Does a Vietnamese agency allow to register of foreign trademarks in Vietnam?

In the context of economic integration, many foreign enterprises wish to protect their trademarks in Vietnam but do not directly undertake the registration procedures. Instead, they often authorize a trademark agency to carry out the trademark registration. However, does a trademark agency have the right to be named as the applicant for trademark registration on behalf of a foreign enterprise? This article by Viet An Law Firm will clarify the regulations of Vietnamese law on this matter, helping businesses gain an accurate and comprehensive understanding.

Who has the right to register a trademark in Vietnam?

According to Clause 13, Article 1 of the Intellectual Property Law amended in 2009, the following entities have the right to register a trademark:

• Organizations and individuals have the right to register trademarks for goods they produce or services they provide.
• Legally operating business organizations and individuals: They are entitled to register trademarks for goods they put on the market but are manufactured by others (provided that the manufacturer does not use the trademark and does not object).
• Collective organizations: They are entitled to register collective marks for their members to use, especially for geographical indications, which require permission from the competent authority.
• Certification organizations: They are entitled to register certification marks for the quality, characteristics, or origin of goods, but are not allowed to directly produce or trade in those goods.
• Co-owners (two or more individuals/organizations): They can jointly register a trademark if all co-owners participate in the production or business activities and there is no likelihood of confusion for consumers.
• Transfer of the right to register: The person with the right to register can transfer this right to another organization or individual through a contract, inheritance, or succession.
• Representatives or agency: They are not entitled to register a trademark without the consent of the owner as stipulated in international treaties to which Vietnam is a contracting party.

Does a Vietnamese agency allow to register of foreign trademarks in Vietnam?

Authorized case

If the trademark agency is legally authorized by the foreign party (the trademark owner or the party entitled to use the trademark) through a written document (example for an agency agreement and a power of attorney), then the trademark agency has the right to file a trademark application in Vietnam on behalf of the foreign party.

This authorization must comply with the provisions of Article 89 of the Intellectual Property Law 2005, as amended in 2009, which clearly states that an application for registration may be filed through a lawful representative, such as an industrial property representation service organization or a designated agency company.

Unauthorized case

If a trademark agency unilaterally registers a foreign party’s trademark without the consent or authorization of the owner, this act is illegal.

According to Article 6 of the Intellectual Property Law, trademark rights only arise upon the grant of a protection title by the Intellectual Property Office of Vietnam. However, if the registration is made for improper purposes or to misappropriate ownership rights, the foreign party may request the invalidation of the certificate of registration according to Article 96 (revocation due to improper filing authority or fraudulent intent).

Thus, a trademark agency only has the right to register a foreign party’s trademark in Vietnam when there is a written agreement of consent. Conversely, without authorization, the trademark agent does not have the right to unilaterally register the trademark and may face legal risks such as the revocation of the protection title. To avoid risks, the foreign party and the trademark agent should enter into a clear contract specifying the rights and obligations related to the trademark registration.

Trademark registration process for foreign enterprises in Vietnam

Step 1: Prepare trademark registration application

Foreign enterprises need to prepare the following documents in full:

• Trademark application form: According to Form No. 04-NH.
• Trademark specimen: 5 specimens of the trademark (size 8×8 cm), including the image, logo, or letters to be protected.
• Power of attorney: If the foreign enterprise files the application through a representative organization (for example: a trademark agent or an intellectual property service organization in Vietnam), a valid power of attorney is required (original or notarized copy).
• Priority claim documents (if any): Foreign enterprises can claim priority under the Paris Convention if they have filed an application in another member country within the preceding 6 months.
• Enterprise information: Name, address, and nationality of the foreign enterprise (applicant).
• Proof of payment of fees: Application filing fee and other prescribed fees according to the regulations of the Ministry of Finance.

Step 2: Filing the trademark application

Place of filing: The dossier is submitted to the Intellectual Property Office of Vietnam (head office in Hanoi or representative offices in Ho Chi Minh City and Da Nang).

Methods of filing:

• Direct filing at the Intellectual Property Office of Vietnam.
• Filing by post.
• Online filing via the online filing system of the NOIP (if the enterprise or representative has registered an account).

Foreign enterprises often authorize an intellectual property representative organization in Vietnam to carry out the process on their behalf, as the procedure requires an understanding of domestic laws and procedures.

Step 3: Examination of the application

The examination process at the Intellectual Property Office of Vietnam includes the following stages:

• Formal examination (1-2 months): Checking the completeness and validity of the application dossier (e.g., trademark specimen, application form, power of attorney). If the dossier is valid, the IPO will issue an application number and filing date.
• Publication of the application (2 months from the date of acceptance of the valid application): The application is published in the Industrial Property Gazette for public disclosure, allowing third parties to file oppositions (if any).
• Substantive examination:
• Examining the distinctiveness of the trademark (not identical or confusingly similar to registered trademarks).
• Assessing whether the trademark violates the prohibitions under Article 73 of the Intellectual Property Law (e.g. signs contrary to social ethics, deceptive to consumers).
• The examination period may be longer if there are disputes or if additional documents are required.

Step 4: Grant of the certificate of trademark registration

• If the trademark is approved, the Intellectual Property Office of Vietnam will issue a notification of the grant of the certificate of trademark registration.
• The enterprise or representative pays the certificate of registration granting fee (approximately VND 120,000 according to the current fee schedule).
• The certificate of trademark registration is valid for 10 years from the filing date (or priority date) and can be renewed multiple times, each time for a period of 10 years.

Step 5: Handling cases of refusal or opposition

• If the application is refused: The enterprise receives a notification of refusal with reasons (for example, the trademark lacks distinctiveness). The enterprise can file a complaint or submit additional documents within 3 months.
• If there is an opposition: Third parties have the right to oppose the application during the publication period (before the grant of the certificate). The IPO will consider and resolve the dispute in accordance with regulations.

The above provides all the relevant information regarding “Does a Vietnamese agency allow to register of foreign trademarks in Vietnam?”. Clients who require legal advice are kindly requested to contact us for the best support!