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:
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:
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:
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:
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 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:
Some points to note when carrying out procedures for trademark registration in Vietnam:
Please contact Viet An Law Firm to be consulted, given detail information and settled difficulties and problems on registration of a Trademark in Vietnam!
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