What is a trademark?
According to Article 4.16 of the IP Law of Vietnam, a “mark” means any sign used to distinguish goods or services of different organizations or individuals. Such signs must be visible and may include letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours.
What is a collective mark?
According to Article 4.17 of the IP Law of Vietnam, a “collective mark” means a mark used to distinguish goods or services of members of an organization which is the owner of such mark from marks of non-members of such organization.
What is a certification mark?
According to Article 4.18 of the IP Law of Vietnam, a “certification mark” means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such mark.
What are associated marks?
According to Article 4.19 of the IP Law of Vietnam, “associated marks” mean identical or similar marks registered by the same entity and intended for use on products or services which are of the same, similar or interrelated type.
What is a well-know trademark?
A well-known trademark, as defined by Article 4.20 of the IP Law of Vietnam, means a mark widely known by consumers throughout the territory of Vietnam.
What is a trade name?
A trade name as defined by Article 4.21 of the IP Law of Vietnam, means the designation of an organization or individual used in business activities in order to distinguish the business entity bearing such trade name from other business entities in the same business sector and area. Business area as stipulated in this clause means the geographical area in which a business entity has its partners, customers or reputation.
Where to file a trademark application in Vietnam?
All trademarks should be applied for and registered with the National Office of Intellectual Propery of Vietnam.
Can foreign trademark applicant directly apply for the trademark registration before Trademark Office of Vietnam?
According to Article 89 of the IP Law of Vietnam, foreign individuals permanently residing in Vietnam, and foreign organizations and individuals having production or business establishments in Vietnam can file trademark applications either directly or through a licensed IP agent in Vietnam.
Foreign individuals not permanently residing in Vietnam and foreign organizations and individuals without production or business establishments in Vietnam shall file applications for registration of establishment of industrial property rights through a licensed IP agent in Vietnam.
The Vietnamese IP agent must be appointed by the applicant, through a Power of Attorney (POA), to act on the behalf of the latter in filing and registering their trademarks in Vietnam. The POA just needs to be signed, no notarization is required. At the filing, a fax copy of POA is accepted, but the original must be supplemented within 1 month from the filing date.
Can a trademark application cover multi classes?
Yes, it can. Single trademark application covering multi-classes is accepted with the provision that the official filing fee must be paid for each class.
Which classification systems are applied for Vietnamese Trademark?
The Nice 10th Classification System is applied in Vietnam in registrations for trademarks. The Vienna Classification system is used for figure trademarks.
What are requirements for a specimen of mark?
The specimen of mark must meet the following requirements:
– Size: neither smaller than 8 mm x 8 mm nor larger than 8 cm x 8 cm
– Quantity: 05 additional reproductions (specimens)
– The specimens must clearly presented.
For a mark being a three-dimensional figure, the mark specimen must be accompanied with a photo or drawing showing the three-dimensional disposition and may be accompanied with a descriptive specimen in the projection form;
For a mark involving a claim for protection of colors, the mark specimen must be presented with the very colors sought to be protected. If the protection of colors is not claimed, the mark specimen must be in black and white.
In which cases a sign shall be excluded from the protection as a trademark?
According to Article 73 of the IP Law of Vietnam and Point 39.2.b of the Circular 01/2007/TT-BKHCN, a sign shall be excluded from the protection as a trademark in the following cases:
– Signs that are merely colors and neither combined with character signs or figure signs nor presented in the form of character signs or figure signs;
– Signs that are contrary to the public order or prejudicial to national security;
– Signs identical with or confusingly similar to national flags or national emblems;
– Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio-politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations;
– Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries;
– Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations;
– Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
In which cases a trademark is deemed to be distinctive?
According to Article 74 of the IP Law of Vietnam, a trademark shall be deemed to be distinctive if it is created from one or more easily recognizable and memorable elements, or of many elements forming an easily recognizable and memorable combination, and does not fall into the following cases:
– Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
– Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
– Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
– Signs describing the legal status and business sector of business entities;
– Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
– Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
– Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
– Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
– Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
– Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
– Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
– Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
– Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.
Is it possible to receive the refund for application fee in case of withdrawing the trademark application?
No, it is impossible. In the Circular 263/2016/TT-BTC on fees and charges for industrial property and the collection, transfer, management and use thereof, and in the Government’s Decree 120/2016/NĐ-CP detailing and guiding the implementation of a number of articles of the law on fees and charges, there is no regulation governing the refund. Thus, the Natinal Office of Intellectual Property is not allowed to refund to the Applicant.
How long does it take from the filing date until a trademark registration certificate is granted in Vietnam?
