Renew a trademark in Vietnam

A trademark is a sign to identify and distinguish goods and services of organizations and individuals in the market. A trademark is considered an invaluable intellectual property for every enterprise. In Vietnam, for a trademark to be protected, the trademark owner must register the trademark with the competent authority. However, trademark protection is limited in time, when this period expires, the owner must carry out renewal procedures. What does the current law stipulate about the time to renew a trademark in Vietnam? Viet An Law will advise you through the following article.

How is a trademark protected in Vietnam?

Pursuant to Article 6, Article 72, Article 73 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022), a trademark is protected if it meets the following 4 basic conditions:

• Be a visible sign in the form of letters, words, drawings, images, three-dimensional figures, or a combination of such elements, represented by one or more colors or a sound sign represented in graphic form;
• Ability to distinguish the goods and services of the trademark owner from those of other entities;
• Not falling under the cases specified in Article 73 of Vietnam IP Law;
• There is a decision to grant a protection title from a competent state agency according to registration procedures, except for famous trademarks.

Term of trademark protection

As analyzed above, a trademark is protected based on being granted a Protection title by a competent State agency. For trademarks, this certificate is called a Certificate of Trademark Registration. According to Article 93 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022), the Trademark Registration Certificate is valid throughout the territory of Vietnam.

Trademark Protection Title in Vietnam is valid from the date of issuance until the end of ten years (10) from the date of application and can be renewed many consecutive times, each time for ten years.

Thus, a trademark is only protected for 10 years from the date of filing. When this period expires, the owner of the Trademark Protection Title must carry out renewal procedures so that the trademark continues to be protected.

Regulations on the time to renew a trademark in Vietnam

Pursuant to Clause 3, Article 31 of Decree 65/2023/ND-CP, trademark renewal can be carried out at 02 times as follows:

• Within 06 months from the date the Certificate of Trademark Registration expires
• After the expiration date of the Certificate of Trademark Registration but not later than 06 months from the date of expiration of the protection title. However, in this case, in addition to the renewal fee, the owner of the protection title must pay a fee for each month of delay.

Thus, according to the regulations on the time of trademark renewal, the owner of a protection title can apply for trademark renewal within 06 months before or after the Trademark Registration Certificate expires.

Although the owner of the protection title is allowed to register for a late renewal, it is only within the time limit specified above. If this time limit is exceeded, the validity of the Trademark Registration Certificate will be terminated under Point a, Clause 1, Article 95 of the Law on Intellectual Property 2005 (as amended and supplemented in 2009, 2019, 2022). At that time, the owner must re-register the trademark.

Trademark renewal fee inVietnam

According to Circular No. 263/2016/TT-BTC, the fee for trademark registration renewal that the subject must pay is 1,200,000 VND, including the following fees:

• Fee for renewal of the protection title: 100,000 VND/class of products and services (Trademark registration certificate)
• Fee for examination of the request for extension of validity of protection title: 160,000 VND/01 protection title;
• Fee for publishing information on industrial property: 120,000 VND/01 application for renewal of protection title;
• Fee for registering information on industrial property: 120,000 VND/01 protection title;
• Fee for using protection title: 700,000 VND/01 class of products and services.

Additional Late Renewal Fees

As analyzed above, the owner of a trademark protection title has the right to late renewal (after the 10-year protection period of the Certificate expires). However, in this case, the owner of the protection title must pay an additional renewal fee. According to Circular No. 263/2016/TT-BTC, the late renewal fee (for each month of late payment) is 10% of the renewal fee.

For example:

The total trademark renewal fee is 1,200,000 VND. If the certificate holder renews 03 months late from the date the certificate expires, the certificate holder can still have the valid renewal application approved if the full fee is paid along with the late renewal fee, which is calculated as follows:

Late renewal fee = 1,200,000 VND x 10% x 3 months = 360,000 VND.

Is a trademark still protectable if renewed late?

According to Point h, Clause 2, Article 74 of the Law on Intellectual Property 2005 (amended and supplemented in 2010, 2019, 2022), a trademark that is identical or confusingly similar to the trademark of another organization or individual that has been protected for identical or similar goods or services, and the registration of that trademark has expired for no more than three (03) years (except in cases where the registration of that trademark has been terminated according to Point d, Clause 1, Article 95 according to the procedures prescribed in Point b, Clause 3, Article 117 of this Law), will not be eligible for registration for protection.

Thus, after the Trademark Protection Title expires, within 03 years, other entities will not be able to register ownership of that trademark. In other words, within 03 years from the date the Certificate of Trademark Registration expires, the “priority” right to re-register the trademark will still be created for the old owner.

Currently, the current law amended in 2022 has shortened this period compared to the previous regulation (05 years). This is a noteworthy new point and may affect if the trademark owner forgets to renew but still needs to continue using the trademark, the owner needs to re-register the trademark as soon as possible.

Some issues to note when renewing a trademark in Vietnam

Trademark renewal dossiers

According to Clause 1, Article 31 of Decree 65/2023/ND-CP, the trademark registration renewal dossier includes the following documents:

• Application form for extension of validity;
• Original Certificate of Trademark Registration (in case the protection title is issued in paper form and there is a request to record the extension on the protection title);
• Power of attorney (in case the request is submitted through a representative);
• Copy of fee payment receipt (in case of payment of fees via postal service or direct payment to the account of the state management agency of industrial property rights).

Time to process trademark renewal procedures

Under Clause 4, Article 31 of Decree 65/3023/ND-CP, the time for the National Office of Intellectual Property to review and process the dossier is 01 month from the date of receipt of the application for extension.

In addition to this deadline, the applicant should pay attention to the following 2 types of deadlines:

• Deadline for the National Office of Intellectual Property to register and publish the decision to extend the validity of the Industrial Design Patent in the Industrial Property Gazette: 60 days from the date of the decision.
• Deadline for amending and supplementing the dossier: 02 months from the date the National Office of Intellectual Property issues a notice of intended refusal to extend. If after this time limit the applicant fails to amend or supplement the dossier or corrects unsatisfactory deficiencies, has no objections, or has objections that are not valid, the National Office of Intellectual Property shall issue a decision to refuse to extend the validity of the Industrial Design Patent or Trademark Registration Title.

Viet An Law has shared with clients the regulations on the time to renew a trademark in Vietnam. If you have any problems or need support on related legal issues, please contact Viet An Law for timely support.