TRADEMARKS FILING AND PROSECUTION IN VIETNAM
A trademark is defined in Article 4.16 of the Vietnam IP Law is defined as a sign used to distinguish goods or services of different organizations or individual.Trademark in Vietnam may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
|Intellectual Property Office of Vietnam
|Multi class system
|Documents required for filing a trade mark application
|Power of Attorney simply signed
Certified copy of the priority document if claimed, with English translation.
|Requirements Details for filing
|Name and address of the applicant, clear representation of the trademark, list of goods and/or services.
|Filing, examination, publication, registration, renewal
|10 years from the date of application
Under the “First to File” principle, if any other applicant files application for an identical or similar trademark used for identical or similar goods and services after the first applicant has applied, the later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Vietnam can be conducted for word mark, logo, etc. An official search can be conducted at the records of the Intellectual Property Office of Vietnam for similarity. The official website also encourages you to conduct a similar mark search on their online database to ensure that there is no similar trademark existing on the register which is identical or similar to applicant’s trademark.
It is advisable to conduct comprehensive trademark clearance search in Vietnam to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Vietnam. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks.Filing trademark applications in Vietnam
A person may file multi-class or single class trademark application in Vietnam.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Vietnam
Ordinary trademark applications filed in Vietnam are applications without claiming any priority. Multi class trademark applications may also be filed in Vietnam. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Vietnam /Convention trademark applications Vietnam:
A priority trademark application may be filed in Vietnam. A priority trademark application should be filed in Vietnam within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Vietnam within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Vietnam follows the nice classification of classes. Intellectual property office of Vietnam uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Once the application for the registration is submitted it goes through the examination process which are divided into two stages: formality and substantive examination.
Trademark Formality Examination in Vietnam
Under formal examination, an application is checked to see whether it fulfils the necessary procedural and formal requirements.
In case the applicant formal requirements are satisfies, the IP Office of Vietnam will issue a Notification of Acceptance as to form to confirm the filing date and the application number. The formality examination will last 01 month counted from the filing date.
Before the expiration of the time limit above, the IP Office of Vietnam shall complete the formality examination of applications and send notices on examinations.
For a valid application, the IP Office of Vietnam shall send to the applicant a notice on acceptance.
For an application failed to meet the requirements, IP Office of Vietnam shall forward a notice of a refusal mentioning the reasons and setting a time limit for the applicant to correct the errors.
Publication of Vietnam
The trademark application shall publish for 2 months from the acceptance date for any possible opposition on Vietnam IP Gazette.
The mark will be published in the third month from the date of the acceptance as to form and examined as to substance within 09 months as from the date of publication. The substantive examination aims at appraising whether the mark is available for registration and use in connection with the applied goods/services.
Notices of Substantive Examination Results
On the date of expiration of the time limit for substantive examination of an application at the latest, the IP Office of Vietnam shall send to the applicant one of the following notices:
– A notice on its intended refusal to grant a mark registration, clearly stating the reason(s) for refusal and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements.
– A notice on its intended grant of a mark registration and request the applicant to pay the registration/granting fee and must be paid within three (3) months from the date of the Notice of Allowance.
Responses to Substantive Examination Results
The deadline for responding to the IP Office of Vietnam’s Notices is within three months of the notice having been issued and the same is extendable for a further three months.
Trademark Opposition in Vietnam
In Vietnam, there is no particular deadline for filing an opposition against a trademark application, and the same may be filed any time during the examination process, from the date of publication of an application in the Industrial Property Official Gazette, until prior to the date of grant of the registration certificate by the National Office of Intellectual Property (NOIP) – which may take around 9 months.
Once an opposition is filed, the NOIP will issue a notice to the Applicant, directing them to file their response within one month. Upon receiving the Applicant’s response, the NOIP may issue a notice to the Opponent, calling upon them to respond to the Applicant’s submissions within a period of one month.
Once the pleadings have been completed, the NOIP will carry out a substantive examination of the trade mark by considering the evidence and arguments of both parties, and render a decision accordingly.
Decision of refusal
If the applicant to whom the IP Office of Vietnam has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the IP Office of Vietnam shall send a Decision on its refusal of the application.
When dissatisfactory with the IP Office of Vietnam’s refusal Decision, the applicant may proceed with filing an appeal against the refusal Decision or initiate lawsuits at court in accordance with administrative procedures.
Trademark registration in Vietnam
After the examination process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Use in Vietnam
A registered mark may be subject for a cancellation action by any interested party if it has not been used for 5 consecutive years.
Trademark Renewal in Vietnam
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.