Trademark Protection in Vietnam

Trademark is considered as one of the biggest intangible assets of the business. Sometimes entire value of buildings, equipment investment, products, goods and services is still worth less than the value of the brands owned by enterprises. Therefore, the implementation of trademark registration not only is a necessary and sufficient condition for each goods and service before entering the market but also a foundation for the development of tangible assets of the enterprise. Trademarks of goods and services are things that are associated with prestige, quality, and customer trust for specific products and services. Because a trademark is a sign to distinguish goods or services of this business unit from other business units.

Procedures for trademark protection in Vietnam

In order to better understand the regulations, before submitting the application for trademark protection, the applicant can conduct a trademark search on the data of the National Intellectual Property Office and the World Intellectual Property Organization. Search to assess the possibility of granting a protection title for the mark to be registered. Customers can go through Viet An Law to get free trademark search and in-depth trademark search by experts and industrial property representatives to get search results and assessment of ability of trademark registration with highest protection.

After searching and assessing the mark capable of granting a protection title, the applicant shall register for trademark protection according to the following steps:

Step 1: File a trademark registration application at the National Office of Intellectual Property

• Trademark registration applications can be filed at the National Office of Intellectual Property (NOIP) in Hanoi or representative offices of the NOIP in Da Nang and Ho Chi Minh.
• After filing a trademark registration application, the Department will issue an application number and at the same time record the filing date of the mark.
• The application number and filing date are the most important legal basis for determining the valid application and priority date of the trademark application.

The applicant will track the application process through the application number and filing date until the trademark is granted a protection title.

Step 2: Formality examination of the trademark application

• The NOIP shall examine the application and issue a notice on the test results of the valid application within 1 to 2 months.
• At the end of the formal examination, the NOIP will issue a notice on the formal examination of the application.
• Examination of the form of the application ensures that the application has been properly declared, identifies the right group of protection registration, and the legal status of the application owner.
• Formal testing is not yet the basis for determining whether a trademark is granted a protection title.

Step 3: The NOIP publishes the application for trademark protection in the Official Gazette of the NOIP

Within 02 months from the date of notification of results of valid application examination, NOIP must carry out procedures for publishing a trademark registration application in the Official Gazette of the NOIP.

Step 4: Substantive examination of the trademark application

• The purpose of substantive examination of an application is to assess the protection ability of the object stated in the application under the protection conditions, and to determine the corresponding scope (volume) of protection.
• Time to substantive examination of the mark: 09-12 months.
• During this process, the applicant has the right to actively amend the application.
• The NOIP may request the applicant to correct the application, supplement documents or give explanations.
• When amending an application, the time limit for substantive examination is extended in proportion to the time limit for the applicant to perform such tasks.

Step 5: Notify the results of the substantive examination for granting protection title or non-diploma trademark protection

• In case a protection title is granted, the applicant who pays the title granting fee within about 2 months will receive the trademark protection title.
• In case the application is refused for granting a license, the applicant shall consider if it is not satisfactory to carry out the procedures to respond to the NOIP to discuss the possibility of granting his/her license.

Step 6: Pay the fee for granting a protection title

If the trademark is granted a protection title, the application owner shall pay a fee for the NOIP to grant a protection title for the registered trademark.

Step 7: The NOIP issues a Trademark Registration Certificate

Within 01-02 months from the date the application owner pays the fee, the National Office of Intellectual Property issues a protection title for the mark.

The total time from filing an application to when a trademark is granted a protection title usually lasts from 18-24 months.

Dossier for trademark protection in Vietnam

Trademark application filed through Representative Organization

Viet An Law is an Intellectual Property Representative Organization, so all procedures for protecting your trademark need only sign the Power of Attorney (according to the form) and provide Viet An Law with the following information:

• Sample of the mark to be registered.
• List of goods and services of the mark expected to be registered.

Self-filed trademark protection application

Dossier to self-file a trademark registration application includes:

• The declaration for registration of trademark protection consists of 02 copies: 01 copy is kept by the National Office of Intellectual Property for carrying out the procedures, the remaining 01 copy is stamped and bar-coded and returned to the applicant.
• Trademark samples: Samples of trademarks submitted by application: 09 attached, in addition to 1 sample received by the application fee payment receipt (01 copy).
• Documentation proving the right to use.
• Other documents (if any).

However, only Vietnamese individuals and organizations can file their own trademark registration applications. Pursuant to Intellectual Property Law in Vietnam, foreign organizations and individuals must apply for trademark protection in Vietnam through an Intellectual Property Representative organization such as Viet An Law.

Scope of trademark protection in Vietnam

• Each trademark registration application can register many groups of goods and services according to the international classification of trademark registration (Nice Classification).
• The method of calculating fees when registering for trademark protection is calculated according to the group of goods and services registered. Therefore, the more groups you register, or a group of goods with many goods and services, the higher the fee will be. Therefore, when registering for trademark protection, customers need to clearly determine the scope of that mark for their goods and services in the future to minimize the costs incurred.
• After the mark has been registered or granted a protection title, if the owner uses the mark for new products or services, then it must be registered by a new application. The applicant cannot declare the list of goods and services in addition to the submitted application or the granted protection title.
• A company can register many different trademarks without any restrictions.
• After a trademark is granted a protection title, the trademark owner must use the mark for five consecutive years. If the owner does not use it, it may be asked by other subjects to terminate the validity of the protection title.

