National signs and flags that cannot be registered for trademark protection in Vietnam

For each country, the national emblem or flag is a typical representative image of each country. The images and symbols shown on the national sign and national flag are imbued with the national identity of that country. Accordingly, national signs and flags are images that cannot be used for purposes such as commerce to distinguish goods and services. National Intellectual Property authorities are required to implicitly protect notified signs and symbols against unauthorized registration as a trademark or part of a trademark (unless they provide notice of refusal in a separately prescribed manner). The national flag does not need to be announced to benefit from this protection. Through the article below, Viet An Law will clarify the regulation on national signs and national flags that cannot be registered for trademark protection.

National signs and flags that cannot be registered for trademark protection

Pursuant to Article 73 of the Law on Intellectual Property 2005 (amended and supplemented by Clause 21, Article 1 of Law No. 07/2022/QH15), the following signs are not protected in the name of trademarks. Specifically, as follows:

• Sign is identical or confusingly similar to the National Flag, National Emblem, National Anthem of the Socialist Republic of Vietnam and of other countries and international anthems.
• Sign is identical with or confusingly similar to symbols, flags, emblems, abbreviations or full names of state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations, socio-professional organizations of Vietnam and international organizations, if not permitted by such agency or organization (for example, the name of the trademark must not be identical with the badge of the Ho Chi Minh Communist Youth Union…).
• Sign is identical or confusingly similar to real names, nicknames, pseudonyms, images of leaders, national heroes, celebrities of Vietnam or foreign countries (For example, trademark names must not coincide with names of national heroes such as Nguyen Trai, Quang Trung, etc Vo Thi Sau …).
• Sign is identical with or confusingly similar to certification trademarks, inspection trademarks or warranty trademarks of international organizations requested by such organizations shall not be used, unless such organizations themselves register such marks as certification marks.
• Sign is that mislead, confuse or deceive consumers about the origin, features, uses, quality, value or other characteristics of goods or services.
• Sign is the inherent shape of the goods or due to the technical characteristics of the goods that are required to be present.
• Sign containing copies of works, except with the permission of the owner of such work.

Establishment of industrial property rights to trademarks

Pursuant to Clauses 1 and 2, Article 10 of Decree 65/2023/ND-CP, industrial property rights to trademarks are established on the basis of the decision of the National Office of Intellectual Property to grant trademark registration certificates to trademark registration applicants.

For:

• Industrial property rights to internationally registered marks under the Madrid Agreement and the Madrid Protocol are established on the basis of accepting the protection of the National Office of Intellectual Property for such international registration
• Industrial property rights to well-known marks are established on the basis of the practice of widespread use of such marks without carrying out registration procedures. When exercising rights and settling disputes over rights to well-known trademarks, the owner of such trademark must prove his/her rights with documents showing the criteria for evaluating well-known trademarks and explaining the process of using the trademark to become famous.

Identify well-known trademarks

Pursuant to Article 75 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), the consideration and evaluation of a trademark as well-known shall be selected from some or all of the following criteria:

• The number of relevant consumers who have known the trademark through the purchase, sale, use of goods and services bearing the trademark or through advertising.
• The territorial scope of which the goods or services bearing the mark have been circulated.
• Turnover from the sale of goods or provision of services bearing the mark or the quantity of goods sold or the amount of services provided.
• Continuous use of the trademark.
• Wide prestige of goods and services bearing the mark.
• Number of countries to protect the trademark.
• Number of countries that recognize a trademark as well-known.
• Transfer price, the price of transfer of the right to use, the value of investment capital contribution of the trademark.

Subjects with the right to register trademarks

Pursuant to Article 87 of the Law on Intellectual Property 2005 (amended and supplemented in 2022), the following organizations and individuals have the right to register trademarks:

• Organizations and individuals have the right to register trademarks for goods they produce or services they provide.
• Organizations and individuals conducting lawful commercial activities have the right to register trademarks for products they put on the market but manufactured by others, provided that the producers do not use such trademarks for products and do not object to such registration.
• Legally established collective organizations have the right to register collective marks for their members to use under the Regulation on use of collective marks; for signs indicating the geographical origin of goods and services, organizations entitled to register as collective organizations of organizations and individuals conducting production and business in such localities; for place names and other signs indicating the geographical origin of Vietnam’s local specialties, the registration must be permitted by competent state agencies.
• Organizations with the function of controlling and certifying the quality, characteristics, origin or other criteria related to goods and services may register certification marks on the condition that they do not produce or trade such goods or services; for place names and other signs indicating the geographical origin of Vietnam’s local specialties, the registration must be permitted by competent state agencies.
• Two or more organizations and individuals have the right to jointly register a trademark to become co-owners under the following conditions:
• The use of such marks must be in the name of all co-owners or for goods or services in which all co-owners participate in the production and business process;
• The use of such trademarks does not cause confusion to consumers about the origin of goods and services.

Procedures for trademark protection registration in Vietnam

Step 1. Trademark search

Directly look up information about trademarks that have been protected or have been registered from the following sources:

• The Industrial Property Official Gazette is issued monthly by the National Office of Intellectual Property.
• National Register and International Register of Trademarks (kept at the National Office of Intellectual Property).
• Electronic database on trademarks published on the Internet
• Use the information lookup service of the National Office of Intellectual Property on the condition that the service fee must be paid according to the regulations of the Ministry of Finance.

Step 2. Filing a trademark application

Submit 01 set of trademark registration dossier to the National Office of Intellectual Property through the following methods:

• Online through the Administrative Procedure Settlement System of the Ministry of Science and Technology.
• Directly or by postal service to the headquarters of the National Office of Intellectual Property in Hanoi or its representative offices in Ho Chi Minh City and Da Nang.

Step 3. Order and time limit for processing trademark registration applications

• Formal appraisal: 01 month from the date of filing the application in case the application is valid.
• Publication of valid applications: Within 02 months from the date of acceptance of valid applications.
• Appraisal of application contents: 09 months from the date of publication of the application.
• Grant of protection title: Within 15 days from the date the applicant fully and on time pays the fees and charges.
• Publication of the decision on grant of a protection title in the Official Gazette of Industrial Property: 60 days from the date of issuance of the decision.

The above is the legal advice of Viet An Law on national signs and flags that cannot be registered for trademark protection. If you have any other problems related to the registration of intellectual property rights of Viet An Law, please contact Viet An Law for more specific and detailed advice. Thank you very much!