Research figurative trademark in Vietnam

Nowadays, with production and business developing strongly, a trademark will be a distinct sign that makes people remember the products and services of each individual or business. So when you want to register for trademark protection, do you need to research that trademark to avoid duplicates or similarities that confuse? In the following article, Viet An Law Firm will present how to research figurative trademarks in Vietnam, or more specifically, the figurative element in trademark registration.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• International Classification of figurative elements of trademarks – Vienna Classification, 8th edition.

General overview of the figurative trademark in Vietnam

Pursuant to Clause 16, Article 3 of the Intellectual Property Law: “A trademark is a sign used to distinguish goods and services of different organizations and individuals.”

Trademarks can be expressed in the form of letters, words, drawings, images, including three-dimensional images, or a combination of such elements, expressed in one or more colors. The color element is indispensable for labels because of its advantages in impressing human vision, thereby helping the trademark perform its distinguishing function.

Signs of figurative marks are not protected

• Signs that are identical or likelihood of confusion with national flags and emblems of other countries;
• Signs identical or likelihood of confusion the point of confusion with symbols, flags, badges of state agencies, political organizations, socio-political organizations, socio-political-professional organizations, organizations Vietnamese societies, socio-professional organizations, and international organizations, if not authorized by those agencies or organizations;
• Signs that are identical or likelihood of confusion enough with images of leaders, national heroes, famous people of Vietnam or foreign countries;
• Signs that are identical or likelihood of confusion with certification marks, inspection marks, or warranty marks of an international organization requested by that organization may not be used unless the organization itself registers the marks. That mark serves as a certification mark;
• Simple geometries or shapes that are too complicated make it difficult for consumers to perceive and remember the characteristics of the shape.

Research figurative trademark in Vietnam

Currently, Vietnam is using the Vienna Classification table: A hierarchical system used to classify image elements of a trademark into Categories – Divisions – Sections based on the shape of the elements.

The meaning of researching the Vienna Classification

Search trademarks before filing if you find identical or likelihood of confusion of trademarks. Especially in cases where the registered trademark only has figurative marks, without other elements such as words or three dimensions, a search using the Vienna Classification is indispensable. This information will allow the submitter to make appropriate decisions. It is important to identify identical or confusing trademarks:

• Whether registered for identical or related goods or services;
• Whether it is the subject of a filed application or an active registration.

If the trademark is identical or confusing but registered for unrelated goods/services, you may decide to continue with the registration. Similarly, if the trademark that is the subject of the application has been refused or the registration has expired, you can also continue with the registration process.

Structure of the Vienna Classification

Sections include Principle Sections and Auxiliary Sections:

• The Principle Section is denoted by a “*” in front.
• The Auxiliary Section is denoted by the letter “A” in front.

According to the provisions of the Vienna Agreement, the Competent Authorities of the countries signing the Vienna Agreement must clearly state in official documents and publications related to the figurative Classification of marks, specifically the categories, divisions, and sections of the figurative elements of the trademark.

The Vienna Classification is a hierarchical system, dividing elements into “Categories”, “Divisions” and “Sections”. Each category, division, and section is assigned a number according to a special coding system. Each figurative element in a section is represented by three digits: the first digit may be any number from 1 to 29, representing the respective category; the second digit can be any number from 1 to 19, representing the respective division; and the third digit can be any number from 1 to 30, representing the section. Each level is separated by a dot. For example: 03.01.09; 08.03.08;…

When searching, the searcher will enter the hierarchy of the corresponding figurative element in the Classification table according to the structure of 2 – 4 – 6 digits, however entering 6 digits is more common due to the element information. The more detailed the image, the closer the displayed results will be to the mark. Information related to trademarks with the same figurative element. For example, when looking up a trademark with the following figurative elements:

• 07.04: Residential block
• 01.11: Tents, small houses
• 01.12: City houses, skyscrapers (Ben Thanh market, Khue Van Cac, famous construction projects in the country)
• 01.24: Stylized building
• 25.21: Surface or ground covered with straight lines or strips
• 26.15: Other polyhedral shapes.

How to research figurative trademarks on the website of the National Office of Intellectual Property

To check the protection ability of a trademark, clients can do it themselves by accessing the online industrial property database of the National Office of Intellectual Property or the World Intellectual Property Organization to research.

