Trademark Protection in Vietnam

Brand 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.

Subjects to be entitled to protect the Trademarks in Vietnam

Subjects can conduct trademark registration include individuals, organizations and enterprises (According to the provisions of the Intellectual Property Law). In which, includes:

• Vietnamese individuals, organizations and businesses;
• Foreign individuals and organizations.

If the subject is an individual, a Vietnamese company can register its trademark directly at the National Office of Intellectual Property (NOIP) or through an Intellectual Property Representative to register the trademark. For foreign individuals, organizations and enterprises wishing to register their trademarks in Vietnam, they must apply for trademark registration through the Intellectual Property representation companies like Viet An Law Firm.

Note: Trademarks that have been granted a trademark registration certificate if they are not used for a continuous period of five years will be requested for termination of validity by other entities.

Classification of products and goods of Trademarks

The classification of registered trademarks is based on the International Classification of Trademarks (Nice Classification Boarđ), which is applied worldwide. All goods and services on the market have many categories but according to the trademark classification table, there are only 45 classes. In particular, there are 34 classes for goods and 11 classes for services. In Vietnam, the mark registration fee is calculated based on the group of goods and services that are registered with a trademark. Therefore, the more classes of goods and services that customers register, the higher the registration fee will be.

Steps to conduct Trademark Search and Registration

In order to support businesses and individuals to establish trademark rights for their goods and services before marketing them as quickly and professionally as possible. Viet An Law Firm provides guidelines of the process of searching and registering trademarks for goods and services in 2020 as follows:

Step 1: Look up the trademark

Customers send a sample of the trademark and a list of branded products and services to Viet An Law Firm for a preliminary lookup and evaluation of trademark registration ability.

Free preliminary search: Viet An Law will conduct a free preliminary search for customers to assess the ability of the trademark registration within 01 day from the date the customer provided the information.

After the preliminary search, if it is likely that the trademark does not have the ability to register, Viet An Law Firm will consult and provide the relevant references to find a solution for the trademark to be granted a certificate at later.

Intensive look up Service before filing a Trademark Application

In case, after the preliminary examination of the trademark and it is likely to be registered, it is possible to search in depth through Vietnamese and international data to appraise the highest possibility of granting a protection title to the trademark. This is not a mandatory step, but should be taken to increase the trademark registration and save time.

Intensive search is a completely voluntary procedure of the applicant. However, this procedure should be conducted as this is the first and important step for a preliminary assessment of whether a trademark should apply for protection or not.

However, the trademark search is for reference only and is not a basis for granting or not granting a certificate (this partly related to the priority right of trademark registration as described above).

Dossiers for trademark lookup customers need to prepare: 03 trademark samples with sizes larger than 3 × 3 cm, not exceeding 8 × 8 cm.

Intensive trademark search procedure through Viet An Law Firm takes 1-3 working days.

Trademark search results: Notice of trademark search results

Step 2: Submission of trademark protection and follow up the trademark protection process at the National Office of Intellectual Property

Stage 1: Submit a trademark protection declaration (filing a trademark protection application):

After an in-depth lookup and a mark that is considered likely to be registered, Viet An Law will conduct a trademark registration at the National Office of Intellectual Property for your application.

The trademark registration documents that customers need to prepare

• Power of Attorney (attached form)
• 01 trademark sample (not smaller than 3 × 3 cm, not exceeding 8 × 8 cm)
• List of products and services intended for trademark registration.
• Viet An Law will prepare the remaining documents according to the regulations for the trademark application.

In addition to the above-required documents, when a customer registers a collective mark, a certification mark… customer must provide additional documents to Viet An Law Firm as follows:

• Regulation on using collective mark/ certification mark;
• Explanatory statement on the particular (or specific) nature and quality of the trademarked product (if the registered trademark is a collective trademark used for a product of a particular nature or a certification mark for the quatity of the product or a trademark certifying a geographical origin);
• Map showing territory (if the registered trademark is a trademark certifying the geographical origin of the product).

The Agency receiving and processing trademark registration dossiers in Vietnam: Vietnam National Office of Intellectual Property.

Results of Stage 1: The Declaration of trademark registration

Stage 2: Examining the form of Trademark protection Applications

The time limit for formality examination of trademark registration applications is 1 month from the filing date.

• The National Office of Intellectual Property will consider the application with eligibility in terms of form, label pattern, owner of the application, the right to file applications, classification, etc.
• If the application of enterprise satisfies the conditions, the National Office of Intellectual Property will notify the acceptance of the valid application and publish it.
• If the application of the enterprise does not meet the conditions, the NOIP will issue a Notice of non-acceptance of the application and request the enterprise to amend. Enterprises make modifications as required and submit the amended documents to the National Office of Intellectual Property.

Results of Stage 2 of the trademark application: Accepting a valid application

Time limit for publication of trademark registration applications: 02 months from the date of receipt of the notice of acceptance of valid application.

The content of publication of a trademark registration application is the information related to a valid application stated in the notice of acceptance of the valid application, trademark sample and attached list of goods and services.

Stage 3: Substantive Examination of Trademark protection Applications:

Time limit for substantive examination: 09 months from the date of publication.

