Guidance on Registration of a Trademark in Vietnam

Viet An law firm was established in 2007 and has been recognized as an Intellectual Property Representative Organization of Vietnam at The Intellectual Property Office of Vietnam. After 15 years of operation, Viet An Law is proud to be one of the most prestigious law firms, providing the best services to clients in the field of legal consultancy, services of consultancy on intellectual property and Intellectual Property Representative service in Vietnam. Viet An Law Firm details the procedures for trademark registration in Vietnam as follows:

Legal grounds and method of applying for trademark registration of foreign individuals and organizations in Vietnam

Vietnam is a member of almost all international conventions on intellectual property rights such as the TRIPS Agreement, 1967 Paris Convention, 1971 Berne Convention, 1981 Rome Convention, 1989 Washington Agreement, Madrid Agreement, Madrid Protocol, Patent Cooperation Treaty (PCT). Besides, Vietnamese law has very specific provisions, details on intellectual property rights in general, and trademark rights in particular in the national laws and regulations: Vietnam Intellectual Property Law 2005 and others implementing regulations.

Therefore, foreign individuals and organizations wishing to apply for registration of trademark protection in Vietnam may use either of the following two methods:

• Foreign individuals and organizations may register international brands under the Madrid Agreement administered by WIPO (in case of the state party of the Madrid Agreement or the Madrid Protocol).
• Foreign individuals and organizations may choose the method of direct application for trademark registration in Vietnam through an Intellectual Property Representative Organization such as Viet An Law Firm.

The trademark filing rule of Vietnam

Under the Law on Intellectual Property (Article 90.2), where two or more applications for registration are filed by different parties for the same invention, for registration of industrial designs identical with or insignificantly different from each other, for registration of marks identical with or confusingly similar to each other, or identical or similar goods or services, a protection title may only be granted to the valid application with the earliest priority or filing date amongst applications which satisfy all conditions for the grant of a protection title, except in the cases well-known mark is recognized in Vietnam.

Based on the above principle, Viet An Law Firm would like to send to our customers the following procedures for trademark registration in Vietnam:

Step 1: Vietnam Trademark search of the availability

Registration of a Trademark in Vietnam follows the classification list of goods and services’ trademark (Nice Classification) applied worldwide. Therefore, for each class of goods and services, customers need to check the trademark within the related goods and services class.

General research whether the trademarks are possible to be registered in Vietnam or not

Customers could do free general research through one of the following databases:

• WIPO IP Portal: Global trademark database administered by the World Intellectual Property Organization – WIPO. Customers can visit the website at:

https://www3.wipo.int/branddb/en/

• IP Lib: Vietnam’s trademark database is administered by the National Office of Intellectual Property of Vietnam – NOIP. Customers can visit the website at:

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

However, the research on these databases is very complicated and time-consuming, even somewhat outdated. Clients shall submit a good trademark sample and a list of goods, services that are planed to register to Viet An Law Firm for the operation of profound research before filing an application.

Profound research before the filing of the application for registration of the mark in Vietnam

Profound research is a completely voluntary procedure for applicants in Vietnam. However, customers should carry out this procedure because this is the first and important step for a preliminary assessment of whether a trademark should apply for registration. Therefore, a trademark search of the availability is only for reference and is not a base for a privately protected title.

Required dossiers for trademark search

For trademark search, customers shall submit to Viet An Law the following dossiers:

• Good’s trademark sample
• List of goods, services that are planned to register.

Duration: This stage will last for 01-03 days with the result of a notice of trademark search results if operated by Viet An Law Firm.

Step 2: Submitting the register trademark dossier and supervising the registered progress at the National Office of Intellectual Property

After overall progress and it indicates that the trademark is highly possible to be registered, Viet An Law Firm shall submit the dossier to the National Office of Intellectual Property.

Required dossiers for registration of the mark include:

• Sample of the mark;
• List of goods or services bearing the mark which are planed to register;
• Information of the trademark registrant (name, address, representative, position);
• Documents evidencing the registration right, if such right is acquired by the applicant from another person;
• Power of attorney, if the application is filed through a representative;

The process of filing of the application for registration of the mark in Vietnam:

Filing of the application for registration of the mark in Vietnam

On the day that Viet An Law submits the mark registration applications at the Intellectual Property Office of Vietnam (NOIP), Viet An Law will send the customer a declaration form containing the application number and date of submitting the mark registration applications in Vietnam. (In case the application is accepted the invalid application – the date on which the application is accepted as valid will be the priority date of the mark registration applications.)

