Trademark is recognized as one of the most valuable intangible assets of a business organization. In some circumstances, it is absolutely possible that the value of plants, invested gadgets, products, services is considerably lower than the value of trademark which belongs to business organization. Registration of trademark, thus, will play a role as a necessary and sufficient condition for each good and service to have the protection before launching in the trademarket.
When clients have consultation with us, they often pose a question that: who is entitled to register for trademark in Vietnam?
Regarding Law on Intellectual property 2005, the objects are allowed to register for trademark includes: individuals and business organization. Thereof, these objects are: Vietnams individuals, business entities or foreigners (individuals or organizations). Nonetheless, Vietnamese individuals, companies can register trademark by themselves directly in National Office of Intellectual Property or through Industrial Intellectual Representation, but foreign individuals and companies, who would like to register for trademark in Vietnam, must submit registration dossier through Industrial Intellectual Representation Companies, such as Viet An Law Firm.
Notice: Even though trademark has been issued Certificate of Registered trademark, it could be totally terminated the validity by competent agencies if not being used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years.
The following question which clients often mention our consultancy staff and lawyers is: What is the classification of goods and services? Why does registering for classes of trademark cost various charges and fees?
The classification of goods and services bases on the classification list of goods and services’ trademark (Nice Classification) applied worldwide. There are kinds of goods, services on the trademarket. But there are only 45 classes according to Nice Classification. Of all, there are 34 classes of goods and 11 classed of services. In Vietnam, it depends on the class of good and service to calculate the registration fee. Hence, the more classes of goods services clients register, the more amount of fee you have to pay.
To offer individuals, business entities assistance of establishing professionally and briefly the right of goods, services’ trademark before they get access to the trademarket. We would like to mentor the mechanism of researching and registering trademark for goods and services in 2018:
Step 1: Researching trademark
Clients shall send trademark sample and list of goods, services which contain trademark to Viet An Law Firm so as to we are able to do the brief research and judge the possibility of registering trademark.
Doing the free general research: Viet An Law Firm shall start researching to judge the possibility of registering trademark within 01 day from the date clients provide the trademark sample.
When finishing the general research, if we realize that the trademark are unable to register, we will give clients consultation and provide relevant advices to tackle woes so that the trademark could be registered in the medium term.
In case after the general research, the trademark is able to be registered, then the operation of deep research shall be conducted in both Vietnamese and international database in order to judge if the most potential ability of being registered could occur. This is not a mandatory step, however, it is necessary to increase the registered ability and to save the time.
Nevertheless, researching the trademark is the reference task only and not a basis used for issuing or not issuing Certificate of Registered trademark (the priority date plays a decisive role in registering).
The documents for researching includes: 03 trademark samples ( 3×3 cm <x< 8×8 cm; x: size). This stage will last for 01-03 days if operated by Viet An Law Firm.
Step 2: Submitting the register trademark dossier and supervising the register progress at National Office of Intellectual Property
After a overall progress and it indicates that the trademark is highly possible to be registered, Viet An Law Firm shall submit the dossier to National Office of Intellectual Property. Here are required documents:
Viet An Law Firm shall be in charge of preparing for the rest of documents pursuant to regulations. Aside the above documents, clients whose need to register for goods, services provide us these below documents:
The regulation of using collective trademark/ certification trademark;
The statement about features, typical quality (or exclusive) of goods which bring trademark (if registered trademark is collection trademark used for goods which bring exclusively prominent features or certification trademark)
Identified territory map ( if the subject matter is Geographical indication to identify a product as originating from a specific region, locality, territory or country).
The competent authorities receive and proceed the trademark registration trademark in Vietnam: Viet Nam National Office of Intellectual Property
The period to register trademark:
National Office of Intellectual Property shall determine whether the application form satisfies the format, trademark sample, the owner of the application form, classes,…
In case the registration form contents with the requirements, National Office Of Intellectual Property shall make an announcement of accepting the valid application and permitting to notifying the form.
