Trademark registration is a necessary and sufficient condition for this trademark of goods and services to enter the market. In Vietnam, trademark registration are subjected to the “First-to-file” principle. Accordingly, trademarks can only be protected exclusively through registration, except for well-known trademarks.
Types of trademarks that can be registered for protection in Vietnam
According to the Law amending and supplementing a number of articles of the Intellectual Property Law 2022, effective from January 1, 2023, the following types of marks can apply for registration for protection titles in Vietnam:
Trademarks in the form of letters and words;
Brand image (logo);
Hologram branding;
Sound marks;
The trademark combines the above elements.
Dossier of trademark registration for granting a protection title
If you use the Viet An Law service of trademark registration, just provide us with the following documents
Trademark sample. For an sound mark, the mark template is an audio file and a graphical representation of that sound;
List of goods and services requiring trademark registration.
Other relevant documents (if any);
Sign the Power of Attorney according the form of Viet An Law.
Applications for trademark registration will be drafted by Viet An Law and represented by the client to work with the National Office of Intellectual Property (NOIP).
Filing your own trademark registration by yourself
To conduct the trademark registration procedure, the applicant needs to prepare and complete the following documents (for one trademark):
Trademark registration application
The declaration requesting the issuance of a Certificate of Trademark registration according to form No. 04-NH of Circular No. 16/2016/BKHCN with (02 copies: one is kept by the NOIP for carrying out procedures, another one is closed stamp, pasted the barcode and returned to the applicant).
Notes when draft a trademark declaration:
Regarding the description of the mark in the declaration, be sure that you clarify the constituent elements of the mark.
The application owner must describe and state the meaning of the mark: If a trademark contains words or phrases belonging to a figurative language, such words or phrases must be transcribed. If the mark contains words or phrases in a foreign language, it must be translated into Vietnamese. For marks that use a description relating to a foreign origin, the applicant must have a nationality in that country.
Classification trademark will be performed in accordance with the Nice Classification Table ed. 11-2022 version so that the registered mark is not rejected for the formal examination of the application and must pay additional fees due to incorrect classification.
One application can register for many classes of goods and services.
Only one protection title is granted for one application.
Trademark sample
Samples of trademarks submitted according to application: 10 attached samples to the declaration, the sample must not be smaller than 2cm x 2cm and not larger than 8cm x 8cm.
For an sound mark, the trademark template is an audio file and a graphical representation of that sound.
Power of attorney
Power of attorney for application: 01 copy (if submitted through Intellectual Property Representative).
Fees and charges
Application fee payment receipt (01 copy).
Documents proving the right to use
When registering a trademark containing the following special signs, evidence are required: Name, logo, flag, badge of agency, organization, certification mark, inspection mark, warranty mark, character names, images, trade names, indications of origin, awards, medals or symbols to represent goods, signs under the protection scope of other people’s technological designs.
Quantity: 01 copy.
Other documents
When a customer registers a collective / certification mark, the application should have the following documents:
Regulations on the use of collective / certification marks.
A description of the characteristic (or specific) nature and quality of the product bearing the mark (if the registered mark is a collective mark used for goods of particular nature or is a quality of the product or as a mark of geographical origin).
Map identifying the territory (if the registered mark is a mark certifying the geographical origin of the product).
Trademark registration procedure
There are type of register a trademark in Vietnam: (i) domestic registration in Vietnam and (ii) international trademark registration under the Madrid system (include Vietnam registration procedure at Office of country of origin).
In this article, we refer to direct registration in National Office of Intellectual Property in Vietnam. For your further information on internation trademark registration, kindly refer to the other article: Madrid system for trademark registration in Vietnam.
In order for a trademark to be granted an exclusive protection title, the procedure for filing a trademark registration application is carried out through the following steps:
Step 1: Choose a IP Representative Organization
With foreign-owned trademark, it is compulsory to file application through a Vietnamese Intellectual Property Representative Organization (or reffered to as IP Representative Organization).
It is not true to understand that law firm or consulting organization have IP representative function.
The Intellectual Property Representative organization are the real organizations with expertise and experience to advise and best evaluate the possibility of successful trademark registration.
Intellectual Property Representatives will assist in solving problems arising from objections and rejections of customers’ applications during the process of filing a trademark registration application in Vietnam.
An Intellectual Property Representative organization has the function of signing applications on behalf of the application owner and representing the application owner to work with the NOIP to ensure maximum benefits for customers.
Viet An Law Firm is an Intellectual Property Representative Organization legally, so customers will be guaranteed all rights when using our trademark registration services.