Formality examination of Vietnam trademark application

The time limit for formality examination was one month from the filing date

National Office of Intellectual Property shall determine whether the application form satisfies the format, trademark sample, the owner of the application form, classes,…

In case the registration form contents with the requirements, the National Office Of Intellectual Property shall make an announcement of accepting the valid application and permitting to notifying the form.

In the case of the unqualified application form, the National Office of Intellectual Property shall make an announcement of not accepting the application and suggesting the applicant have amendments. The applicant then will make amendments following the requirements and submit the statement of the amendment to the National Office of Intellectual Property.

Publication of Vietnam trademark application on IP Gazette

NOIP shall publish the Vietnam Trademark applicant for any possible opposition on Vietnam IP Gazette within 02 months from the date the competent authorities release notification of valid dossier.

The content of the application for registration of a trademark shall include the information relating to the valid application form written in the notification of valid dossier, trademark sample, and list of goods, services.

Substantive examination of the trademark in Vietnam

The time limit for substantive examination was nine months for substantive examination.

National Office of Intellectual Property shall take the requirements of registration for trademark into account and evaluate the ability to issue protection titles for the registering company.

If the registration form meets all the requirements, the National Office of Intellectual Property will release the announcement of the intention of issuing a protection title for the trademark which the company has registered.

If the registration form is unqualified with the requirements, the National Office of Intellectual Property will make an announcement of not issuing a protection title for the trademark which companies have registered. The company, then considers and sends the answer, the complaint against the National Office of Intellectual Property’s decision, and simultaneously provides evidence to prove the ability to issue protection title for the company’s goods, services.

Granting trademark protection title in Vietnam

The term of issuing protection title: within 02-03 months from the date of payment of fees and charges.

After the decision of issuing a protection title is released, Viet An Law Firm shall have information to clients to pay fees and charges and transfer the protection title to clients.

All in all, the term of registration of a trademark will last 15-18 months from the date of filing the application.

Cases of claiming priority rights in Vietnam

Under the Law on Intellectual Property (Article 90.3), Where two or more applications are satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, a protection title may only be granted to a single application from such applications with agreement from all applicants. Without such an agreement, all such applications shall be refused the grant of a protection title.

An applicant for registration of a trademark may claim priority based on the first application for registration of protection of the subject matter if the following conditions are fully satisfied:

• The applicant is a citizen of Vietnam or a member country of the Paris Convention or resides or has a production or production establishment in Vietnam or in that member country;
• The first application had been filed in Vietnam or a member country of the Paris Convention and contains a section relevant to the claim for the priority right in the application for registration of a trademark;
• The registration application is filed within six months from the date of first filing;
• In the application for registration of a trademark, the applicant clearly states his/her claim for the priority right and submits a copy of the first application with certification by the agency which receives the first application in case of overseas filing;
• The fee for the claim for priority right is fully paid.

The term of trademark protection in Vietnam:

Trademark shall be under protection for 10 years from the date of submitting the application form (the priority date). The company will extend the term of protection title and will be not limited to the number of extensions. Therefore, the trademark is going to be an asset throughout the operation, business of the company.

The term for submitting the application for extension of validity of protection titles in Vietnam: 

Within 06 months before the expiry date of a trademark protection certificate, the customer must submit an application for an extension to the National Office of Intellectual Property of Vietnam.

However, customers should note that:

• After having been granted a protection title, if the trademark owner does not use the trademark continuously for a period of 5 years from the date of filing, the protection title may be canceled by another person.
• After 05 years from the expiry date of the protection title of trademark, if the owner of the title does not submit applications for extension of validity of protection titles, other subjects may register the trademark.

Some points to note when carrying out procedures for trademark registration in Vietnam:

• Regarding Law on Intellectual property 2005, the objects are allowed to register for a trademark in Vietnam includes individuals and business organizations.
• The priority date has a prominent impact on the decision on issuing or not issuing protection titles for other subjects. From the date when the first application form is sent to the date submit an application form in Vietnam if there is another subject submitting for the same object, the application form of the first object will be considered to have the same register date as the first registration date in other countries and is prioritized to protect.
• There should be a consistency between the registered trademark name and the trade name of the enterprise, domain name, and copyright registration of applied art to the trademark which has a part of images and words to avoid cases of abuse or infringement of the competitors.
• To manage the process economically, the white-black trademark should be on the top of priority. Because the registration in Vietnam allows white-black trademark to be used in various colors, provided that it still remains the content, letter, images and does not infringe the right of other registered white-black or colored trademarks.

Please contact Viet An Law Firm to be consulted, given detail information and settled difficulties and problems on registration of a Trademark in Vietnam!