is something that needs further discussion. This regulation can be understood that “sound marks” will be of two types: “sound marks that can be represented in graphic form” and “sound marks that cannot be displayed in graphic form”. However, the Intellectual Property Law only recognizes “sound marks that can be represented in graphic form” that can be considered as a type of sign for registration as a sound trademark. According to the author’s personal opinion, the provision that “representation in graphic form” followed by “sound mark” should only be an option chosen by the applicant, not a mandatory requirement. Because the “sound mark” is a sign that cannot be perceived visually, it is crucial that formal regulations be introduced to represent the sound mark (similar to the trademark template for a visually recognizable mark). With reference to the recommendations of the World Intellectual Property Organization (WIPO) or the International Trademark Association (INTA), it is recommended to prescribe the forms of expression of the “sound mark”: it can be graphically represented by the sound constituting the mark, a written description of the sound, an audio file such as: an electronic audio file in the form of an MP3 file or of any combination of the trademarks, WMA, WAV, or any combination of the above forms to ensure the correctness of sound trademarked registration in Vietnam is the trademark which is intended by the applicants.

Hopefully in the future, before the actual registration of sound marks arises specifically, the Intellectual Property Law or the guiding documents of the revised Intellectual Property Law in 2022 will have more specific regulations on recording sound marks in accordance with the general regulations in the world and the actual needs of the applicants for the registration of sound marks.

If you want to register a sound trademark in Vietnam, please contact us Viet An Law for the fastest, most professional support by our intellectual property lawyers, our intellectual property representatives.