If the trademark application process goes smoothly, in theory, it would take a period of 12 months from the filing date to obtain a certificate of trademark registration in Vietnam, of which 01 month is for formality examination, 02 months are for data preparation for publication of the application and 09 months are for substantive examination and publication of trademark application. The actual period from filing until registration of a trademark application might be 24 months, or even longer, due to the backlog of the trademark examiners, or in case the application has a long list of goods and/or services.
How to amend the trademark and the list of goods and/or services of a trademark application?
The trademark can be amended in such way that the amendment does not change the nature of the originally filed trademark. The list of goods and/or services can be amended in such way that the amendment does not go beyond the protection scope of the originally filed list of goods and/or services.
What would happen if a registered trademark has not been used for 5 consecutive years?
The trademark owner should use his trademark in Vietnam. The fact that the trademark has not been used by its owner or the licensee of the owner without proper reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination, shall make the registered trademark’s validity to be vulnerable to the termination.
How long is the validity term of a registered Trademark in Vietnam?
According to Article 93.6 of the IP Law of Vietnam, the validity term of a Trademark Registration Certificate is 10 years from the regular filing date and can then be renewed indefinitely for consecutive periods of 10 years.
What are the minimum contents of an assignment contract for a registered trademark?
According to Article 140 of the IP Law of Vietnam, an assignment contract for a trademark must contain the following principal contents:
– Full names and addresses of the assignor and of the assignee.
– Grounds for the assignment.
– Assignment price.
– Rights and obligations of the assignor and the assignee.
Is it a must to register a trademark assignment contract at the Trademark Office of Vietnam?
Yes, it is a must. According to Article 148.1 of the IP Law of Vietnam, a trademark assignment contract shall be valid upon its registration with the National Office of Intellectual Property.
What are the minimum contents of a license contract for a registered trademark?
According to Article 144.1 of the IP Law of Vietnam, a license contract for a trademark must contain the following principal contents:
– Full names and addresses of the licensor and of the licensee;
– Grounds for licensing;
– Contract type;
– Licensing scope including limitations on use right and territorial limitations;
– Contract term;
– Licensing price;
– Rights and obligations of the licensor and of the licensee.
What are prohibited provisions in a license contract for a registered trademark?
According to Article 144.2 of the IP Law of Vietnam, a trademark licence contract must not have provisions which unreasonably restrict the right of the licensee, and in particular the following provisions which do not derive from the rights of the licensor:
– directly or indirectly restricting the licensee from exporting goods produced or services provided under the industrial property object licence contract to the territories where the licensor neither holds the respective industrial property right nor has the exclusive right to import such goods;
– compelling the licensee to buy all or a certain percentage of raw materials, components or equipment from the licensor or a third party designated by the licensor not for the purpose of ensuring the quality of goods produced or services provided by the licensee;
– prohibiting the licensee from complaining about or initiating lawsuits with regard to the validity of the trademark rights or the licensor’s right to license.
Such provisions, if being presented in the license contract, shall be automatically invalid.
Is it a must to register a trademark license contract at the Trademark Office of Vietnam?
Yes, according to Article 148.2 of the IP Law of Vietnam, it is a must to register a trademark license with the National Office of Intellectual Property so that this license contract becomes valid to a third party.
How to proceed with the renewal procedure for Trade mark in Vietnam?
According to Point 20.4.b of the Circular 01/2007/TT-BKHCN, the trademark renewal application may be submitted to the National Office of Intellectual Property within six months prior to the expiry of the registration.
A grace period of another six months is available in case the Trademark owner fails to submit the renewal mark application within six month preceding the expiry of the registration. In case of renewing the trademark within the grace period, in addition to the renewal fees, the Trademark Owner must also pay the late fine which is equivalent to 10% of the renewal fees per late month.
Is it necessary to submit the original Trademark Registration Certificate in the renewal procedure?
Submission of the original Trademark Registration Certificate in the renewal procedure is optional.
In case the original Trademark Registration Certificate is submitted, the renewal data shall be recorded in the back page of the original Trademark Registration Certificate to be return to the Trademark Owner.
In case the original Trademark Registration Certificate is not submitted, the renewal data shall be recorded in the National Registrar only, and the National Office of Intellectual Property shall not provide the Trademark Owner with any document showing such recordal of renewal. At the later stage, if the Trademark Owner wishes the renewal data to be recorded in the original Trademark Registration Certificate (e.g., for the assignment procedure), the Trademark Owner must proceed with the Trademark Registration Certificate Amendment procedure.
How to proceed with the opposition procedure for Trademark in Vietnam?
Legal basis for the Trademark opposition procedure can be found in Article 112 of the IP Law of Vietnam and Point 6 of the Circular 01/2007/TT-BKHCN. According to that, an opposition can be filed at any time during the period from the publication date of the trademark application up until prior the date of issuance of a decision on grant of Trademark Registration Certificate. The time frame for substantive examination as prescribed by law is 09 months from the publication date of the trademark application. The opposition should, therefore, be filed within the above-mentioned period.