Step 2: Select a trademark with goods and services classification
Trademark selection: Select a trademark sample that meets the protection criteria. The selected mark is not similar to other registered trademarks, well-known trademarks, trademarks are descriptive signs that are not capable of granting protection.
Select the list of goods and services: You need to select the list of goods and services bearing the trademark according to the above instructions. Classifying trademark for goods and services relatively needs to be carried out according to the Nice Classification of for trademark registration.
Step 3: Trademark Research
Benefits of trademark search
In order to successfully register a trademark, that is, a registered trademark can be granted a protection title, the owner should carry out a trademark search process.
The trademark search help to determine the registrability of the mark compared to other marks of the same classification registered previously at the NOIP or not?
After the results of the trademark search are available, the applicant will decide whether or not to register the searched mark.
The trademark search also contributes to determining whether the mark can be granted a protection title or not?
If it is determined that the mark is not capable of being granted a protection title, the owner should consider an amendment to be able to be granted exclusive protection.
A trademark search help to avoid the long waiting time after examination step but not issue the expected results.
Documents to prepare when searching for trademarks
To perform a trademark search, customers only need to provide Viet An Law with:
Trademark samples;
List of goods and services required to search and register.
Preliminary trademark research
Clients can look up trademarks by themselves via website: https://ipvietnam.gov.vn/ or WIPO’s website. Through Viet An Intellectual Property Representative, conduct a search to assess the registrability of the mark;
Time for preliminary search period is 01 day from the time the customer provides the trademark, list of goods and services;
After a preliminary search, if it is found that the trademark is not registrable, Viet An’s lawyer will present relevant counterarguments to find the best solution for the trademark registration. If it is possible to register a trademark, Luat Viet An will conduct an in-depth search as required and the customer will have to pay a search fee.
In-depth research
After conducting a preliminary search of the mark and finding a possibility of registration, trademark owners require an in-depth search to appreciate the possibility of granting a protection title. This is not a required step, but it should be done to increase the probability of successful registration and save time.
The in-depth search is a completely voluntary procedure. The applicant should proceed with this procedure as it is an important step in assessing whether the trademark should be filed for protection.
The trademark search is also for reference only and is not a basis for granting or not granting a protection title. Because a part of the result relate to priority right as described above.
Time for in-depth search: 01-03 days.
Trademark search results: Notice of trademark search results and advice on feasibility assessment, instructions on how to carry out registration procedures.
Step 4: Submit application dossiers
After an in-depth search and the mark is assessed to be registrable, the applicant will proceed to submit a registration application. Right after submitting the application for registration, the applicant must pay the registration fee as follows:
Application fee for 01 group of goods and services
For an application with 01 group of goods or services in which includes only 06 goods or services:
Application fee per 01 application;
Substantive examination fee;
Search fee for trademark examination;
Granting protection titlte fee;
Official registration fee;
Publication of decisions on the grant of protection titles fee;
Application fee covers many classes of goods and services
For each additional group of protection goods/services, the Granting protection titlte fee increases a specific amount as prescribed by law;
For each group of goods/services registered for protection with more than 6 goods/services registered, additional fees must be paid for each product/service from 7th onwards plus:
Substantive examination fee;
International classification fee;
Search fee for trademark examination.
Agencies receiving and processing dossiers and collecting registration fees in Vietnam: Vietnam Intellectual Property Department (NOIP).
Step 5: Formality examination of the application
The time limit for formality examination is 1 month from the filing date.
The NOIP will consider the application for eligibility in terms of form, trademark samples, application owner, filing right, classification, etc.
If the enterprise’s application meets the conditions, the NOIP will issue a Notice of Acceptance of a valid application and publish the application.
In contrast, the NOIP will issue a Notice of Non-acceptance of the application and request the enterprise to amend. The application owner and the applicant’s representative shall make amendments as required within a specified time period. Then, proceed to submit the revised official letter to the NOIP and pay an additional fee if the group is classified incorrectly.
Step 6: Publication of trademark application
Time limit for publication of trademark application: 02 months from the date of notification of valid application acceptance.
Application publication include information about valid applications stated in the notice of acceptance of valid applications, trademark samples and a list of classes of goods and services.
Form of publication: Website of the National Office of Intellectual Property and the Industrial Property Official Gazette in written.
Step 7: Substantive examination of the application
Time limit for substantive examination: 09 months from the date of application publication.
The NOIP will consider the conditions for trademark registration. Base on that, the NOIP will assess the possibility of granting a degree to the mark that the applicant has registered. If the application meets all conditions, the NOIP will issue a Notice of intention to grant a trademark protection title.
