Signs cannot be registered as trademarks in Vietnam

To be eligible for trademark protection, a trademark must not be identical or confusingly similar to another trademark that has already been filed for registration (trademark application) with the Intellectual Property Office or has been granted a Trademark Registration Certificate. Specifically, the trademark to be registered must not be identical or similar to a well-known trademark. The following article will provide legal content on signs cannot be registered as trademarks in Vietnam.

Why is trademark protection necessary?

Descriptive signs cannot be resigstered as trademarks in Vietnam include:

• When you register a trademark, you will have legal proof that you are the legitimate owner of that trademark.
• Trademark protection helps the owner prevent counterfeiting, imitation of products or services bearing the trademark, and unauthorized use of the trademark for profit, thereby protecting the reputation and image of the brand.
• A registered trademark has higher value than an unregistered one, which helps increase the value of the business and facilitates capital mobilization.
• A protected trademark helps the owner easily penetrate new markets, build credibility, and compete with rivals.

Conditions for trademark protection

According to Article 72 of the Intellectual Property Law 2005, amended in 2022, the general conditions for a trademark to be protected are that descriptive signs cannot be registered as trademarks in Vietnam. This means that a trademark must be distinctive and not merely describe the goods or services it represents.

• A trademark must be a visible sign that can take the form of letters, words, drawings, images, three-dimensional shapes, or a combination of these elements. It can be represented in one or more colors or as a sound sign that is graphically represented. It’s important to remember that descriptive signs cannot be registered as trademarks in Vietnam. Therefore, the trademark must be distinctive and not merely describe the goods or services it represents. This distinctiveness ensures that the trademark can be effectively protected and recognized in the marketplace.
• It must be capable of distinguishing the goods or services of the trademark owner from those of other entities. A trademark is considered distinctive if it consists of one or more easily recognizable and memorable elements or a combination of elements that form an easily recognizable and memorable whole and does not fall into the cases of non-distinctiveness specified in Clause 2, Article 74 of the Intellectual Property Law 2005, amended in 2022.

Signs that cannot be protected as trademarks

According to Article 73 of the Intellectual Property Law 2005, amended in 2022, the following signs cannot be protected as trademarks:

• Signs that are confusingly similar to national flags or emblems of countries.
• Signs that are confusingly similar to symbols, flags, badges, abbreviations, or full names of agencies or organizations (e.g., the Red Cross symbol).
• Signs that are confusingly similar to real names, aliases, pen names, or images of leaders, national heroes, or famous persons of Vietnam or foreign countries (e.g., President Ho Chi Minh, General Vo Nguyen Giap).
• Signs that are confusingly similar to certification marks, inspection marks, or warranty marks of international organizations (e.g., ISO).
• Signs that mislead, confuse, or deceive consumers (e.g., “Made in Vietnam” for goods produced outside Vietnam).
• Shapes inherent to the goods or required by the technical characteristics of the goods (e.g., the shape of a mineral water bottle or a mobile phone).
• Copies of works, unless permitted by the owner (e.g., using a famous Van Gogh painting as a logo).

Descriptive signs cannot be registered as trademarks in Vietnam.

• The above signs are unique to the organizations or individuals whose trademarks are protected by the State. Therefore, to prevent exploitation of registered trademarks, the law does not allow the registration of trademarks that are identical or confusingly similar to already registered trademarks.
• Excluding these cases from trademark protection will stimulate competition, motivate development, and affirm the unique reputation and brand of organizations and individuals.

Consequences of registering a trademark containing unprotectable elements

The registration of unprotectable elements will be rejected by the Intellectual Property Office. In such cases, the applicant must respond to the intended refusal notice (if the application has reached the substantive examination stage). The low protectability of the trademark can easily lead to its rejection due to the presence of these elements.

Therefore, an important step for applicants before submitting a registration application is to conduct a thorough trademark search. This search helps ensure that the trademark is distinctive and not merely descriptive, as descriptive signs cannot be registered as trademarks in Vietnam. Conducting this search can prevent potential conflicts with existing trademarks and increase the likelihood of successful registration. For detailed guidance and assistance with the trademark search process, please contact Viet An Law. Their experienced lawyers can provide expert advice and support to help you navigate the complexities of trademark registration.

Advice for trademark protection

To best protect your trademark, businesses should note that descriptive signs cannot be registered as trademarks in Vietnam. Ensure your trademark is distinctive and not merely descriptive of the goods or services it represents. Conduct a thorough trademark search to avoid conflicts with existing trademarks and seek expert legal advice to navigate the registration process effectively.

• Choose a unique and distinctive trademark.
• Check the availability of the trademark through search engines, social media, trademark databases, or seek the assistance of intellectual property experts to check for any similar or identical trademarks.
• Prepare a complete registration dossier and accurately fill in the information.
• Submit the dossier to the competent authority, which is the Vietnam Intellectual Property Office.
• Monitor the application review process to know the progress of the dossier.
• Consult with an intellectual property lawyer for specific advice and to address any questions.

How to check the protectability of a trademark

• To check the protectability of a trademark, clients can conduct their own searches by accessing the online industrial property databases of the Intellectual Property Office or the World Intellectual Property Organization. It is important to note that descriptive signs cannot be registered as trademarks in Vietnam. Therefore, when conducting your search, ensure that the trademark is distinctive and does not merely describe the goods or services it represents. This preliminary search can help determine the likelihood of successful registration and avoid potential conflicts with existing trademarks.
• Additionally, you can opt for experienced intellectual property lawyers who possess extensive knowledge of the trademark registration and protection process. These lawyers can assist you in accurately finding information and providing suitable solutions. It is crucial to remember that descriptive signs cannot be registered as trademarks in Vietnam. Therefore, when seeking legal assistance, ensure that your trademark is distinctive and not merely descriptive of the goods or services it represents. You can refer to the trademark search service of Viet An Law Firm, where their lawyers can conduct thorough searches and offer expert advice to enhance the likelihood of successful registration.

If you need to register a trademark, please contact the lawyers at Viet An Law Firm for preliminary searches to determine the registrability of the trademark and to receive advice on preparing the trademark registration application quickly and effectively.