Priority rights of trademark application in Vietnam

The priority right in trademark registration is an important concept to protect IP rightsholders. Priority rights help optimize the international trademark registration process and protect the trademark owner’s rights against applications from others. In the article below, Viet An Law will present the legal content related to the basis for determining priority rights of trademark application in Vietnam according to current IP law.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Paris Convention 1883 for the Protection of Industrial Property.
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and intellectual property state management.

Priority rights of trademark application in Vietnam

The right of priority in trademark registration is the right that an applicant enjoys based on the first valid application filed in a country that is a member of the Paris Convention with priority regulations. A trademark registration application enjoys priority with the priority date being the filing date of the first application.

There are two principles when registering trademarks used by countries around the world: “first to file” and “first to use” principles.

• In Vietnam, the “first to file” principle is applied, whereby in case there are many identical or confusingly similar trademarks, the registration application with the first filing date will be given priority right in registration. In case there is a valid claim for priority rights, the filing date used as the basis for determining registration priority will be the date stated in the claim for priority rights, not the date of filing the registration application.
• In some countries such as the US, the “first to use” principle is applied – priority is given to the first user of the trademark, whereby the owner of the trademark that is used first in commerce (with evidence to prove it) will be considered to have the “first” right for that mark, not using the previous filing date as the basis. This is the basis for registering a trademark at a competent authority when comparing it with other similar trademarks.
• Claiming priority is based on the “first to file” principle, which extends this principle beyond the jurisdiction where the mark was first protected.
• Any entity wishing to enjoy priority rights based on a previously filed application has to clearly state the filing date and the country receiving that application in the trademark registration dossier. Countries will set the latest date for declaring such data. In Vietnam, in compliance with the commitments in the Paris Convention, a trademark registration application claiming priority rights must be submitted within 6 months from the date the priority right arises and supporting documents can be supplemented within 3 months from the date of application.
• In case 2, 3, or more applications also meet the conditions for being granted a protection title and have the same priority date or earliest filing date, the applicants will agree with each other. Only the applicant will be granted a protection title. If the application owners cannot negotiate, the National Office of Intellectual Property will refuse to grant protection titles to all applications.

For example: A business B that produces and sells coffee has applied to register its K trademark in Malaysia on January 5, 2021. Due to its development plan in the coming years, this business wants to expand its products to the Vietnamese market, and on May 17, 2022, business B sent a request to the National Office of Intellectual Property to grant a certificate of protection and claim to enjoy priority rights. Because it is still within 6 months, in case business B’s documents are complete, valid, and meet other requirements under Vietnamese law, business B will enjoy priority rights in trademark registration. The application filing date in Vietnam will be calculated from the date this enterprise submits its priority application in Malaysia (January 5, 2021).

Basis for determining priority rights in trademark registration

Pursuant to Article 91 of the Intellectual Property Law and Article 12 of Decree 65/2023/ND-CP, when trademark application owners want to enjoy priority rights according to the provisions of the Paris Convention, the following conditions are met:

• The applicant is a Vietnamese citizen or a citizen of a member country of the Paris Convention or a citizen of another country residing or having a production or business establishment in Vietnam or a member country of the Paris Convention;
• The first application has been filed in Vietnam or a member country of the Paris Convention and that application contains a section corresponding to the claim for priority of the trademark application;
• The registration application is submitted within 06 months for trademark registration applications;
• In the trademark registration application, the applicant clearly states the request for priority rights and submits a copy of the first application in case of filing abroad, including confirmation from the Agency receiving the first application. A copy of the first application as proof of priority can be submitted within 03 months from the date of application;
• The applicant has the right to claim priority based on many different applications filed earlier, provided that the corresponding content between the earlier applications and the content in the application must be indicated;
• Pay all fees and charges when requesting priority rights.

Some special cases determine the date of priority entitlement in Vietnam

The application was formally rejected

According to the provisions of Article 109.5 of the Vietnam Intellectual Property Law, a trademark registration application that is rejected according to the provisions of the law during the formality examination stage is considered not filed, except in cases where the application is used as a basis for requesting claim priority. Thus, in case the registration application is rejected after formality examination, the applicant can still use that application filing date as a basis for determining priority when registering the next similar mark or registering the similar mark in Vietnam or in other countries.

Trademark application withdrawn

According to Article 116.3 of the Vietnam Intellectual Property Law, any trademark registration application has been withdrawn or is deemed to have been withdrawn if it has not been published. Any withdrawn trademark application is considered to have never been filed unless the application is used as a basis for claiming priority rights. Thus, the filing date for a later withdrawn application is still considered the basis for determining the date of priority right for identical or similar trademark registrations filed later.

Requirements on the form of documents proving priority rights

Documents proving priority rights for trademark registration in Vietnam include:

• Copy of the first application or applications certified by the agency that received the first application.
• Certificate of transfer of priority rights if that right is inherited from another person.

According to Article 100.2 of the Vietnam Intellectual Property Law, trademark registration applications and transaction documents between the applicant and the state management agency on industrial property rights must be made in Vietnamese, for supporting documents. Priority rights documents may be made in other languages but must be translated into Vietnamese when requested by the state management agency on industrial property rights.

Advantages of applying priority rights in trademark registration

Applying priority rights in trademark registration brings many advantages to applicants, especially in the current international context of many technological changes. Here are some key advantages of using priority right:

• Priority helps applicants save important time. Instead of having to wait for registration confirmation in each country, applicants can use the original filing date to protect the interests of their business.
• Priority rights allow businesses to extend trademark protection from one member state to many different countries based on the first-to-file principle applied in many different territories.

These advantages together create an efficient and flexible trademark registration process, helping applicants smoothly take advantage of international market opportunities.

Limitations when applying priority rights in trademark registration

Although applying priority in trademark registration brings many benefits, some limitations need to be considered:

• Priority rights only last for a certain period (6 months or 12 months for plant variety registration applications). If the applicant does not submit an application for registration in other countries within this period, priority will be lost.
• To claim priority rights, the applicant must submit a priority right examination fee according to regulations. In Vietnam, this fee is 600,000 VND per application/claim.
• Priority does not guarantee that a trademark application will be accepted in every country. Trademarks can still be refused protection if they do not meet the protection conditions in the country of registration.
• Managing priorities and keeping track of deadlines requires careful attention and management on the part of the applicant. If they miss the legal deadline, they could lose their right to that priority.

In short, the application of priority requires special technical understanding and follow-up on the part of the applicant to take advantage of the benefits it brings and at the same time minimize the possible drawbacks. go out.

Trademark registration service of Viet An Industrial Property Representative

• Consulting on conditions and procedures for trademark registration in Vietnam and internationally;
• Support clients in drafting trademark registration documents in Vietnam and internationally;
• Consulting on the grounds for determining priority in trademark registration so that clients can prepare relevant documents when filing applications;
• Representing the client to apply for registration at the Intellectual Property Office;
• Monitor application processing progress and coordinate with clients to respond to the Intellectual Property Office when requested;
• Receive and send Trademark Registration Certificates to clients.

Above are some consulting contents of Viet An Law related to the basis for determining priority rights in trademark registration. Clients who need to register a trademark or claim priority rights of trademark application in Vietnam, please contact the Industrial Property Representative – Viet An Law for the most timely support.