Trademark registration form from August 24, 2023

Decree 65/2023/ND-CP newly issued and effective on August 23, 2023, has replaced many regulations on the protection and enforcement of industrial property rights under the revised Law on Intellectual Property in 2022. In particular, the Trademark Registration Form from August 24, 2023, is also replaced with the updates that will be described by Viet An Law in the following article.

New points to note in the trademark registration declaration according to the new form

Update applicant information

In the new declaration form, it has been agreed that the person who has the right to declare and file an application is called the Applicant instead of the Applicant as before.

The new form also adds information about the applicant’s identity verification document in the case of an individual: citizen identification number.

Regulations in the form of a Trademark Registration Certificate

Unlike the old application form, which separates the choice of granting a Trademark Registration Certificate into a section “Conversion of Application” on the second page of the declaration, the new application form has been integrated into the first section of the application. Accordingly, when the applicant fills in the declaration form, he must pay attention to check the form of application review and grant of the degree at his request, avoiding forgetting this box.

Regarding the form of protection title, concurrently with Decree 65/2023/ND-CP supplementing regulations on the issuance of trademark registration certificates (also known as trademark protection titles) in electronic form or paper form.

For applications for registration of establishment of the right to be filed from August 23, 2023 (the effective date of Decree 65/2023/ND-CP), the provisions of this Decree must apply. Accordingly, the protection title is only granted in case the applicant has selected such requirement in the trademark registration declaration according to the new form (stipulated in Article 29.1 of Decree 65/2023/ND-CP).

Supplement of sound trademark registration

The sound mark represented in graphic form is a new form of trademark added in Article 72 of the Intellectual Property Law 2022 to institutionalize international commitments to the protection of non-traditional trademarks in the world. CPTPP and EVFTA. Thus, unlike the previous regulations, the mark must be “visible”, now the “sound” sign will also be registered as a trademark in Vietnam.

However, according to the provisions of Article 105 of the Intellectual Property Law 2022, the applicant must attach a graphic image of that sound mark and a magnetic recording to have a basis for actual trademark protection. Decree 65/2023/ND-CP also instructs that when submitting documents along with a sound trademark registration application:

“[…] trademark sample must be a .MP3 digital format audio file with a capacity of no more than 3 MB and a graphical representation of the sound, specifically represented by a 5-line staff. “.

That is, in Vietnam, the protection of an intangible trademark such as sound has not been fully recognized yet, but still needs “visible” tangible evidence (graphic image of sound) to have a basis for protection in practice.

Along with the additional update of the sound trademark, the newly revised Law also no longer provides for the protection mechanism for the associated trademark. Thus, the applicant is no longer able to register for more than one identical or similar trademark for the same or similar or related products or services. Instead, these marks must still satisfy distinctiveness.

In the new mark registration declaration form, the checkbox “Type of mark required for registration” has the following changes:

Thus, in the declaration in Section “Type of mark required for registration” in the declaration, the applicant needs to clearly identify the type of registered mark.

Notes on trademark classification

The applicant needs to write in sequence each group according to the International Classification of Goods and Services under the Nice Agreement (Nice Classification). Starting in early 2023, the NOIP of Vietnam uses the Nice version number 12-2023.

Proper classification of a trademark is very important because it constitutes the scope of protection of that trademark. If the applicant does not self-classify or classifies incorrectly, the state management agency in charge of industrial property rights will do this and the applicant must pay the classification fee as prescribed. The current fee schedule prescribed in Circular 263/2016/TT-BTC is 100,000 VND for each group with more than 6 products/services, 20,000 VND for each 7th product/service onwards.

Therefore, in case the applicant does not know how to search or does not have experience in searching, the applicant should ask industrial property representative organizations for advice and representation to submit the application. This grouping is often done right from the preliminary trademark search step before filing, this is an important step to determine the trademark’s ability to successfully register for protection. Skipping the preliminary search step may prevent the applicant from determining whether the mark meets the protection conditions or not, leading to a patent not being granted, and wasting time and money.

General requirements for the form of documents attached to the application form

According to the provisions of Decree 65/2023/ND-CP:

• All documents are presented vertically, Times New Roman font no smaller than size 13, 2cm wide each margin.
• Page numbering of all documents in Arabic numerals.
• Contiguous stamps are required if there are 2 or more pages in case the applicant or the applicant’s representative is a legal entity.

Trademark registration form from August 24, 2023

New points in Decree 65/2023/ND-CP on trademark registration

Update declaration of international trademark registration via the Madrid system (Madrid application)

The updated Madrid application form can be found here:

Compared to the old application form in Appendix C of the Circular from 01/2007/TT-BKHCN mentioned in the article about the International Trademark registration application under the Madrid Protocol before, the new application form has some important updates as follows:

• There is no longer an option to register under the Protocol or the Madrid Agreement.
• Adding a specific group of goods and services for international trademark registration (which may be different from the domestic trademark registration or protection title).
• The methods of payment of fees and charges include Direct payment – Payment by bank transfer or by postal service.
• No more boxes to mark documents: Declaration requesting the grant of the basic trademark registration certificate, Copy of the basic trademark registration certificate, Commitment to use the mark in the requesting country for protection if specified in countries with such a requirement (Ireland, Singapore, United Kingdom, United States,…). Instead, if necessary, will be noted in the other documents section.

In addition, Decree 65/2023/ND-CP also adds a section on the application of trademark registration converted from international registration of suspended and invalid trademarks according to Article 9quinquies of the Madrid Protocol in Form No. 03 of Appendix 2. This is the case where the registration application of the foreign applicant is invalidated according to and must meet the conditions in Article 28 of the Decree. You can download it here:

Split trademark application

According to Article 17 of Decree 65/2023/ND-CP, an applicant has the right to request separation of a trademark registration application before a decision on formal examination or substantive examination is issued. However, the separation of applications is only accepted in the case of partial separation of the list of goods and services in the trademark registration application into one or more new applications.

When carrying out the procedure for separating a trademark application, the applicant must submit an explanation of the object of protection and the content of changes compared to the original application.

Withdrawal of trademark application

The new Decree has added a provision that the NOIP must issue a notice of its intention to refuse to accept the withdrawal of the application in case the request for withdrawal of a trademark registration application does not satisfy the conditions for the applicant to remedy in Article 17.2.

The above are some updates related to the trademark registration form from August 24, 2023. If you need to register a trademark in Vietnam, please contact Viet An Law for the best support.