The opponent may submit a notarized Declaration/Affidavit on all events concerning the trademark rights and other supporting information or documents. Documents indicating the successful opposition in other countries might be helpful, yet optional. In case the opponent submit the opposition request through an IP agent, a signed Power of Attorney must be provided as well.
– Within one month after receiving the opposition of the third party, the NOIP shall notify such opposition to the applicant and set a time limit of one month from the date of notification for the applicant to give feedback in writing. After receiving the applicant’s feedback, when necessary, the NOIP shall notify the feedback to the third party and set a time limit of one month from the date of notification for the third party to respond in writing to that feedback. The NOIP shall process opinions of applicants and third parties on the basis of proofs and arguments furnished by the parties and documents included in the applications.
– When considering opinions of the third party groundless, the NOIP is not required to notify those opinions to the applicant but shall notify the third party of its refusal to consider the opposition, clearly stating the reason for refusal.
– If opposition of the third party are related to the registration right, when finding it impossible to determine whether or not such opposition are grounded, the NOIP shall notify such to the third party so that the latter can file a petition with a court for handling. Within one month after the NOIP issues the notice, if the third party fails to notify the NOIP of the filing of a petition with a court for handling, the NOIP shall regard the third party as having withdrawn its opposition. If the NOIP is notified by the third party within the above time limit, it shall suspend the trademark application processing until the results of dispute settlement by the court are obtained. After the results of dispute settlement by the court are obtained, the trademark application processing shall be resumed in accordance with those results.
– When necessary and upon the request of both parties, the NOIP shall organize face-to-face meetings between the third party and the applicant to further clarify the matter challenged by an opposition.
– The time limit for the applicant to respond to the opposition of the third party shall not be counted into the time limit for the NOIP to carry out relevant procedures according to regulations.
How to proceed with the invalidation procedure for a registered trademark in Vietnam?
According to Article 96 of the IP Law of Vietnam, any interested person/organization may lodge a request in writing to the National Office of Intellectual Property (NOIP) for invalidation of the registered trademark on the grounds that (i) the applicant for trademark registration has no right to registration; or
(ii) the trademark application does not meet the protection conditions at the filed date of the trademark application.
The time limit for lodging a request for invalidation of a trademark is 5 years as from the grant date, except for the case where the trademark has been granted due to the applicant’s dishonesty.
Along with the written request for the invalidation, the requester shall also submit proof, if any, and written justification of the reason for request (clearly stating the Trademark Registration Certificate number, reason, legal grounds, contents of the request for invalidation of part of or the entire Trademark Registration Certificate) and other relevant documents. A signed Power of Attorney is required if the request of invalidation is submitted through an IP agent.
The trademark owner shall be noticed of such invalidation request by the NOIP, and shall be given 2 months (or 3 months in case of the invalidation of international registrations of trademarks) from the date of notice to submit a counter-statement or to take necessary action. Failing to respond to the NOIP’s notice within the prescribed time limit, the trademark registration shall be deemed to be invalidated and such invalidation shall be pulished on the Official Gazette. The NOIP may organize an exchange of opinions between the requester and the Trademark Owner. The NOIP shall process opinions of Trademark Owner and the requester on the basis of proofs and arguments furnished by the parties, and issue a decision on invalidation of part of/the entire Trademark Registration Certificate or notify its refusal to invalidate the Trademark Registration Certificate. A decision on invalidation of Trademark Registration Certificate shall be published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within two months from the date of its signing. The NOIP’s decision or notice is subject to the appeal procedure.
How to proceed with the termination procedure for a registered trademark in Vietnam?
According to Article 95 of the IP Law of Vietnam, any interested person/organization may lodge a request in writing to the National Office of Intellectual Property (NOIP) for termination of the registered trademark on the grounds that:
– The Trademark owner fails to pay the stipulated renewal fee;
– The Trademark owner no longer exists, or no longer engaged in business activities and does not have a lawful heir;
– The trademark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
– The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;
– The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations.
Along with the written request for the termination, the requester shall also submit proof, if any, and written justification of the reason for request (clearly stating the Trademark Registration Certificate number, reason, legal grounds, contents of the request for termination of the Trademark Registration Certificate) and other relevant documents. A signed Power of Attorney is required if the request of termination is submitted through an IP agent.