In contrast, the NOIP issues a Notice non-grant protection title to the trademark. The trademark application owner shall consider and send a written response to or appeal against the decision of the NOIP. The applicant need to give the grounds (meet the burden of proof) legally for granting a trademark protection title.
Step 8: Pay for granting protection title fee
After receiving the notice of intention to grant a protection title, the applicant shall pay the granting fee as stipulated by law.
Granting protection title fee;
Official registration fee;
Publication of decisions on the grant of protection titles fee;
If the application contains many classes of goods and services, the fee for the license will be increased by a specific amount as prescribed by law.
After the trademark owner has made the payment of granting protection title fee, the NOIP will grant trademark protection titles within 2-3 months from the date of fee payment.
Trademark registration time is about 12-18 months from the date of acceptance of valid application.
Term of trademark protection: Trademarks are protected for 10 years from the filing date (priority date). Enterprises can renew their protection titles and there is no limit on the number of renewals. Therefore, the trademark will be an asset throughout the operation and business process of the enterprise.
Classifying goods and services for trademarks
Classifying goods and services according to the Nice Classification when registering a trademark is important. Each registered trademark corresponds to a class of services or goods. In order to classify classes of goods and services, it must be based on expertise in trademarks. Accordingly, when classifying marks, it is noted that:
The classification of marks is based on the International Classification Nice of Trademarks. Most of the trademark registrations of countries around the world apply this classification.
There are many types of goods and services on the market. But, the goods and services according to the Nice Trademark Classification also have only 45 classes in all. In which, there are 34 classes for goods and 11 classes for services.
Classification of marks is different from the industry code stated in the Certificate of Enterprise Registration.
In Vietnam, registration fee is charged based on the classed of goods and services for which the mark is registered. Thus, an application for more classes of goods and services will cost more.
A trademark can be registered for many types of goods and services.
How to register a trademark?
For Vietnamese individuals, organizations and enterprises
Directly file a registration application at the NOIP.
Through the Intellectual Property Representative to apply and carry out the package procedures.
For individuals, organizations and foreign enterprises
Applications can only be filed through Intellectual Property Representatives. Viet An Law firm – an Intellectual Property Representative is eligible to register applications for foreign individuals, organizations and enterprises.
Scope of trademark protection
Trademark owners have the right to apply for worldwide protection in any country. However, trademark ownership is limited to the territory of each country. Example: if trademark was granted Protection title in Vietnam, trademark owners are only entitled to trademark protection in the territory of Vietnam.
Signs capable of granting a Trademark Registration Certificate
Such distinctive signs must be visible in the form of letters, words, drawings, images, including three-dimensional figures, or a combination of such elements, represented by one or more colors.
A visible sign may be protected as a trademark if it is capable of distinguishing and not deceiving consumers.
The sign is unlikely to conflict with the previous established rights of other subjects such as trademarks, trade names, geographical indications, or industrial designs of other subjects.
If a trademark template is a sound, it must be an audio file and a graphical representation of that sound;
The trademark template must be described to clarify the constituent elements of the mark and the overall meaning of the mark (if any);
If the mark contains words or phrases belonging to figurative language, such words and phrases must be transcribed;
If the mark contains words or phrases in a language other than Vietnamese, it must be translated into Vietnamese
Importance of trademarks in business
As analyzed, trademark is one of the intangible assets but has a particularly great tangible value in the commercial business activities of each
In fact, the value of the brand name of the enterprise is greater than the value of the tangible assets of the enterprise. According to statistics in 2020, the brand value of some famous brands in the world is determined to be extremely large. For example, the Apple trademark is valued at $323 billion, the Amazon trademark is valued at $201 billion , the Microsoft trademark is valued at $166 billion, the Google trademark is valued at $165 billion, the Samsung trademark is valued at 62 billion USD, Coca-Cola brand worth 57 billion USD, McDonald’s brand worth 43 billion USD ,…
Benefit of trademark registration
Establishing trademark ownership
Priority right is confirmed from the date of application.
Trademark owners can establish ownership after being granted a Certificate.
Create a trademark protection mechanism
Establishing trademark rights will prevent other subjects from infringing on their trademark during
It is a legal basis to protect your rights if there is an unauthorized violation of the trademark.
Developing a reputable and sustainable brand
Create trust and sustainable cooperation with distributors when there is a brand to develop.
Helping businesses create professionalism and prestige with partners.
Maybe they will grow and become famous reputable brands such as: Samsung, Google, Cocacola, Apple, Microsoft, Viettel, Vingroup, Hoa Phat, etc.
Satisfy the e-commerce market access
When participating in sales on commerce sites such as e-commerce platforms, trademarks must be registered.
The trademark owner must prove that he has filed an application at the trademark registration office.
