Fulfill the procedure registration trademark in Vietnam

In business, not only machineries, factories, equipment, goods, and services are important tangible assets, trademarks are also ones of great value to each enterprise. Trademark means any sign used to distinguish goods or services of different organizations or individuals. Thanks to trademarks, enterprises can affirm the quality of specific goods and services, helping to build trust, prestige and reputation; improve the competitiveness of their products in the market, avoid the risks of counterfeit products, help businesses protect their trademark when there are acts of trademark infringement; minimize damage to the business in the event of a dispute.

So how to prevent trademark infringement? The best solution for enterprise is do the trademarks registration in Vietnam for their products. Viet An Law Firm – Vietnam intellectual property agent would like to specify the steps to do the protection trademark in Vietnam as follows:

Legal base on the trademark registration in Vietnam

– Intellectual Property Law 2005 (Amended Intellectual Property Law 2009, 2019);        

– Decree 103/2006 / ND-CP Guiding the Intellectual Property Law on industrial property;        

– Circular 01/2007 / TT-BKHCN guiding the implementation of Decree 103/2006 / ND-CP guiding the implementation of the Law on Intellectual Property on industrial property issued by the Ministry of Science and Technology;        

– Circular 16/2016 / TT-BKHCN on amending Circular 01/2007 / TT-BKHCN guiding the implementation of Decree 103/2006 / ND-CP guiding the Intellectual Property Law regarding industrial property, amended by Circular 13/2010 / TT-BKHCN, Circular 18/2011 / TT-BKHCN and Circular 05/2013 / TT-BKHCN issued by the Minister of Science and Technology;        

– Circular 263/2016 / TT-BTC on fees and charges for industrial property and the collection, transfer, management and use thereof issued by the Minister of Finance;        

– Circular 31/2020 / TT-BTC amending Circular 263/2016 / TT-BTC regulating rates, regime of collection, payment, management and use of industrial property charges and fees by the Ministry of Finance promulgate;        

– The international classification of goods and services (The Nice Classification version 11-2020).        

Trademark search

– Clients shall send a trademark sample and list of goods, services that contain a trademark to Viet An Law Firm so as to we are able to do the preliminary search and assess the feasibility of registering a trademark. (Note: Trademark shall not be a well-known trademark or words, images that describe products or services, Trademarks are not simple words or geometrical characters). This is one of the first steps in registering a trademark.

– Classifying products and services into classes corresponding to the clients’ business line

(Current applicable classification Nice version 11-2020)

Preliminary search (free):

Viet An Law will conduct a free preliminary search for clients to assess the feasibility of trademark registration in Vietnam within 01-02 days from the date the client provides information.

After a preliminary search, if the trademark is incapable of protection for some certain reasons such as the sign is identical or similar to a trademark registered by another applicant, Viet An Law Firm will give advices and solutions for customers to change and meet conditions of differences with the registered trademarks and to be able to grant protection titles in the future.

Some useful websites for searching industrial property information:

– http://iplib.noip.gov.vn/WebUI/WSearch.php     

This is a website under the digital library of industrial property in Vietnam. At this website, users can search for information on published trademark applications or being granted protection titles in Vietnam.

– http://www.wipo.int/madrid/monitor/en/index.jsp     

This is WIPO’s trademark information lookup website, at this website, users can look up information about trademarks of member countries filed under the Madrid system, which includes international trademarks.

Intensive search before filing a trademark application in Vietnam

(These are not mandatory steps to carry out trademark registration, but we recommend that applicants conduct this Intensive search to enhance the possibility of assessment of the protection of the trademark.)

In cases, after a preliminary search and the mark is capable of registration, it can make the intensive search through Vietnamese and international data systems to enhance the ability of assessment on the feasibility of granting a trademark protection title.

The intensive search is completely optional for the applicant. However, this procedure should be carried out as the first and important step in assessing whether a trademark should file for protection? However, the trademark search is for reference only and is not a basis for granting or not granting a protection title (this is partly related to priority rights when registering trademarks or due to incomplete data updates during the search).

The trademark registration documents that customers need to prepare: 02 samples of the trademark not smaller than 3 × 3 cm, not exceeding 8 × 8 cm.

Intensive trademark search procedure through Viet An Law Firm: from 05-07 working days.

Trademark Search Results:

A notification of trademark search results shall be compiled by Viet An Law with searchable results.

