Trademark application procedure in Vietnam

Trademark application is one of the most popular procedure when investors initiate engaging Vietnamese market. Viet An Law Firm is an Intellectual Property Representative Organization in Vietnam established in 2007. After nearly 20 years of operation, Viet An Law is proud to be one of the most prestigious law firms, providing legal services to clients in the field of legal consulting, legal services, and intellectual property representation services in Vietnam. In the article below, we would like to present the trademark application procedure in Vietnam.

Legal basis and form of filing trademark registration applications for foreign individuals and organizations in Vietnam

Vietnam is a member of most international conventions on intellectual property rights such as the TRIPS Agreement, Paris Convention 1967, Berne Convention 1971, Rome Convention 1981 and Washington Agreement 1989, Madrid Procession, Parliament Madrid Protocol, and Patent Cooperation Treaty (PCT). In addition, Vietnamese law has very specific and detailed regulations on intellectual property rights in general and trademark rights in particular in national legal documents: Vietnam Intellectual Property Law and other legal implementation documents.

Therefore, foreign individuals and organizations wishing to apply for trademark protection in Vietnam can choose one of two forms:

• Foreign individuals and organizations can register international trademarks under the Madrid Agreement managed by WIPO (when they are members of the Madrid Agreement or Madrid Protocol).
• Foreign individuals and organizations can choose to apply directly to register a trademark in Vietnam through an Intellectual Property Representative Organization such as Viet An Law Firm.

Principles of trademark registration in Vietnam

According to Article 90.2 of the Vietnam Intellectual Property Law, in cases where there are many applications from many different people to register identical or similar trademarks to the point of confusing each other for goods and services, or identical to each other or in cases where there are multiple applications from the same person registering identical trademarks for identical goods or services, the protection title will only be granted to the trademark in the valid application with the priority date or the earliest filing date among applications that meet the conditions for granting a protection title, except for famous trademarks recognized by Vietnam.

Based on this principle, Viet An Law Firm would like to send clients instructions on trademark registration procedures in Vietnam as follows:

Step 1: Research the protection ability of the trademark in Vietnam

Trademark registration procedures in Vietnam are carried out according to groups of goods and services of the Nice Classification. Therefore, clients who plan to register a trademark for a group of goods or services need to search for the trademark within the scope of related groups of goods and services.

Preliminary search for trademark protection in Vietnam

To do a preliminary search on the protection of a trademark, you can do a free search through one of the following two (02) electronic data portals:

• WIPO IP Portal: Global trademark database built by the World Intellectual Property Organization WIPO. Clients can access the following address:

https://www3.wipo.int/trademarkdb/en/

• Wipopublish IPVietnam: Vietnam’s trademark database built by the Vietnam National Office of Intellectual Property (NOIP). Clients can access the following address:

http://wipopublish.ipvietnam.gov.vn/

However, performing searches on the above databases is very complicated and time-consuming, and is even somewhat outdated compared to reality. Clients can send a trademark sample and a list of goods and services bearing the trademark to Viet An Law Firm for a profound search before submitting a trademark registration application.

Profound search before filing a trademark registration application in Vietnam

Profound search is not a completely mandatory procedure for applicants in Vietnam. However, clients should carry out this procedure because this is the first and most important step to preliminarily evaluate whether a trademark should apply for protection or not. Therefore, the trademark search is for reference only and is not a basis for granting a protection title.

Prepared dossier for trademark registration

To research a trademark, clients provide Viet An Law with the following information:

• Trademark samples need to be searched;
• List of goods/services bearing trademarks.

Time limit: The trademark search time limit for foreigners is 1-3 working days with the result being a Notice of Trademark Search Results.

Step 2: Submit trademark registration application and monitor the trademark registration process at NOIP

After completing step 1, Viet An Law will proceed with trademark registration at the National Office of Intellectual Property for your application.

Trademark registration dossier in Vietnam includes:

• Trademark samples need to be registered;
• List of goods/services bearing trademarks;
• Information about the owner of the trademark registration application (Name, address, representative, position);
• Documents proving priority rights (if the trademark registration application claims priority rights);
• Power of attorney according to the form provided by Viet An Law.

Trademark application procedure in Vietnam

Apply for trademark registration in Vietnam

On the same day after Viet An Law submits a trademark registration application at NOIP, Viet An Law will send clients a filing declaration with the application number and date of filing the trademark registration application in Vietnam.  Then, the application is accepted validly – the filing date will be the priority date of the trademark application.