• The National Office of Intellectual Property shall examine the conditions for registering a trademark, thereby evaluating the possibility of granting a certificate for the trademark registered by the enterprise. If the trademark registration application satisfies all conditions, the NOIP shall issue a notice of intention to grant a trademark to the mark already registered by the enterprise.
• If the trademark registration application does not meet the conditions, the NOIP issues a notice not to grant a certificate for the trademark registered by the enterprise. The enterprise shall consider and send a written response to the decision of the NOIP, and at the same time provide grounds for granting a trademark protection certificate to the trademark of the enterprise.

Result of Stage 3: Notice of intention to grant a trademark protection title and pay a licensing fee

Stage 4: Receipt of Certificate of Trademark Protection and hand over to customers

Result of stage 4: Certificate of Trademark Registration

After the decision to grant the Certificate, Viet An Law Firm shall notice the Business to pay the granting fee for the Cerificate and getting the Trademark Protection Certificate and deliver to the customer.

Time limit for granting Protection Title: 02-03 months from the date of paying fees for granting the Certificate.

According to the experience of Viet An Law Firm, the Trademark Registration period will usually last about 12-18 months from the date of accepting a valid application.

Term of a Trademark Protection Title in Vietnam

Trademarks are protected for 10 years from the date of application (priority date). Enterprises are allowed to extend their protection titles and not limit the number of extensions. Therefore, trademarks will be the property throughout the process of operation and doing business of enterprises.

A few notes when performing the procedure of Trademark Protection in Vietnam

Notes on Trademark Registration with registration of trade names, domain names, copyright registration of applied artworks for logos (picture trademark)

Consistency between Trademark Registration and Trade names of enterprises

When submitting for the trademark registration, customers should concurrently register the Company name with a part of the registered trademark: For example, an enterprise would like to register the Viet An trademark then should also name the company as: Company… Viet An… in order to avoid the case some after a more than 1 year when the trademark is granted a certificate, then but since from the time of filing to the time of granting the certificate, there is a competitor who already registered the trade name with letter part of the trademark of the company’s trademark which leads to the case that even the trademark has already been granted a protection title, but the trademark owner cannot handle the infringement or request the competitor to stop using the trade name because the competitor has registered the trade name before the date the company was granted the certificate. This is an unreasonable regulation of the law on Intellectual Property and law on Enterprise that the applicant himself should be aware of to avoid unnecessary risks.

Consistency between Trademark Registration and Domain Name:

In case customers register the trademark but the company name (trade name) of the company is not identical with the registered trademark, you can choose to register a domain name (especially the domain name managed by the State of Vietnam which has a “.vn” to prove the registration of the trademark with the domain name. Currently, the registration of trademark is stretching so long, it takes about more than 1year time to establish the ownership of the application, so, in order to avoid the risks as analyzed above, at a later time when the trademark is granted, the trademark owner may request the competitor who registered a trade name after the time of registering the trademark and domain name to stop the infringement of Intellectual Property.

Consistency between Rrademark Registration and applied art Copyright Registration to the trademark with image and letter parts:

For the trademark image (ie logo) when registering and bearing information with a letter part on trademark, customers who do not register the trade name of the company, or do not need to register a domain name shall have with more options when registering the trademark and also concurrently register the copyright for the applied works of art for the trademark bearing also the letter and the image. This registration is similar to the registration of a trade name or domain name so as to avoid the case where after the registration of a trademark, a competitor has registered the company name and domain name before the date the trademark is granted the certificate, then the trademark owner has sufficient grounds to request an unfair competitor to stop the infringement or request the Business Registration agency to revoke the part of the name with signs of infringement of the rights on Intellectual Property.

Notes about the colors when registering Trademarks

According to the provisions of the law of Vietnam on Intellectual Property, there are no specific provisions on the protection scope of black and white trademarks and color trademarks, as well as registration of black and white trademarks or registration of color trademarks that offer absolute rights for application owners. However, trademark protection practices in Vietnam allow a trademark to be registered in black-and-white format to be used in different color formats, as long as the letter / image contents of the trademarks remain intact and does not infringe on the rights of another black-and-white or color trademark of another person which is already registered.

Therefore, the Viet An Law Firm’s view point is that for individuals/ businesses that would like to register their trademarks in Vietnam, if they want to save costs in the process of trademark protection registration or choose between color trademark or black and white trademark registration, it is preferable to register the trademark as black and white.

Notes about drawing or image mark registrations (also known as logos), letter or text mark registrations, positioning sentences (slogan) when registering trademarks:

Drawing or Image trademarks (also known as logo):  Can be independently registered for protection as a trademark or combined with the text part of a trademark or positioning sentence when registering a trademark.

Letter or Text mark: When registering a trademark, the owner of the registration application may choose the form of the trademark text registered in the following forms:

The first type of Text Trademark Registration Form: Only made up of standard letters or numerals in the standard form and only in black-white and simple forms. Owners of standard trademarks have a wide right to use the registered trademark, that is, the right to use the trademark in any font or color they want as long as they do not infringe the rights of another trademark that being protected. Such use will not prejudice the protected content of the trademark.

