Register foreign trademarks in Vietnam

With a large population, Vietnam is one of the destinations for foreign investors, and many foreign trademarks are interested in the Vietnamese market. To invest as well as bring goods and services into the Vietnamese market, one of the top concerns of businesses with goods / services is to register trademark protection in Vietnam. To support foreign trademark owners who wish to register trademarks in Vietnam, Viet An Law Firm guides clients on the process and procedures to register foreign trademarks in Vietnam as follows.

Documents that clients need to provide when registering a foreign trademark in Vietnam

For foreign companies applying for trademark registration in Vietnam

For foreign individuals applying for trademark registration in Vietnam

Conditions for filing trademark registration applications in Vietnam for foreign organizations and individuals

Subjects with foreign elements can only apply through an Intellectual Property Representative Organization in Vietnam to apply for registration to establish trademark ownership (Viet An Law Firm is one of the intellectual property representatives in Vietnam).

Note: Foreign individuals and organizations that are the rights holders of geographical indications according to the laws of the country of origin have the right to register that geographical indication in Vietnam in a trademark registration application. Compared to applications for registration of geographical indications of Vietnamese organizations and individuals, foreign organizations and individuals need documents proving that the geographical indication is being protected in the country where that geographical indication is located if it is a foreign geographical indication.

Note on priority rights for foreign trademark registration applications in Vietnam

Vietnamese law applies first filing priority and priority in registering trademark protection. According to this principle, in cases where many different applicants file identical/similar trademark registration applications for identical or similar goods or services, the application has a priority date or the first advance date will be accepted.

• In case there are many applications from many different application owners submitted to the same subject with the same priority date or first filing date, only a single application will be accepted for protection according to the agreement between these application owners. If the application owners cannot agree, the subject will be refused a registration certificate.
• The applicant’s request for priority rights will be accepted if the following conditions are met:

• The applicant is a Vietnamese citizen or a citizen of a country that is a member of the Paris Convention or resides or has a production or business establishment in Vietnam or in a country that is a member of this Convention.
• The first application has been filed in Vietnam or a member country of the Paris Convention and that application contains a request for priority right to register a trademark.
• Trademark registration applications are filed within 06 months from the first application filing date and the priority period is calculated from the first application filing date. The first application filing date is not included in the priority period.
• In the registration application, the applicant clearly states the request for priority rights and must submit a copy of the first application certified by the agency receiving the first application in case of filing abroad.
• Pay the full fee to request priority rights.

Trademark search procedures in Vietnam

Searching is a completely voluntary procedure for the applicant. However, this procedure should be carried out because it is the first and most important step in the preliminary evaluation of a trademark.

The research result is for reference only, which is not a basis for granting or not granting a degree.

• Free preliminary search: Viet An Law will conduct a free preliminary search for clients to evaluate the possibility of trademark registration within 01 day from the time the client provides the trademark sample.
• Official search and review at the National Office of Intellectual Property: After a preliminary search of the trademark, there are no signs of similarity with the registered trademark. Clients should perform the search procedure through Viet An Law representatives to best evaluate the protection ability of the trademark. The search procedure through a representative takes 1-3 working days.

Trademark registration application dossier

• Trademark registration declaration (in case the client authorizes Viet An Law Firm, the declaration will be signed by the industrial property representative of Viet An Law);
• Power of Attorney to Viet An Law Firm to submit a trademark registration application;
• Documents claiming priority rights (if any).
• Proof of payment of trademark registration fee.

The agency receives and processes trademark registration applications

Vietnam National Office of Intellectual Property.

Trademark registration process

The time limit for the formality examination: 01 month from the date of application submission.

• The National Office of Intellectual Property will consider whether the application meets the requirements in terms of form, label sample, application owner, filing rights, grouping, etc.
• If the enterprise’s registration application meets the conditions, the National Office of Intellectual Property will notify the acceptance of the valid application and publish the application.
• If the application does not meet the conditions, the National Office of Intellectual Property will issue a Notice of non-acceptance of the application and request the enterprise to make amendments. Applicants make amendments as required and submit amendment documents to the National Office of Intellectual Property.

The time limit for publication of trademark registration application: 02 months from the date of notification of acceptance of the valid application.

• The content of the publication of the trademark registration application is information related to the valid application recorded in the notice of acceptance of the valid application, the trademark sample, and the attached list of goods and services.

The time limit for content examination: 09 months from the date of publication of the application.

• The National Office of Intellectual Property reviews the conditions for trademark registration and then evaluates the possibility of granting a certificate to the trademark registered by the enterprise. If the trademark registration application meets the conditions, the National Office of Intellectual Property will issue a Notice of intention to grant a certificate to the trademark that the enterprise has registered.
• If the trademark registration application does not meet the conditions, the National Office of Intellectual Property will issue a Notice of not granting a certificate to the trademark registered by the enterprise. Enterprises review and send official dispatches to respond and appeal the decision of the Department of Property, and at the same time provide grounds for granting a trademark protection certificate for the enterprise’s trademark.

The time limit for granting a certificate: 02-03 months from the date of payment of granting fee.

• After the decision to issue a certificate, the Enterprise pays the certificate issuance fee and obtains a trademark protection certificate.

Thus, normally the normal registration time for a trademark is about 12 – 18 months from the date of acceptance of a valid application. In case a business needs to carry out procedures with quick registration time from the date of acceptance of a valid application, please contact Viet An Law for detailed instructions. However, in reality, the trademark registration period in Vietnam usually lasts about 24-28 months.

Trademark protection term in Vietnam

Trademarks are protected for 10 years from the filing date (priority date). Enterprises can renew their protection certificates with no limit on the number of extensions. Therefore, the trademark will be an asset throughout the business’s operations and business process

Viet An Law’s service to register foreign trademarks in Vietnam

• Legal advice on procedures and conditions for trademark registration;
• Consulting on the feasibility of trademark registration;
• Preliminary search for trademark registration;
• Consulting on priority rights and priority dates for clients when registering for trademark protection;
• Official trademark search at the National Office of Intellectual Property – Independent costs;
• Representing trademark registration for clients during the trademark registration process;
• Drafting trademark registration documents;
• Submit documents and monitor the registration and examination process at the National Office of Intellectual Property;
• Representing clients throughout the entire process of establishing rights and responding to official correspondence with the Intellectual Property Office on trademark registration;
• Exchange and provide information to clients during the trademark protection registration process.

Foreign businesses and individuals wishing to register a trademark in Vietnam please contact Viet An Law Firm for the fastest guidance, with the most reasonable representation costs!