Shopee, Sendo, Lazada, Amazon, Ebay, Alibaba, etc, e-commerce sites in Vietnam and abroad all require that shop owners can only sell goods when they have registered trademarks.
Economic benefits
The cost of filing an application is very low compared to the cost for resolving a dispute if it occurs.
Trademarks have the ability to develop into an asset that is sometimes greater than its goods or services.
Some notes when processing trademark registration procedures
Consolidating the contents related to trademark registration is extremely important. That is the identity of the mark with other elements related to the mark. These are all factors surrounding the trademark you intend to register. Trademark must be identical with the following elements: Trade name, domain name, copyright, positioning sentence of the mark. Priority when registering a trademark is also important information to know.
Consistency between the trademark and the trade name of the enterprise
The trademark name should be consistent with the company’s own name. Example: The company registered the trademark Viet An and named the company as Viet An Law Firm.
When the brand name and the company name are the same, it will avoid competitors from registering their trademarked similar to your trade names. Although the trademark has already been granted a protection title, the trademark owner cannot handle infringement.
Trademark owners cannot ask a competitor to stop using a trade name. The reason the competitor registered a trade name before the date the trademark owner was granted the trademark.
Consistency between trademark and domain name
In case of trademark registration, the company name (trade name) of the company is not identical with the registered trademark. In this case, the trademark owner can choose to register a domain name with the same trademark. Note: If doing business in Vietnam, you should register an additional domain name ending in “.vn”.
In fact, it takes more than 1 year to establish a trademark owner’s right. After being granted a Protection Title, they are entitled to request the infringer to stop the following acts: (i) Competitors violate trade name registration cease their infringing acts, (ii) Competitors cease to violate domain names.
Consistency between trademark and copyright. Trademarks are presented in the form of applied art with images and text.
For image marks (logos) with the same trademark information but not yet registered the company’s trade name.
Trademark owners who do not need to register a domain name should register a copyright. The registration of this copyright is similar to the registration of trade names and domain names.
Result: Trademark owner after being granted a protection title. The owner will handle violations related to commerce and domain names.
Notes on brand colors
According to the provisions of the intellectual property law of Vietnam, there is no specific regulation on the color of the trademark. Therefore, it is difficult to determine whether a black-white or an absolute color registration has more ownership. In Vietnam, trademarks registered in black-and-white are used in different colors. The black and white mark still retains the text/image content of the mark. It does not infringe the rights to another person’s registered black-and-white or color trademark.
Trademarks registered in Vietnam should give priority to trademark registration in black and white form. It will be more optimal and cost-effective than registering a trademark as a dark color.
Notes on brand image (logo), text, positioning sentence (slogan)
Image marks (also known as logos): Image marks can be registered independently or in combination with text and positioning sentences when registering.
Letter marks: When registering a trademark, you can choose either lowercase or stylized letters.
Notes about priority right
The right of priority affects whether or not to grant a Trademark Registration Certificate to other trademark owners.
According to the provisions of the Intellectual Property Law and relevant international treaties as follows:
The application owners are different but have the same object of trademark protection. These applicants have different filing options. The applicant files in Vietnam. Another applicant filed under the international regime. The first applicant under the international scheme is counted for an additional 06 months from the date of filing when the application is returned to Vietnam. Thus, the first applicant in Vietnam is not definitely the first applicant according to regulations.
It is difficult to confirm that a trademark after being searched and filed for registration will be granted a protection title.
Some notes when designing, choosing trademark
To ensure the possibility of exclusive protection for your trademark, the owners need to design trademark with their uniqueness and distinction from other brand owners.
Trademarks can be a combination of text and images. In case the mark is just words, it should be stylized so that it can be granted a protection title when registered.
Notes about signs that are not granted a trademark protection title or exclusion signs should not be used as trademarks
Trademarks should not include: Simple geometry, numbers, letters, words of uncommon languages in Vietnam;
Trademarks should not contain signs, conventional symbols, drawings, common names of goods or services in any language (such as translation into English, Japanese, Chinese, or Latin).
Trademarks should not be designed as signs indicating time, place, production method, type, quantity, quality, nature, composition, use, value or other descriptive characteristics of goods and services;
Trademarks should not be designed as signs describing legal forms and business fields;
Trademarks should not be designed as signs indicating the geographical origin of goods or services;
In case customers use exclusion elements in the mark they want to register, they can design a stylized design to create their own special identification mark, then the new mark can be granted a protection title.
The best way to assess the possibility of trademark protection is to do a trademark search before filing an application. Viet An Law will conduct preliminary and in-depth research before performing the work according to the process.