In case of the unqualified application form, National Office of Intellectual Property shall make an announcement of not accepting the application and suggesting the applicant to have amendments. The applicant then will make amendments following the requirements and submit the statement of amendment to National Office of Intellectual Property.
The content of the application for registration of trademark shall include the information relating to the valid application form written in the notification of valid dossier, trademark sample and list of goods, services.
National Office of Intellectual Property shall take the requirements of registration for trademark into account and evaluate the ability of issuing protection title for registering company.
If the registration form meets all the requirements, National Office of Intellectual Property will release the announcement of intention of issuing protection title for the trademark which company has registered.
If the registration form is unqualified with the requirements, National Office of Intellectual Property will make an announcement of not issuing protection title for the trademark which companies has registered. The company, then considers and sends the answer, the complaint against the National Office of Intellectual Property’s decision and simultaneously provides evidences to prove the ability of issuing protection title for the companys’ goods, services.
After the decision of issuing protection title is released, Viet An Law Firm shall have an information to clients to pay fees and charges and transfer the protection title to clients.
Trademark shall be under protection for 10 years from the date of submitting the application form (the priority date). Company will extend the term of protection title and will be not limited the number of extension. Therefore, trademark is going to be a asset throughout the operation, business of the company.
All in all, the term of registration of trademark will last 12-18 months from the announcement of valid application.
The color of registration of trademark
According to relevant regulations of Law on Intellectual Property, there is no specific articles respecting to the protection scope of white-black trademark and colored trademark as well as the registration of white-black trademark or colored trademark will provide the owner with the more absolute right. The practical events, nonetheless, show that the registration in Vietnam allows white-black trademark to be used in various colors, provided that it still remains the content, letter, images and does not infringe the right of other registered white-black or colored trademarks.
Viet An Law Firm has a suggestion that if individuals and business organizations would like to manage the process economically or are irresolute to register in white-black or color trademark, white-black trademark should be on the top of priority.
Image trademark ( or logo), letter trademark, slogan:
Image trademark (or logo): able to be registered independently as a trademark or be combined with letter, slogan when registering trademark.
Letter trademark: when registering trademark, the owner of application form could decisive between the format of letter trademark following:
The letter trademark will accompany a drawback which is only the trademark’s content protected and the font of letter, the typical demonstration and the colors shall not in the protection scope of registered, issued letter trademark.
That is, one disadvantage on this registration, the owner of trademark have to use precisely the registered trademark without any changes in font of letter or other approaches.
The priority date
The priority date has an prominent impact on decision on issuing or not issuing protection title for other subjects. Pursuant to Law on Intellectual Property and relevant International treaties in which Vietnam is a member, from the date when the first application form is sent to the date submit application form in Vietnam, if there is another subject submitting for the same object, the application form of the first object will be considered to have the same register date as the first register date in other countries and is prioritized to protect. This is reason why no one can totally confirm that having research on trademark condition and having submitted the dossier will absolutely ensure to be issued protection title.
Other notices with respect to designing, choosing the registration of trademark:
To ensure that the company’s trademark will be protected exclusively, the company ought to design the trademark with the uniqueness to reflect the sole features of goods, services and their difference in comparison with others.
Trademark can be with combination between image and letter. If trademark is created by only letters, it needs to be designed stylized in order to be issued protection title.
Some sectors should be taken to notice when designing trademark (which means eliminated signs used to design trademark):
We reconfirm that the best way to evaluate the ability of protecting a trademark is to have a research before submitting application form. Viet An Law Firm would like to undertake free research for clients before undertaking the next tasks in the mechanism of registration of trademark in Vietnam
Our consultation service of registration of trademark in Vietnam includes:
Individuals, business organizations are in need of registering trademark, please contact Viet An Law Firm to be consulted, given detail information on filling, submitting, identifying class of trademark, procedure regard to application form or initiating issues in the process of registering trademark.
Ho Chi Minh city office