Figurative trademark registration in Vietnam

What is a figurative trademark?

• A figurative trademark is a type of mark that uses graphical, images and drawings to distinguish goods and services of different organizations and individuals.
• Figurative trademarks have high aesthetics, express creativity and are easy to remember for consumers.
• The figurative trademark shows the ability to distinguish based on the presentation and arrangement of details and blocks according to the principles of artistic layout, colors and the combination of lines and images to be artistic. The art of creating a sophisticated visual perception of the consumer.

Images and drawings mark

• Figurative marks consisting of one or more two-dimensional elements;
• Figurative marks can represent real creatures (animals, flowers, etc.), real or imaginary characters or people (portrait, cartoon characters, etc.), real objects or creatures or imaginary (sun, stars, flying saucers, dragons, etc.).
• Figurative marks can also be logos, numbers, figures, abstract or imaginary geometry, or purposefully created two-dimensional shapes.
• Conventional symbols and characters that make no sense or are difficult to understand for the average consumer in the country where the trademark application is located may be considered figurative marks or figurative elements of marks.
• Figurative marks may be one or more colors but do not contain conventional words, letters, characters, numbers or symbols.

Advantages and disadvantages of figurative marks

• Figurative trademarks are represented by drawings and images that have the following advantages: simple designs, neat, unique and eye-catching structure, attracting consumers’ visuals, making the image easy to remember. According to research, memorizing images with colors will be easier than memorizing words and complex structures.
• However, if the figurative mark has too many blocks, complicated structure, inappropriate color combination, it will not create the brand aesthetic, but more importantly, it cannot perform the function of distinguishing goods and service. But if the mark is shown in monochrome colors, it might not protected under Vietnamese law. This means that trademarks with monochrome arrays are protected only if combined with other identifying marks such as: letters, words, images, etc. to create the ability to distinguish goods and services.

Figurative trademark registration in Vietnam

• Figurative trademark protection means that the state, through the legal system, establishes the rights of the subjects with respect to the figurative mark and protects that right, against any infringement by a third party.
• Figurative trademark registration certificate is a document issued by a competent state agency to an organization or individual in order to establish industrial property rights to an image mark.

Marks are not protected as figurative trademarks

The following marks are not protected as trademarks:

• Marks identical or confusingly similar to national flags and emblems of other countries;
• Marks identical or confusingly similar to symbols, flags or badges;
• Marks identical or confusingly similar to images of Vietnamese or foreign leaders, national heroes and celebrities;
• Marks identical or confusingly similar to certification marks, inspection marks, or warranty marks of an international organization that such organization requests may not be used, unless this organization itself registers the products. such mark as a certification mark;
• Marks that mislead, confuse or deceive consumers about the origin, features, uses, quality, value or other characteristics of goods or services.

Dossier of trademark registration in Vietnam

• A declaration requesting the grant of a Certificate of Trademark Registration, made according to form 04-NH;
• Trademark template (size 80 x 80 mm).
• List of goods and services of the mark. The goods and services stated in the application for registration of a mark must be classified into the groups in accordance with the classification under the Nice Classification on the international classification of goods and services for the purpose of trademark registration, announced by the state management agency in charge of industrial property rights.
• Regulations on the use of certification marks/collective marks;
• Power of Attorney for Viet An Law, if applying through our intellectual property representative;
• Documents proving the right to register, if the applicant enjoys that right of another person;
• Documents proving the right of priority, if there is a claim for priority right.
• Copy of fee and charge payment documents;
• An explanation of the characteristic properties and quality of the good bearing the mark;
• Map of the geographical area (if the registered mark is a mark certifying the geographical origin of a product, the certification mark contains a place name or other mark indicating the geographical origin of a local specialty)
• Document of the People’s Committee of the province or centrally run city permitting the registration of the mark (if the registered mark of the certification mark contains a place name or other mark indicating the geographical origin of the local specialty) .

Procedure of trademark registration in Vietnam

Step 1: Select a mark and categorize goods and services bearing the mark

• The selected mark must meet the general conditions for a protected mark and not show any marks of being unprotected in the name of a mark.
• Goods and services bearing the mark must be classified into groups in accordance with the classification table under the Nice Agreement on the international classification of goods and services for the purpose of trademark registration, as determined by the management agency, announced by the state on industrial property rights.