Some keynotes when registering for trademark protection in Vietnam.

• It is advisable to check the status of use of the intended trademark before filing for protection. Searching in order to avoid infringing other people’s trademarks and at the same time-wasting filing costs as well as wasting time waiting for not being granted a protection title.
• You should register for trademark protection when starting your business to avoid other subjects infringing your trademark, even “stealing” your trademark.
• Although the time to grant a protection title is quite long, the trademark owner needs to file a trademark registration application as soon as possible. When an application is filed early, priority is given to the applicant on that date. Applications submitted after the filing date will be rejected because the application has an earlier filing date.
• If you only register for one option, filing a protection application, you should choose the color of the trademark to be black and white. When registering a black and white trademark, all basic colors will be protected during the future use of the mark.
• It is advisable to choose trademark registration consulting firms that are Intellectual Property Representative Organizations such as Viet An Law. Because these organizations have experts, reputable, experienced, qualified consultants to support. On the other hand, the application owner only needs to sign Power of Attorney for the Intellectual Property Representative Organization to file and transact with the NOIP. Thereby, avoiding the loss of documents during the application process, leading to the trademark being refused to grant an exclusive license because the consulting unit does not have a legal representative function to officially exchange with state agencies.

Frequently asked questions about trademark protection

Why is trademark protection necessary?

This is a question asked by many clients of Viet An Law. Here are some reasons why you need trademark protection:

• When registering for business trademark protection, it will be protected by law.
• Avoid the possibility of confusion with other people’s trademarks in the same field as yours.
• Peace of mind in promoting your goods and services as quickly as possible to customers.
• Avoiding disputes, arising in the process of using the mark and especially having the exclusive right to own the mark in the registered national territory.
• Having the right to request other subjects to infringe or use trademarks similar or similar to their protected ones.

Which agency is competent to register trademark protection in Vietnam?

The National Office of Intellectual Property is the agency that receives and processes trademark registration applications in Vietnam.

• Department of Intellectual Property in Hanoi

Address: 384-386, Nguyen Trai Street, Thanh Xuan District, Hanoi City.

• Representative Office of the National Office of Intellectual Property in Ho Chi Minh City

Address: 7th floor, Ha Phan building, number 17-19 Ton That Tung, Pham Ngu Lao ward, district 1, city. Ho Chi Minh.

• Representative office of the National Office of Intellectual Property in Da Nang city

Address: 3rd floor, 135 Minh Mang Street, Khue My ward, Ngu Hanh Son district, Da Nang city.

Who has the right to register for trademark protection?

• Vietnamese or foreign organizations or individuals conducting production and business activities register trademark names for goods or services they produce or trade.
• Other Vietnamese or foreign organizations or individuals conducting commercial activities have the right to file applications for registration of trademark protection which they put on the market but are produced by others. Provided that the manufacturer does not use the mark for the respective product and does not object to the filing of the said application.
• The right to file an application, including one already filed, may be transferred to individuals or other entities through a written assignment of the right to file a trademark application.
• After a trademark is granted a protection title, it must always be used continuously for 5 consecutive years. In case of non-use, other subjects have the right to cancel the validity of the trademark protection title that has not been used for 5 consecutive years.

When will the trademark be refused protection title?

A trademark will be refused to grant a protection title when:

• Identical or confusingly similar to another’s trademark (trademark) that has been registered or filed for registration earlier, or is considered a well-known
• Identical or similar to objects already under the rights of others, including trade names, geographical indications, industrial designs, and copyrights.
• Identical to the proper name, symbol, image of a country, locality, famous person or organization of Vietnam and abroad (unless permitted by competent agencies or individuals).

Where to look up trademarks?

• The Industrial Property Official Gazette issued by the National Office of Intellectual Property.
• National Register and International Register of Trademarks (stored at the National Office of Intellectual Property).
• Electronic database of trademarks at the World Intellectual Property Organization.
• Electronic database of trademarks published on the Internet.
• The best solution is that the applicant can go through the Intellectual Property Representative to look up the mark and evaluate the protection feasibility of the mark.

How long is the term of trademark protection in Vietnam?

In Vietnam and most countries in the world, a trademark protection title is valid for 10 years from the date of priority (the date of filing the application). Trademarks will be renewed continuously upon expiration. If the trademark owner continuously renews the protection title, the term of protection of the mark is forever, unlimited.

Services of Viet An Law on trademark protection consulting in Vietnam

In order to save time and costs for businesses, Viet An Law provides trademark registration services for clients including:

• Legal advice on procedures and conditions for exclusive trademark protection.
• Advising on the feasibility of trademark protection.
• Preliminary search for the possibility of trademark protection.
• Representative to register for trademark protection for customers during the protection registration process.
• Drafting and signing trademark protection dossiers.
• Submit dossiers and monitor the process of application registration and examination at the NOIP.
• Representing clients in the entire process of establishing rights and responding to official correspondence with the NOIP about trademark protection.
• Exchange and provide information to customers in the process of trademark protection registration.