For many businesses, their intangible assets (such as reputation, brands, ownership of technologies, inventions, designs…) are much more valuable than their tangible assets. The registration and legal protection of these intangible assets - therefore, are essential in firmly defending the position of businesses in the market and restricting the copying and imitation of competitors.
Here are our summaries for interested readers to get the basic and important legal guidelines for trademark registration and protection in Vietnam
1. Process of trademark registration in Vietnam
Applicant can choose one of the two following options:
(i) Apply directly at National Office of Intellectual Property of Vietnam (referred to as “NOIP”) or:
(ii) Apply an international registration application in accordance with the Madrid system designated to Vietnam (Details of this option shall be described in our coming article).
Should you choose to apply via NOIP, registration application shall go through the following stages:
(i) APPLICATION FILLING: submit declaration of trademark registration together with relevant documents (such as evidence claiming priority right, Power of attorney if filing through an industrial property representative). Upon receipt of the application, NOIP will affix a seal indicating that application is received, in which specifying the application number and filing date.
(ii) FORMAL EXAMINATION: Appraisers of NOIP's Registration Office will conduct a formal examination to determine whether the application satisfies formality requirements (such as applicant’s information, products/services classification, fees...). If yes, NOIP will issue a decision of accepting valid application; Or else, NOIP will issue a notice of formality ineligibility and a time-limit for applicant to respond. If the application still fail to meet required formality after amendment, an official refuse shall be issued. Duration of formal examination is 01 month from the date of filling the valid application.
(iii) PUBLICATION & SUBSTANTIVE EXAMINATION: After acceptance of valid application, the application will be published in the Industrial Property Official Gazette for 2 months from the date NOIP issues the decision. Passed this 2 months, the application will be transferred to NOIP Trademark Office’s appraisers for substantive examination. This is the decisive step determines whether the trademark is protected or not. This period usually lasts 12-14 months.
(iv) CERTIFICATE ISSUANCE OR REFUSAL: Should the application meets protection standards, NOIP will issue a fee payment notice for granting protection certificate and the applicant will receive an original Trademark Registration Certificate within 01 month from the date of payment. On the contrary, if the application does not meet protection conditions (for example, the trademark is incapable of distinguishing itself or identical or confusingly similar to trademark(s) previously filed by other applicants), a temporary refusal notice will be issued together with a time-limit for the applicant to decide whether or not to respond. If NOIP consider that applicant’s response/opinion is well-founded, the application will be protected; Otherwise, NOIP will issue a decision to officially refuse trademark registration.
(v) After the official refusal, in case applicants still wish to pursue the denied trademark, they may file a complaint against the above official refusal decision (first appeal). Complaints will be considered by the Complaint handling and enforcement Office of NOIP. After filing complaint, if the trademark application is still not accepted for protection and applicant still want to pursue the application, they can may to file a second complaint (second appeal) or file an administrative lawsuit against NOIP's decision.
2. What are the issues that applicants need to pay attention before registering trademark in Vietnam?
(i) The first issue is the list of products/services to be registered: Applicants need to identify which type of products/services trademark will be used for and in correspondence with the business lines in Enterprise Registration Certificate and Business/Operating license for conditional business lines. This will determine:
- Scope of trademark protection, registration possibility: trademark are only protected within the registered group of products/services. Which means even when a third-party register an identical or similar trademark in products/services group(s) that different to yours, NOIP will likely to grant protection for that third-party’s trademark.
- Application fees: based on quantity of the registered products/services group.
- Application processing time: If products/services that are not clearly described or too general in application form, and the appraisers do not have sufficient basis for accurate classification or misclassified, NOIP will issue a notice of formality ineligibility, which will prolong examination and cost extra fees for NOIP to classify products/services group.
Furthermore, NOIP is currently applying the NICE international classification list of products/services (“NICE”) which includes 34 product groups, 11 service groups. In respect of products/services that are not mentioned in NICE, its nature will be considered to classify into corresponding group.
(ii) The second issue is the mark. Mark could come in letters, images or combination of letters and images. Before submitting application, a preliminary search is necessary for assessment of protection possibility. According to Article 72 Law on intellectual property 2005, if a trademark is identical or confusingly similar to a previously filed trademark, NOIP will refuse. The trademark protection process shows that pursuing a trademark registration could be complicated, costly in terms of both time and money if unfortunately, it is denied, especially when products/services bear such trademark has been launched in the market. Therefore, to minimize risks, the preliminary search should be seriously conducted.
3. What are the issues that applicant need to pay attention after registration a trademark in Vietnam?
(i) If a trademark was registered and still in effect but have not been used for 05 consecutive years, any third-party shall be entitled to request NOIP to terminate that trademark registration.
(ii) 06 months before the expiry of trademark registration term, applicants need to file an application for trademark extension and pay extension fee in order to maintain rights in relation to the registered trademark.
All requests for consultancy on registration and protection of intellectual property rights, please contact us via email email@example.com or hotline +84 908 10 77 88.