Frequently Asked Questions
Trademark is one of the priceless assets. It affirms the position of each product or service in the mind of the consumer. To form a separate brand that includes a full range of messages sent to customers. Ask questions if you are wondering about the trademark you are looking to register.
What is a trademark?
Trademark is a sign used to distinguish. A trademark is a distinction in the form of letters, words, drawings, images, and three-dimensional figures. The combination of those elements is represented by one or more colors. Visible signs of a mark have the ability to distinguish and not deceive consumers. A protected mark does not conflict with the earlier established rights of other subjects such as: Trademarks, trade names, geographical indications or industrial designs of other subjects.
Who has the right to register a trademark in Vietnam?
Vietnamese individuals, organizations and enterprises;
Foreign individuals, businesses and organizations.
Why do you need a trademark search?
Research to find out if the trademark is similar to the trademarks of other registered entities?
At the same time, evaluate the possibility that the applied mark will be granted a protection title or not?
How long is a trademark protected?
Trademarks are protected for 10 years from the date of filing.
If you want to continue to be protected, the owner must carry out the procedure to renew the trademark. Each renewal, the trademark will be protected for an additional 10 years with no limit on the number of renewals.
Is it necessary to use a trademark after being granted a patent?
If the trademark is not used for a period of five consecutive years, it will be required by another entity to terminate its validity.
Trademarks after being licensed must be used.
Does trademark registration in Vietnam apply the principle of first filing?
Vietnam applies the principle of first filing in trademark registration , also known as the fist-to-file principle.
What is the product classified of the trademark?
The classification of registered trademarks is based on the International Classification of Trademarks (Nice Classification) which is applied worldwide. All goods and services on the market have many types, but according to the Trademark Classification, there are only 45 classes. In which, there are 34 classes for goods and 11 classes for services. In Vietnam, the fee for trademark registration is charged based on the group of goods and services for which the mark is registered.
How long does registration take?
According to the law, the time limit for trademark registration is about 12-15 months. In fact, the registration process from the beginning to the grant of a protection title usually takes about 18-24 months.
If the trademark is not granted, can the fee be refunded?
An application that is not granted a trademark protection title will still lose the filing fee and will not be refunded. If the application owner is not granted a protection title, he will not have to pay the fee for the grant of a protection title and the fee for disclosing information about the grant which is more than 360,000 VND in total.
How much does it cost to register a trademark?
Fee for filing an application for protection of industrial property rights
Application fee (including separation and conversion applications): 150,000 VND
Fee for requesting extension of time limit for replying to notices of fee-collecting organizations (each time extension is allowed): VND 120,000
Industrial property substantive examination fee:
Fees for examination of industrial property registration applications; request amendments to narrow the scope of protection; to settle complaints (for brands with up to 6 goods/services per class): 550,000 VND
Trademark application with more than 6 goods/services in a class, additional payment for each page, for each product/service from 7th class onwards: VND 120,000
Fees for research information on industrial property
Fee for research information to serve the examination, complaint settlement and other tasks within the scope of responsibility: 180,000 VND
If the object of search is a trademark with more than 6 goods/services in a class, an additional fee must be paid for each product/service from 7th class onwards: 30,000 VND
Fees for grant of protection titles: 120,000 VND/1 trademark/1 class of goods and services, each class of goods and services increased by 100,000 VND.
Fees for publication and registration of industrial property information
Industrial property publication fee: 120,000 VND
Registration fee for information on industrial property: 120,000 VND
Representative and consulting service fees: according to each individual unit.
Trademark registration consulting service of Viet An Law Firm
Legal advice on conditions for trademark registration.
Consultancy on the possibility of being granted an exclusive protection title of the mark.
Free preliminary trademark search.
Official trademark search at the National Office of Intellectual Property – independent cost.
Consulting on the process and procedures of trademark registration.
Drafting trademark registration documents.
Trademark registration representative for customers during the trademark registration process.
Submit dossiers and monitor the process of registration and examination of applications at the National
Office of Intellectual Property.
Representing customers in the entire process of establishing rights and responding to correspondence with
the National Office of Intellectual Property about trademark registration.
Exchange and provide information to customers in the process of trademark protection registration.
Objecting to, complaining about contents related to trademark registration applications.
Receive a trademark protection title and transfer it back to the customer.
For quick and effective trademark registration, please contact law firm, Viet An Intellectual Property Representative. With nearly 20 years of experience in the field of intellectual property, we will advise and carry out procedures related to trademark registration in the fastest, and most cost-effective!
There are two common ways to register a trademark abroad: (i) direct registration in each country and (ii) international trademark registration under the Madrid system.
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