Mistakes to avoid when registering a trademark

Registering trademark is increasingly popular in Vietnam. However, not every trademark application submitted to the National Office of Intellectual Property is protected. The applications were rejected mainly due to their lack of distinguishability from previously registered trademarks. In the article below, Viet An Law Firm – Intellectual Property Representative will provide basic legal advice on mistakes to avoid when registering a trademark in Vietnam.

What is a trademark?

According to Clause 16, Article 4 of the 2005 Intellectual Property Law, amended and supplemented in 2009, 2019, and 2022, a trademark is a sign that distinguishes the goods and services of different organizations and individuals.

Trademark registration is the mandatory process to protect trademark legally under Vietnamese law, unless the trademark recognized as famous trademark in Vietnam.

Mistakes to avoid when registering a trademark in Vietnam

Not researching the trademark carefully

Not all trademarks registered at the National Office of Intellectual Property will be protected. According to Article 72 of the current Intellectual Property Law, a trademark is protected if it meets the following conditions:

• A visible sign in the form of letters, words, drawings, images, holograms, or a combination of such elements, represented by one or more colors or sound signs expressed in the form of graphic form;
• Able to distinguish the trademark owner’s goods and services from those of other entities.

According to the provisions of Article 73 of the Intellectual Property Law, signs that are not protected as trademarks are:

• Signs that are identical or confused with the National Flag, National Emblem, National Anthem of the Socialist Republic of Vietnam and other countries, international anthems;
• Signs identical or confused with symbols, flags, badges, abbreviations, full names of state agencies, political organizations, socio-political organizations, political organizations socio-professional organizations, social organizations, socio-professional organizations of Vietnam, and international organizations, if not authorized by those agencies or organizations;
• Signs that are identical or confused with the real names, nicknames, pseudonyms, or images of leaders, national heroes, or famous people of Vietnam or foreign countries;
• Signs identical or confused with certification marks, inspection marks, or warranty marks of an international organization requested by that organization may not be used unless the organization itself registers marks serve as a certification mark;
• Signs that mislead, confuse, or deceive consumers about the origin, features, uses, quality, value, or other characteristics of goods or services;
• A sign is the inherent shape of the goods or is required by the technical characteristics of the goods;
• Signs containing copies of works, unless authorized by the owner of the work.

During trademark registration process, in addition to designing the trademark to meet protection standards, the trademark owner needs to pay attention to cases where signs are not protected as trademarks to avoid designing this sign on its trademark.

The trademark design is identical/confused with the registered trademark

A trademark is considered identical to a registered trademark (opposing trademark) if that trademark is identical to the reference mark in terms of structure, meaning (content), and form of expression. A mark is considered similar to a reference mark if that mark is so similar to the reference mark in terms of structure and/or pronunciation and/or meaning (content) and/or form of expression that it causes Consumers to mistakenly believe that the two objects are the same, or that one object is a variation of the other, or that the two objects have the same origin. This is a mistake to avoid when registering a trademark.

Components are less distinguishable if they:

• Have descriptive functions such as New, Gold, Super,…
• Words that are used frequently so are less distinguishable, such as System, Club, Fashion,…
• In cases where the trademark has different spellings, but the pronunciation is the same, it can still cause similarity, for example Sunseat and Sunsit,…
• In case two signs have different spellings, but have the same meaning in Vietnamese, or a common foreign language in Vietnam such as English, French, Russian, or Chinese or the same Sino-Vietnamese meaning, they are still considered similar, for example, orient – boctok – phương đông (in Vietnamese),…
• In cases where two trademarks have different spellings, but meaning they are the same or opposite (in some cases), they can still be similar and cause confusion for consumers, for example, mini ship and mini boat,…

The trademark design is identical/confused with a famous trademark

Famous trademarks are widely known to the relevant public in the territory of Vietnam. Currently, many businesses design trademarks that are identical/confused with famous trademarks. This confuses the origin of products and services and is an act of unfair competition to take advantage of popularity. Therefore, for trademarks that are identical/confused with well-known trademarks, the Department will refuse protection.

In addition, taking ideas from famous trademarks will not create a unique impression for consumers, and may also be punished according to legal regulations for being an act of unfair competition.

Do not search the trademark before registering

Some individuals and organizations do not carry out trademark search procedures. This is an optional procedure, but when done, it can evaluate the protection ability of the trademark and avoid trademarks that are identical/confused with previously registered trademarks. Clients can use profound search services from industrial property representatives to get the most accurate assessment.

Including the wrong trademark in the registration dossier

It is important to note that the trademark on the registration declaration matches the trademark you want to protect.

In addition, the attached trademark sample must be identical to the trademark sample pasted on the registration application declaration, including size and color. The trademark sample must be presented with the size of each element in the trademark no larger than 80mm and no smaller than 8mm. The entire trademark must be presented in a trademark template measuring 80mm x 80mm. If color protection is required, all trademark samples on the declaration and attached must be presented with the correct colors to be protected.

Trademark description is incorrect or incomplete

• The trademark sample must be described to clarify the constituent elements of the trademark and the overall meaning of the trademark, if any;
• If the mark contains words or phrases that belong to figurative language, those words and expressions must be transliterated;
• Trademarks containing words and expressions in foreign languages must be translated into Vietnamese.
• If the mark contains numbers other than Arabic or Roman numerals, it must be translated into Arabic numerals;
• The color on the label must match the color requested for protection written on the declaration.

Do not classify/misclassify class of goods and services

In the International Classification of Goods and Services under the Nice Agreement, there are a total of 45 classes of goods and services. From class 1 to class 34 is the list of goods; From class 35 to class 45 is the service category. Individuals and organizations applying need to identify which types of goods and services are appropriate when submitting a trademark application.

If you have related questions or need to register a trademark, to avoid mistakes when registering a trademark, please contact Viet An Law – IP Firm for the best advice and support.