Formality examination of trademark application in Vietnam

• Time limit: 01 month from the date of application.
• NOIP will consider whether the application meets the requirements in terms of form, label sample, application owner, filing rights, classification, etc.
• If the client’s registration application meets the conditions, the NOIP will notify the acceptance of the valid application and publish the application.
• If the client’s registration application does not meet the conditions, the NOIP will issue a Notice of non-acceptance of the application and request the client to make amendments. The client makes modifications as requested and submits the amended dispatch to NOIP.

The time limit for publication of trademark application in Vietnam

• Time limit: 02 months from the date of notification of acceptance of valid application.
• The content of the publication of the trademark registration application is information related to the valid application recorded in the notice of acceptance of the valid application, the trademark sample, and the attached list of goods and services.

Substantive examination of trademark application in Vietnam

Time limit: 09 months from the date of application publication.

The National Office of Intellectual Property reviews the conditions for trademark registration and then evaluates the possibility of granting a certificate to the trademark registered by the client. If the trademark registration application meets the conditions, the National Office of Intellectual Property will issue a Notice of intention to grant a certificate to the trademark that the client has registered.

If the trademark registration application does not meet the conditions, the NOIP will issue a Notice of not granting a certificate to the trademark registered by the client. In case the client requests, Viet An Law will conduct procedures to respond and appeal the decision of the NOIP, and at the same time provide grounds to grant a trademark protection certificate for the client’s trademark. Response and complaint fees are not included in the trademark registration fee.

Issuance of Trademark Registration Certificate in Vietnam

The time limit for granting a Trademark Registration Certificate in Vietnam is about 02-03 months from the date of payment of the fee for granting a Trademark Registration Certificate.

After notice of NOIP’s intention to issue a Trademark Registration Certificate, Viet An Law will represent the Client to pay the fee and receive the Trademark Registration Certificate, delivered by express delivery to the client’s provided address. row.

The time for examining a trademark application from filing to being granted a Trademark Registration Certificate or refusal to grant a Trademark Registration Certificate normally lasts from 15 – 18 months.

In the case of applying for priority rights in Vietnam

According to Clause 3, Article 90 of the Vietnam Intellectual Property Law, in case multiple trademark registration applications meet the same conditions for being granted a protection title and have the same priority date or earliest filing date. The protection title will only be granted to the subject of a single application among those applications according to the agreement of all applicants; If no agreement can be reached, the respective subjects of those applications will be denied protection titles in Vietnam.

The applicant’s request for priority rights will be accepted if the following conditions are met:

• The applicant is a Vietnamese citizen or a citizen of a country that is a member of the Paris Convention or resides or has a business establishment in Vietnam or in a country that is a member of the Convention.
• The first application was filed in Vietnam or a member country of the Convention and that application contained a request for priority right to register a trademark.
• Trademark registration applications are filed within 06 months from the first application filing date and the priority period is calculated from the first application filing date, which is not included in the priority period.
• In the registration application, the applicant clearly states the request for priority rights and must submit a copy of the first application certified by the agency receiving the first application in case of filing abroad.
• Pay the full fee to request priority rights.

Trademark protection term in Vietnam

Trademarks are protected for 10 years from the filing date (priority date). Clients can renew their protection certificates with no limit on the number of renewals. Therefore, the trademark will be an asset throughout the client’s business and operations process.

The time limit for extending the validity of trademark protection certificates in Vietnam

Within 06 months before the date the trademark protection certificate expires, the client must submit a request for an extension to the NOIP.

However, clients need to note:

• After a trademark has been granted a protection title, if the trademark owner does not use the mark continuously for 5 years from the filing date, the trademark protection title can be canceled by another person.
• After 5 years from the expiration date of the trademark registration certificate, if the certificate holder does not renew, another entity will have the right to register that trademark.

Note for trademark registration procedure in Vietnam

• According to Vietnamese law, foreign individuals or organizations have the right to apply for trademark registration in Vietnam.
• The right of priority in trademark registration affects whether or not a protection title is granted to another subject’s trademark application. During the period from the date of filing the first application to the date of applying in Vietnam, if another entity applies to the same subject in the first application, the first applicant’s application is still considered to have the same filing date as the first filing date and receive priority right to protection.
• There needs to be consistency between the registered trademark name and the business’s trade name, domain name and applied art copyright registration for trademarks with image and text parts to avoid abuse or violation by competitors.
• To save costs, clients should prioritize registering a trademark in black and white because Vietnam allows a trademark registered in black and white to be used in different colors, as long as retains the text/image content of the trademark and does not infringe on the rights of another person’s registered black-white or color trademark.

If you are a law firm – IP agent wanting to apply for trademark registration for clients in Vietnam, please contact us for the most reasonable and competitive service fees with the best service quality. If you have any difficulties or problems related to trademark registration in Vietnam, please contact Viet An Law for the fastest support!