Filing application of trademark registration and monitoring the trademark registration process at the National Office of Intellectual Property

Stage 1: Filing a trademark registration declaration (filing a trademark registration application):

After an in-depth lookup and a trademark that is considered likely to be registered, Viet An Law will conduct filing the trademark registration application at the National Office of Intellectual Property

The trademark registration documents that customers need to prepare:

• Power of Attorney (attached form)
• 01 trademark sample (not smaller than 3 × 3 cm, not exceeding 8 × 8 cm)
• List of products and services intended for trademark registration.
• Viet An Law shall prepare the rest of documents according to the regulations for the trademark application.

In addition to the above required documents, when a customer registers a collective trademark, a certification trademark… the customer must provide additional documents to Viet An Law Firm as follows:

• Regulation on using collective mark/ certification mark;
• Explanatory statement on the particular (or specific) nature and quality of the trademarked product (if the registered trademark is a collective trademark used for a product of a particular nature or a certification mark for the quantity of the product or a trademark certifying a geographical origin);
• Map showing territory (if the registered trademark is a trademark certifying the geographical origin of the product).

The agency receiving and processing trademark registration dossiers in Vietnam: Vietnam National Office of Intellectual Property.

Results of stage 1: The Declaration of trademark registration

Stage 2: Examination of the form of Trademark Registration Applications

The time limit for the examination of the form of trademark registration applications is from 01 – 02 months from the filing date.

• The National Office of Intellectual Property shall consider the application with eligibility in terms of form, label pattern, owner of the application, the right to file applications, classification, etc.
• If the application of enterprise satisfies the conditions, the National Office of Intellectual Property will notify the acceptance of the valid application and publish it on Official Gazette A after 2 months from the date of acceptance of the valid application.
• If the application of the enterprise does not meet the conditions, the NOIP shall issue a Notice of non-acceptance of the application and request the enterprise to amend. Enterprises make modifications as required and submit the amended documents to the National Office of Intellectual Property.

Results of Stage 2 of the trademark application:

Notice of acceptance a valid application

The time limit for publication of trademark registration applications on the Official Gazette A: 02 months from the date of issuing the notice of acceptance of the valid application.

The content of publication of a trademark registration application is the information related to a valid application stated in the notice of acceptance of the valid application, trademark sample, and attached list of goods and services.

Stage 3: Substantive Examination of Trademark Registration Applications:

The time limit for substantive examination: 09 months from the date of publication.

• The National Office of Intellectual Property shall examine the conditions for registering a trademark, thereby evaluating the possibility of granting a certificate for the trademark registered by the enterprise. If the trademark registration application satisfies all conditions, the NOIP shall issue a notice of intention to grant a trademark to the mark already registered by the enterprise.
• If the mark registration application does not meet the conditions, the NOIP issues a notice not to grant a certificate for the trademark registered by the enterprise. The enterprise shall consider and send a written response to the decision of the NOIP, and at the same time provide grounds for granting a trademark protection certificate to the trademark of the enterprise.

Result of Stage 3: Notice of intention to grant a trademark protection title and pay a licensing fee

Stage 4: Receipt of Certificate of Trademark Registration and hand over to customers

Result of stage 4: Certificate of Trademark Registration.

After the decision to grant the Certificate, Viet An Law Firm shall notice the Business to pay the granting fee for the Certificate and getting the Trademark Protection Certificate and deliver to the customer.

The time limit for granting Protection Title: 02-03 months from the date of paying fees for granting the Certificate.

According to the experience of Viet An Law Firm, the Trademark Registration period will usually last about 12-18 months from the date of accepting a valid application.

Term of a Trademark Protection Title in Vietnam:

Trademarks are protected for 10 years from the date of application (or priority date, if any). Enterprises are allowed to extend their protection titles and not limit the number of extensions. Therefore, trademarks will be a property throughout the process of operation and doing business of enterprises.

Consultancy Service of Trademark Registration in Vietnam of Viet An Law Firm:

• Provide legal advice on procedures and conditions for Trademark Registration;
• Counseling on feasibility when registering Trademarks;
• Free preliminary search of the capability of Trademark Registration;
• Un-official intensive search for Trademark at the National Office of Intellectual Property – Independent cost;
• Representing customers for Trademark Registration and for throughout the process of Trademark Registration;
• Drafting documents/ dossiers for trademark registration;
• Filing and monitoring the process of registration, the examination of applications at the National Office of Intellectual Property;
• Representing customers in the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property on trademark registration;
• Exchanging and providing information to customers during the process of trademark protection registration.
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