• The drawbacks of the first type of text trademark registration should be noted that when using such discretion, only the content of the trademark is protected but the unique font style or presentation as well as the color of The mark will not be covered by the registered standard word mark and be granted a protection title.

Second type of Text Trademark registration form: Made up of stylized or visualized letters, words and numbers or colors. A trademark registered in this form is obviously protected in terms of its core content, including the letter structure, pronunciation and the meaning of words (if any) like the standard printed trademark. However, because the trademark is also protected by the presentation (special font type or special presentation), its protection effect is strengthened more strongly against competitors’ intention to approach the trademark, not only about the content but also about the way the trademark is presented.

• The drawbacks of this second type of trademark registration is that when a stylized text trademark is registered, the right to use the stylized text trademark is restricted as the owner only be allowed to use the trademark exactly same form according to the registered but are not allowed to freely use the trademark in other letter forms or other ways.

Notes about the priority right that affects trademark application registration

The priority right in trademark registration affects the granting or non-granting of protection titles to trademark applications of other entities. Under the provisions of the Intellectual Property Law and relevant international agreements, within the time from the first filing date to the filing date in Vietnam, if another subject files the same object as in the first application, then the application of the first applicant is still considered to have the same filing date as the first filing date and shall be given priority for protection. For that reason, no one dares to affirm that the trademark once is submitted for application and have been carried out with the look-up process of trademark registration status that will be guaranteed to be granted a protection title.

Some notes when designing, choosing to register Trademarks

• To ensure the ability of exclusive protection of business trademarks, enterprises need to design trademarks to ensure their uniqueness, reflecting the distinctive characteristics of their goods and services at the same time, must be different from the trademark of other units.
• Trademarks can be combined of Letters and Image. In case the trademark are just Letters, it should be stylized so that it can be granted a protection title when registering.

Some elements that are not granted a protection title (ie, exclusion signs should not be used as trademarks), include:

• Trademarks should not be designed as shapes, simple geometric figures, numerals, letters, words of uncommon languages,
• Trademarks should not be designed as signs, conventional symbols, drawings, common names of goods and services in any language (such as English, Japanese, Chinese and Latin translations. …)
• Trademarks should not be designed as indicators of the time, place, production method, type, quantity, quality, properties, ingredients, uses, values ​​or other descriptive properties of goods, services;
• Trademarks should not be designed as a description of the legal form and field of business;
• Trademarks should not be designed as signs indicating the geographical origin of goods or services;
• The best way to assess the ability of protection of a trademark is to exercise the search of trademark before filing application for a registration. Viet An Law is willing to provide free preliminary search for customers before performing the next work in the trademark registration process.

Frequently asked Questions

Who has the right to register a trademark in Vietnam?

• Vietnamese individuals, organizations and businesses;
• Foreign individuals and organizations. (For foreign individuals, organizations and enterprises that would like to register their trademarks in Vietnam, they must apply for trademark registration through the Intellectual Property representation companies like Viet An Law Firm).

What are the classification of products and goods for trademarks?

The classification of trademarks for registrations is based on the International Classification of Trademarks (The Nice Classification Board), which is applied worldwide. There are many kinds of goods and services on the market but according to the Trademark Classification Board, there are totally only 45 groups (45 classes). In particular, there are 34 classes for goods and 11 classes for services. In Vietnam, the fee for trademark registration is calculated based on the class of goods and services that are needed to register for trademark.

Why should to conduct the Trademark Look up?

The trademark Look-up process is to determine whether the trademark intended to apply is similar or identical to the regissted trademarks of other entities or not? Also, it is to assess the possibility that the application for the trademark shall be granted a protection title or not?

Why need to conduct for Trademark Registration?

Trademark registration of a new entity first is to avoid the infringement of other entities’ trademarks, more importantly, the businesses’ registration of trademarks in addition to enhancing the brand promotion activities of businesses, creating the trust in relations with customers that businesses also have legal grounds to protect for their rights from any illegal use of that trademark.

How long is the Term of Trademark Protection Title in Vietnam?

Trademarks are protected for 10 years from the date of filing application (priority date). Enterprises are eligible to extend their protection titles and no limit the number of extensions. Therefore, trademarks will be a property for throughout the process of business operation of enterprises.

Consultancy Service of Trademark Registration of Viet An Law Firm

• Provide legal advice on procedures and conditions for Trademark Registration;
• Counseling on feasibility when registering Trademarks;
• Free preliminary look-up of capability of Trademark Registration;
• Official intensive look-up for Trademark at the National Office of Intellectual Property – Independent cost;
• Representing customers for Trademark Registration and for throughout the process of Trademark Registration;
• Drafting documents/ dossiers for trademark registration;
• Filing and monitoring the process of registration, examination of applications at the National Office of Intellectual Property;
• Representing customers in the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property on trademark registration;
• Exchanging and providing information to customers during the process of trademark protection registration.

Enterprises and individuals with demands to register a trademark, please contact Viet An Law Firm for advice, detailed guidances on filing, how to classify trademarks, procedures related to Applications of Trademark Registration or problems arising during the process of Trademark Registration.