Conditions for protecting a sound trademark in Vietnam

Trademarks are one of the objects of industrial property rights that help connect businesses and individuals, production organizations, and service providers with products on the market. Does a protected trademark only cover visible things or does it also include sounds? If so, what are the conditions for protecting a sound trademark in Vietnam? In the article below, Viet An Law will answer these questions based on the newly updated Intellectual Property Law in 2022.

Legal basis

• Law on Intellectual Property 2005, amended and supplemented in 2009, 2019, and 2022;
• Decree 65/2023/ND-CP guides the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and State management of intellectual property.
• Circular 16/2016/TT – BKHCN amends and supplements a number of articles of Circular 01/2007/TT-BKTCN on guiding the implementation of a number of articles of the Law on Intellectual Property and Industrial Property.

What is sound trademarking?

A trademark is an industrial property object, in which a sound trademark helps attract and attract users not only through sight but also through hearing to increase the strength of product recognition between customers and products and services on the market.

In the world

According to the Law Committee on Trademarks, Designs and Geographical Indications (SCT) of the World Intellectual Property Organization (WIPO), at the 2006 conference, document SCT 16-2 on types of trademarks was issued. new, according to which the sound trademark is understood as: “Sound can be music and not music. Musical sounds can be created intentionally or taken from existing tracks. Non-musical sounds can also be created or simply recreate sounds found in nature .”

Some famous sound trademarks in the world:

• Trademark “3 rings” of NBC (USA);
• The trademark “The Lion’s Roar” opens the film of MGM (USA);
• Default phone ringtone of NOKIA (Finland);

In Viet Nam

Clause 1, Article 72 of the Intellectual Property Law 2005, amended and supplemented in 2022, stipulates that sound trademarks are “ … sound signatures expressed graphically ”.

This is a new regulation added with the introduction of the revised Intellectual Property Law in 2022.

Conditions for protecting a sound trademark in Vietnam

To be protected as a sound trademark, the following conditions must be satisfy:

General conditions for protecting sound trademarks

General conditions are specified in Clause 1, Article 72 of the Intellectual Property Law:

• A sound signal expressed in graphic form.

The graphic form below can be the shape of musical staff representing musical notes and sound waves (sonogram). Attached is a detailed written description of this sound clip.

For example, the pronunciation of the sound mark is the phrase “hello hello kugou”, using a four-four rhythm (each musical part consists of four beats, and each beat is a note) in the key of Sol. The trademark consists of two parts, the first part is music with sound combinations, and the second part is only music.

• Able to distinguish the trademark owner’s goods and services from those of other entities.

The average consumer should consider that sound signal as a sign to Identify the origin of the product. It is necessary to compare that sign with previous signs to see if the two signs are identical or similar enough to cause confusion with each other.

• Not included in the case of signs that are not protected as trademarks.

Cases that are not protected are specified in Article 73 of the 2005 Intellectual Property Law, amended and supplemented in 2022. For example, provisions in Clause 1, Article 73 of the 2005 Intellectual Property Law, as amended and supplemented in 2022: “Signs that are identical or confusingly similar to the National Flag, National Emblem, National Anthem of the Socialist Republic of Vietnam and of other countries and international anthems” will not be protected under sound trademark.

Register for sound trademark protection in Vietnam

Trademark registration application

According to the provisions of Article 105.2 of the Intellectual Property Law 2005 (as amended and supplemented by Clause 34, Article 1 of Intellectual Property Law 2022):

Requirements for trademark applications

1. Documents, samples, and information identifying the trademark that needs protection in the trademark registration application include:

• Trademark sample and list of goods and services bearing the mark;
• Regulations on the use of collective marks, and regulations on the use of certification marks.

2. A sample of the mark must be described to clarify the constituent elements of the mark and the overall meaning of the mark (if any); If the mark contains words or phrases that belong to figurative language, those words or phrases must be transliterated; If the trademark has words or phrases in a language other than Vietnamese, it must be translated into Vietnamese; If the mark is a sound, the mark model must be an sound file and a graphical representation of the sound.
3. Goods and services stated in the trademark registration application must be classified into groups consistent with the classification table under the Nice Agreement on the international classification of goods and services for the purpose of trademark registration, announced by the state management agency on industrial property rights.
4. Regulations on the use of collective marks include the following main contents:

• Name, address, basis of establishment and operation of the collective organization that is the trademark owner;
• Criteria for becoming a member of a collective organization;
• List of organizations and individuals allowed to use the trademark;
• Conditions for use of the trademark;
• Measures to handle violations of trademark use regulations.

5. Regulations on the use of certification marks must have the following main contents:

• Organizations and individuals are trademark owners;
• Conditions for using the trademark;
• Characteristics of goods and services certified by the mark;
• Methods for evaluating the characteristics of goods and services and methods for controlling the use of trademarks;
• Costs that trademark users must pay for trademark certification and protection, if any.

Thus, the trademark registration application needs to satisfy the above contents, in which it is noted that the sound trademark sample must be an audio file and presented in graphic form.

Procedure for registering a sound trademark

Individuals and organizations can submit applications for sound trademark registration at the following competent authorities:

• The headquarter of the National Office of Intellectual Property (NOIP) in Hanoi
• Representative office of NOIP in Ho Chi Minh City
• Representative office of NOIP in Da Nang

Pursuant to Circular 16/2016/TT-BKHCN, the sound trademark registration process will include the following steps:

Step 1: Receive application

Individuals and organizations can submit sound trademark registration applications directly or by mail to one of the above agencies. The registration application is received by the competent authority. When receiving the application, this agency checks the application documents and compares them with the list of documents stated in the declaration.

Step 2: Formality examination of the application

Check compliance with formalities for applications.

Step 3: Publication of valid application

Every validly accepted application is published by the National Office of Intellectual Property in the Industrial Property Official Gazette. The applicant must pay the application publication fee.

Step 4: Substantive examination of the application

Evaluate the possibility of protection of the subject stated in the application according to the protection conditions, and determine the corresponding scope of protection.

Step 5: Grant or refuse to grant a protection certificate

An application that is amended after a notice of intention to grant a certificate of protection falls under Article 16 of Decree 65/2023/ND-CP and must be re-evaluated.

Step 6: Register and publish the decision to grant a protection certificate

02 months from the date of decision, after the applicant has paid the publication fee according to regulations. The National Office of Intellectual Property will publish in the Industrial Property Official Gazette the granting of protection titles.

Above are some of Viet An Law’s advice on conditions for protecting a sound trademark in Vietnam. If you have any questions, please contact us to receive the best support!