Research trademark status in Vietnam

In the current context of globalization of commercial activities, trademarks are not only a useful marketing tool for businesses but also help businesses affirm their reputation with customers, creating a competitive advantage in the market. In the article below, Viet An Law will guide customers on how to research trademark status in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree No. 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and management state on intellectual property.

What is a trademark in Vietnam?

Pursuant to Clause 16, Article 4 of the Intellectual Property Law, it is stipulated that a trademark is a sign used to distinguish goods and services of different organizations and individuals, existing in visual or sound form.

Why do we need to research trademark usage status?

The purpose of the trademark usage status research service is to review and evaluate whether the trademark has been used, registered for protection, and registered in which groups according to the Nice classification to evaluate the protection ability of that trademark in practice.

First, every year, the number of trademark registration applications filed at the National Office of Intellectual Property is more than 30,000 applications. Therefore, choosing a trademark that is not confusing or identical to previously filed trademarks is not simple.

Second, the time to carry out trademark registration procedures is currently pushed back quite a long time. Therefore, by searching, the applicant not only saves financially but also saves time (expected registration time is 24 – 36 months).

Fourth, although the research of A trademark is an optional procedure, to ensure successful registration, before applying, customers should still conduct a search procedure. The preliminary search is free of charge, the search time is from 01 – 02 working days, and clients can know the possibility of registering your trademark. Unofficial search results predict 80-90% of the trademark’s registration ability.

Meaning of searching

• Avoid infringing on industrial property rights of other subjects’ protected trademarks
• Evaluate the protection ability of the owner’s trademark.
• Avoid unnecessary costs for research and document preparation if you know through a search that the trademark has been registered.
• Choose a company trademark that has been registered and the trademark protection is still valid to sign a contract to purchase and transfer the right to use that trademark.

Research trademark status in Vietnam

There will be two forms of search: preliminary search, and profound search. Depending on the needs of the business and the purpose of the search, choose the appropriate type of search.

Preliminary search

Step 1: Access one of the following research addresses:

• Trademark research page of the National Office of Intellectual Property: http://wipopublish.ipvietnam.gov.vn/
• Trademark research page of the Institute of Intellectual Property Science: https://ipplatform.gov.vn/database/nhan-hieu
  
• ASEAN trademark database research page (Asean TMView): http://www.asean-tmview.org/tmview/welcome
• Trademark research page of the World Intellectual Property Organization (WIPO): https://branddb.wipo.int/

Step 2: Enter the brand information in the brand search box.

• To make search operations more effective, customers need a few more advanced search tools such as tools that allow skilled users to search for information about objects to research by fields and keywords. selection with various operators (and; or; and not; or not) or characters (*; ?)
• Note: The above advanced search activities will not be applicable on the trademark search page of the Vietnam National Office of Intellectual Property.

Step 3: Input figurative classification information in the image classification box (if the trademark contains an image).

When registering a trademark in the form of a figure, it is necessary to classify it according to 29 classes according to the provisions of the Vienna Classification Table 07. The image classification classes are divided into groups and subgroups for different types of figures. Trademark owners must perform specific classification according to Categories – Divisions – Sections before proceeding with trademark registration.

Classification table according to the Vienna Agreement

Step 4: Input good/service class information in the respective box and information about the good /service.

• When performing a research activity, clients need to clearly understand what type of goods their company sells and the good/service name of those goods.
• Then, research that type of good /service on the Nice international classification of goods/services.
• The result is which good/service the company is trading in the Nice international classification table to enter into the research box.

Profound research

Because the preliminary search method is not 100% accurate, businesses can choose a profound search method. It can be understood that a profound search is a form of search performed by professionals working at competent agencies in evaluating/issuing protection titles.

For trademarks that are highly confusing and difficult to distinguish, businesses should choose a profound search through Law Firms.

• Step 1: Send the trademark sample to be searched to Viet An Law.
• Step 2: Viet An Law will send information back to your company within 3 – 5 days of the search results.

In case it is discovered that a trademark has been registered but is not being used or is being used incorrectly, what should we do?

Many registered trademarks have been granted protection titles (also known as Trademark Registration Certificates). However, for many reasons, the trademark owner does not continue to use the trademark or uses it inconsistently with the registered content. This situation happens quite a lot, especially with international trademark registration applications, with indications to register the application in Vietnam. This directly has an adverse impact on subjects who want to register identical or similar trademarks to develop their brands in Vietnam.

To handle the above situation, based on the provisions of Article 95 of the Intellectual Property Law, one of the grounds to request termination of a trademark registration certificate is to prove: “The trademark is not owned by the owner. The owner or the person authorized by the owner to use it for five consecutive years before the date of the request for termination without just cause, unless the use is commenced or restarted at least before the date of termination. at least three months from the date of request for termination”.

Therefore, in case of discovery, and to ensure the right to register a similar trademark to be filed later, the subject has the right to file a request to terminate the validity of the Trademark Registration Certificate of the corresponding mark. This procedure requires specific evidence, please contact Viet An Law for detailed support. If not done, a similar mark may be refused even if the previous reference mark has not been used for 5 consecutive years and has expired, as long as it has not been more than 5 years since the date of expiration.

Carry out procedures to request termination of validity of Trademark Protection Certificate at the National Office of Intellectual Property

Viet An Law is an intellectual property representative organization. Viet An Law will represent customers (through an authorization contract) to collect documents, prepare documents, submit documents, and respond to official dispatches of the Intellectual Property Office related to procedures for requesting termination. Terminate the validity of the trademark protection certificate.

Components of a dossier requesting termination of a trademark protection certificate include:

• Declaration (02 sheets according to form No. 08, Appendix II issued with Decree No. 65/2023/ND-CP);
• Evidence (if any);
• Power of Attorney (According to the form of Viet An Law);
• An explanation of the reason for the request to terminate the validity of the trademark protection certificate (clearly stating the certificate number, reason, legal basis, content of request for termination) and other relevant documents;
• Copy of fee payment voucher (in case of payment of fees and charges via postal service or direct payment to the Intellectual Property Office’s account)

Receiving agency: National Office of Intellectual Property

Trademark registration service of Viet An Law

• Viet An Law Firm supports application owners in preliminary trademark searches for free.
• Consulting on registration conditions and trademark registration procedures in Vietnam.
• Consulting on signs that are similar, duplicate, or confusing, leading to the trademark not being granted a protection title;
• Consulting on determining sections and divisions 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 brand building and development strategies.
• Handling trademark violations.
• Responding to a trademark registration application that was refused a protection certificate.
• Complain 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 to support you, please contact us to receive the best advice.