Step 1: Access the search database of the Vietnam Intellectual Property Office: http://wipopublish.ipvietnam.gov.vn/

Select Trademark -> Advanced Lookup -> In the Classification section, select the Vienna Classification field to search by this field.

Step 2: Enter the trademark information to research.

For trademarks intended or about to be registered for protection

Searchers need to pay attention to the following fields:

• Trademark: enter the trademark name you want to research (if there is a word mark).
• Class of goods/services: According to the Nice Classification on trademark registration.
• Vienna Classification: According to the Vienna Classification table of figurative elements of the mark, data entry follows the structure of 2 – 4 – 6 digits as stated above.

For registered trademark searches

In addition to the fields mentioned above, we need to add some fields below to make the research faster:

• Application number: (if any)
• Application owner/title holder: If applicable
• Representative: search for submitted applications
• Vienna Classification: According to the Vienna Classification table of figurative elements of the mark, data entry follows the structure of 2 – 4 – 6 digits as stated above.

Step 3: Click “Research”. See the results displayed.

How to research trademarks on the website of the World Intellectual Property Organization (WIPO)

WIPO’s global database allows you to search for trademarks registered under the Madrid system and domestic regime, names of origin registered under the Lisbon system, and symbols protected under Article 6 of the Paris Convention. Several national trademark databases are also integrated into this database. Through this facility, it is possible to:

• Execute a query for multiple data sources at once;
• Find out identical or confused marks through various search features such as searching by “true-false”, similarity, root word, phonetics, and “nearly similar”;
• Research identical or similar figurative trademarks using the figurative search function.

The steps to research figurative trademarks on WIPO’s website are as follows:

Step 1: Access the access link: https://branddb.wipo.int/

After accessing, select BY BRAND LOGO.

Step 2: Enter the information to research

• Class of good/service (Nice Classification): According to the Nice Classification on trademark registration;
• Vienna Classification: According to the Vienna Classification table of figurative elements of the mark, the way to input data is as in the structure mentioned above;

Other information fields can be entered if there is data such as:

• Owner name;
• US designs Classification;
• Designation country;

The more detailed the information, the closer the displayed results will be to the sample. Then select SEARCH to start looking up.

Step 3: If you want to research more specifically about similar trademark samples, you can continue to perform the following operations: Select TOOLS -> VIENNA CLASSIFICATION ASSISTANT. Then drop the image or drawing you want to research into the box according to regulations to be able to research more specifically about the image elements.

Profound trademark research

Profound research is a completely voluntary procedure on the part of the applicant. However, this procedure should be carried out because this is the first and most important step to evaluate whether a trademark should apply for protection or not.

However, the trademark search is only for reference and is not a basis for granting or not granting a certificate (partly related to priority rights when registering a trademark).

Clients need to prepare trademark research documents

01 trademark model with the size of each component in the trademark not larger than 80mm and not smaller than 8mm. The entire trademark must be presented in a trademark template with dimensions of 80mm x 80mm.

Profound trademark research procedures

Through the service of Viet An Law Firm, it takes 5 – 7 working days.

How to fix in case of identical or confusing trademarks

A trademark will usually consist of 2 parts: the word and the figurative mark. The fix can be done in the following way:

• For the word mark: if there are identical or confusing pronunciations, letters can be added or removed to create a different word or phrase. Then, continue searching until you make sure there are no more identical or confusing.
• For the figurative mark: we can modify it by exchanging the details of the image, changing the color, adding new details, etc. After that, we need to research again for the new trademark to ensure that the trademark is distinct from trademarks that have been registered for protection before.

Trademark registration service of Viet An Law

• Viet An Law Firm supports application owners in preliminary trademark searches for free.
• Consulting on conditions, representing trademark application owners in Vietnam and abroad.
• Consulting on signs that are confusing, identical, or similar, leading to the trademark not being granted a protection title;
• Consulting on determining divisions and sub-groups for trademarks to avoid rejection in terms of form and content during the examination of trademark applications at the National Office of Intellectual Property.
• Consulting on trademark building and development strategies.
• Handling trademark violations.
• Responding to a trademark registration application that was refused a protection certificate.
• Complaint about issues related to establishing and protecting trademark rights.

Industrial property representative – Viet An Law Firm is ready to provide services related to industrial property registration, trademark registration, and trademark research to support you, please contact us. to receive the best advice.