The trademark owner shall be noticed of such termination request by the NOIP, and shall be given 2 months (or 3 months in case of the termination of international registrations of trademarks) from the date of notice to submit a counter-statement or to take necessary action. Failing to respond to the NOIP’s notice within the prescribed time limit, the trademark registration shall be deemed to be terminated and such termination shall be pulished on the Official Gazette. The NOIP may organize an exchange of opinions between the requester and the Trademark Owner. The NOIP shall process opinions of Trademark Owner and the requester on the basis of proofs and arguments furnished by the parties, and issue a decision on termination of the Trademark Registration Certificate or notify its refusal to terminate the Trademark Registration Certificate. A decision on termination of Trademark Registration Certificate shall be published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within two months from the date of its signing. The NOIP’s decision or notice is subject to the appeal procedure.
What is a trademark infringement?
According to Article 129 of the IP Law of Vietnam, an infringement of a registered mark is the use of the trademark by any person other than the owner of the mark without the authority of the owner. Such use may be one of the following acts:
– Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;
– Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;
– Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;
– Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners.
Which border control measures are applicable in Vietnam?
IP right holders who believe that their IP rights may be infringed or damaged shall have the right to request customs authorities to apply the following measures:
– Inspection and supervision to detect goods showing signs of infringing intellectual property rights; and/or
– Suspension of customs procedures against goods suspected of infringing intellectual property rights.
How to carry out the procedure for inspection and supervision to detect goods showing signs of infringing intellectual property rights at Vietnamese Customs?
IPR holders or authorized person shall submit an application to the General Department of Customs (Customs Management Supervision Department), including:
– Written request made under the form No.01-SHTT prescribed in the Circular 13/2015/TT-BTC;
– Legalized Power of Attorney from the applicant;
– Notarized copy of Protection Title(s);
– Description of genuine and possible imitation/counterfeit goods;
– Photos of genuine and possible imitation/counterfeit good;
– List of legal goods importer(s) and/or exporter(s);
– Mode of import and/or export;
– Information of forecast on when and where related shipment(s) going to be proceeded with Customs procedure;
– The IP assessment conclusion issued by the IP assessment authority.
The General Department of Customs will issue Notification of Acceptance within 20 days from the date of receipt of legitimate application.
The time limit for application of customs inspection and supervision measures for goods requiring protection of intellectual property rights is 02 years from the date on which the customs authority accepts the request of the intellectual property rights holder. This time limit may be renewed for further 02 years but not exceed the protection term of the concerned intellectual property subject matter in accordance with the Law on Intellectual Property
How to carry out the procedure for temporary suspension of customs procedure at Vietnamese Customs?
IPR holders or authorized person shall submit an application for temporary suspension of customs procedures to the Sub-department of Customs where the customs procedures are carried out for the goods shipment, including:
– Written request made under the form No.02-SHTT prescribed in the Circular 13/2015/TT-BTC;
– Legalized Power of Attorney from the applicant;
– Notarized copy of Protection Title(s);
– Description of genuine and possible imitation/counterfeit goods;
– Photos of genuine and possible imitation/counterfeit good;
– List of legal goods importer(s) and/or exporter(s);
– Mode of import and/or export;
– Information of forecast on when and where related shipment(s) going to be proceeded with Customs procedure;
– The IP assessment conclusion issued by the IP assessment authority; and
– A sum of money or guarantee certificate issued by a credit institution equal to 20% of the value of the goods shipment in the contract or at least VND 20 million if the value of the suspected infringing goods shipment is not identified to pay damage compensation and expenses as prescribed which may arise due to wrong request for temporary suspension of customs procedure.
Within 02 working hours from the time of receiving a legitimate application, the Customs authorities shall decide to temporarily suspend the customs procedures. The suspension decision shall be submitted directly or by registered mail as well as faxed immediately to involved organizations and individuals.
The term of suspension of customs procedures shall be 10 working days since the customs authorities issue a decision on temporary suspension of customs procedures. In case of the solicitation of assessment or expertise consultation from the State management agencies for intellectual property, customs authorities will continue the temporary suspension of customs procedures until receiving the results of the solicitation of expertise or expertise.
After the applicant submits the extension application and the guarantee amount of money or guarantee certificate, the Customs authorities which decides to temporarily suspend shall extend the time of temporary suspension and notify the applicant, the goods owners and the involved parties. The extended period shall not exceed 10 working days from the date of extension decision.
During the suspension period or the period when the preventive measure is applied, the Customs shall fulfill the following tasks:
– Requesting the owner of the goods consignment, the IP right holders to submit the documents relating the goods (catalogues, IP assessment conclusion, foreign documents, the results of handling similar cases etc.);
– Soliciting IP assessment at the IP assessment organizations or conferring with the IP management authorities for their expert opinion to determine signs of infringement of intellectual property;
– Requesting the organizations and individuals to take samples for soliciting IP assessment;
– Requesting additional assessment or re-assessment;
– Cooperating, discussing with the State management agencies on intellectual property when there are disputes, appeals about the right holder, protectability, IP protection scope, competence of administrative violation handling.