Step 2: Research trademarks

• Trademark search is the first thing to do to assess the registrability of a trademark before filing an application.
• The trademark search helps customers to ensure that the registration application after submission will be able to be granted a registration certificate, avoiding the loss of filing costs and customers’ time.
• Customers can do a preliminary trademark search by themselves via website https://ipvietnam.gov.vn/ or WIPO’s page or through Viet An Intellectual Property Representative to conduct search and evaluate the protection possibility of the trademark.

Step 3: Submit a trademark application

• Applicants can choose to file a paper application or an online application through the National Office of Intellectual Property’s online public service portal.
• If the applicant chooses to file a paper application, the applicant can file a trademark registration application directly or through a postal service to one of the NOIP’s application receiving points, namely the Office of the National Office of Intellectual Property in Hanoi or Representative Office of NOIP in Ho Chi Minh City or Representative Office of NOIP in Da Nang city.
• If you choose to submit an application online, the applicant needs to have a digital certificate and digital markature, register an account on the Online Application Receiving System and have an account approved by the National Office of Intellectual Property.

Step 4: Formality examination of the trademark application

• The NOIP checks the compliance with the regulations on the form of the application, to assess the validity of the application.
• In case the application is valid, the NOIP shall issue a notice of acceptance of the valid application;
• In case the application is invalid, the NOIP shall issue a notice of its intention to refuse to accept the valid application, clearly stating the reason and setting a time limit for the applicant to correct errors or give objections. intended to refuse.
• If the applicant fails to correct the omissions, unsatisfactorily corrects the omissions or has no reasonable objection to the intended refusal, the NOIP shall issue a decision to refuse to accept the application.
• A trademark registration application shall be examined for form within one month from the date of filing.

Step 5: Publication the application

• A trademark registration application that has been duly accepted by the National Office of Intellectual Property is published in the Industrial Property Official Gazette.
• A trademark registration application shall be published within 2 months from the date the application is accepted as a valid application.

Step 6: Substantive examination of the trademark application

• A trademark registration application is subject to substantive examination to assess the possibility of granting a protection title to the object stated in the application under the protection conditions and to determine the corresponding protection scope.
• Time limit for substantive examination of applications: No more than 09 months from the date of application publication.

Step 7: Grant protection title

• If the trademark registration application does not fully satisfy the conditions for the grant of a protection title, the NOIP shall issue a notice of its intention to refuse the grant of a protection title, clearly stating the reason and setting a time limit for the applicant to object to the intended refusal or to issue a notice of refusal to grant a protection title if the applicant has no objection or an unwarranted objection to the intended refusal.
• If the trademark registration application fully meets the conditions to be granted a protection title and the applicant pays the fee, the NOIP shall issue a decision to grant a protection title and record it in the National Register on industrial property.

Fees and charges for image trademark registration in Vietnam

Trademark application fee

• From January 1, 2022 to the end of June 30, 2022, the fee for filing a trademark registration is VND 75,000.
• After June 30, 2022, the fee for trademark registration is 150,000 VND.

Examination fee for trademark registration

• The fee for examination of a trademark application (for a trademark for each group with up to 6 products/services) is VND 550,000.
• If the trademark application has more than 6 products/services in a group, an additional fee of 120,000 VND for each product/service from Saturday onwards.
• The fee for international classification of goods and services for a mark (for each group with no more than 6 products/services) is 100,000 VND.
• If each group has more than 6 products/services, the additional payment for each product/service from Saturday onwards is 20,000 VND.
• Fee for assessment of priority claim (per application/claim) is 600,000 VND.

Fees for researching information about trademarks

• The fee for information search to serve the appraisal (for trademarks for each group of up to 6 products/services) is 180,000 VND.
• If the object of search is a trademark with more than 6 products/services in a group, an additional fee of 30,000 VND must be paid for each product/service from Saturday onwards.

Fees for publication and registration of trademark information

• The fee for announcing information about the trademark is VND 120,000.
• The fee for registration of trademark information is VND 120,000.

Clients wishing to register figurative trademark registration in Vietnam, or register trademarks abroad, please contact Viet An Law for the fastest and most effective support!