Priority rights of trademark application in Vietnam

Currently, the world uses two principles for trademark registration: the first-to-file principle and the first-to-use principle. Vietnamese law applies the first-to-file principle, prioritizing the first application in trademark protection registration. Understanding the priority right brings significant benefits, helping businesses protect their brands earlier and more effectively in the context of globalization and increasing competition. In the following article, Viet An Law will provide clients with some general legal advice on the priority rights of trademark application in Vietnam.

What are the priority rights of trademark application in Vietnam?

The Intellectual Property Law does not define the concept of priority right, but it can be understood as the right of the applicant when the trademark application is subject to the priority principles stipulated by the Intellectual Property Law to grant protection titles. Specifically, from the date of the first application to the date of application in Vietnam, if another entity files an application for the same subject matter as the first application, the first applicant’s application is still considered to have the same filing date as the first application and is given priority for protection. The priority right only applies based on the first valid protection registration application.

The priority rights of trademark application in Vietnam brings many benefits such as:

• Trademark protection: The priority right plays an important role in protecting trademarks from duplication or confusion with other applications for equivalent products or services. This is the basis for determining the protection conditions of the trademark.
• Protecting the owner’s rights: The priority right ensures that the legitimate rights of the trademark owner are protected fairly and comprehensively.
• Market expansion: It creates conditions for the applicant’s branded products or services to be registered for protection in other countries, allowing the owner to expand their business market.
• Dispute resolution: It serves as a basis for resolving disputes or violations related to rights arising from the first trademark registration date.
• Consistency: The trademark owner does not need to file applications simultaneously in multiple countries while still ensuring protection rights from the priority date

Principles for the benefit from the priority right of trademark registration in Vietnam

First-to-file principle

Protection titles are only granted to trademarks in valid applications with the earliest priority date or filing date among those that meet the conditions for granting protection titles. Cases of application:

• There are multiple applications from different applicants registering identical or confusingly similar trademarks for identical or similar products or services, all seeking protection titles.
• There are multiple applications from the same applicant registering identical trademarks for identical products or services, all seeking protection titles.

Note: In cases where multiple applications meet the conditions for granting protection titles and have the same priority date or earliest filing date:

• The protection title is only granted to the subject matter of a single application among those applications, as agreed upon by all applicants.
• If no agreement is reached, the corresponding subject matters of those applications will be refused protection titles.

Priority principle in trademark registration

Priority rights of trademark application in Vietnam are applied to cases where products or services registered for trademarks originate from other countries that participate in international intellectual property treaties. In Vietnam, the priority principle is implemented according to the Paris Convention for the Protection of Industrial Property and some other international treaties.

Cases where the trademark applicant wishes to enjoy the priority right under the Paris Convention

According to Article 91 of the Intellectual Property Law, the priority right in trademark registration allows the trademark applicant to request the priority right based on the first application for the same subject matter. The request for the priority right will be accepted if the following conditions are met:

• Conditions for the applicant: The applicant is a Vietnamese citizen or a citizen of a member country of the Paris Convention or a citizen of another country residing or having a production or business establishment in Vietnam or a member country of the Paris Convention;
• Conditions for the trademark application:
  • Territorial scope: The first application has been filed in Vietnam or a member country of the Paris Convention, and that application contains a part corresponding to the priority right request of the trademark application;
  • Time limit: The trademark application is filed within 6 months from the date of the first application;
  • Content of the request: In the trademark application, the applicant clearly states the request for the priority right and submits a copy of the first application if filed abroad, with confirmation from the first receiving office. The copy of the first application can be submitted within 3 months from the filing date;
• Conditions for fees: Payment of the required fees for the priority right request.

Cases where the applicant for patents, industrial designs, or trademarks wishes to enjoy the priority right under other international treaties

The request for the priority right will be accepted if the conditions for the priority right stipulated in that international treaty are met.

How to determine the priority date

• Priority rights of trademark application in Vietnam are crucial for determining the novelty of the trademark and identifying the earliest applicant. If the priority right request is accepted, the priority date is considered the filing date of the first application.
• According to Vietnamese Intellectual Property Law, the priority date is the valid filing date at the Vietnam Intellectual Property Office or the valid filing date in another member country of the Paris Convention within the stipulated time frame.

The filing date of the first application in trademark registration is determined as follows:

• For trademark applications filed directly in Vietnam: The valid filing date at the Vietnam Intellectual Property Office is the date when the Office acknowledges that the applicant has met the formal requirements of the application. The filing date is determined based on the receipt stamp on the trademark registration form received and recorded by the Intellectual Property Office.
• The valid filing date is the first filing date (if the application does not need any amendments or supplements).
• The valid filing date is the date of the last amendment or supplement at the Intellectual Property Office (if the application needs corrections or additional documents).
• The valid filing date in another member country of the Paris Convention is the filing date before filing at the Vietnam Intellectual Property Office but not exceeding 6 months for trademark applications.

Note: The first application filed in Vietnam or a member country of the Paris Convention is the application that meets the conditions to confirm the filing date in the relevant member country, regardless of the processing result of that application.

The above is an analysis of the priority rights of trademark registration in Vietnam. If you have any related questions or need legal advice, please contact Viet An Law for the best support!