Frequently asked Questions for Trademark in Vietnam | Frequently asked Questions for Trademark in Vietnam 1053

Question 1: What conventions, Multilateral or Bilateral agreements are pertinent to the protection of trade identities in your jurisdiction?

Our answer: Currently, Vietnam is a member state of such multilateral conventions regarding the protection of trade identities as the Madrid Agreement concerning the International Registration of Marks (June 25, 1939), the Paris Convention (March 8, 1949), the Protocol Relating to the Madrid Agreement, and Agreement on trade-related aspects of intellectual property rights (TRIPs Agreement).

In respect of intellectual property-related bilateral cooperation, Vietnam already entered into bilateral agreements with United States, Japan and Swiss Federal, i.e. Agreement between the United States of America and Vietnam on Trade Relations (2001), Agreement between Japan and Viet Nam for an Economic Partnership (December 25, 2008), Agreement between the Government of the Socialist Republic of Vietnam and the Swiss Federal Council on the Protection of Intellectual Property and on Co-operation in the Field of Intellectual Property

Therefore, to obtain protection of a mark in Vietnam, trademark holder may either file through national routine or international routine (Madrid system), of course, applicants whose nationality or a real and effective industrial or commercial establishment must belong to one of Madrid system’s 91 member-states.

Question 1a: What national legislation is pertinent to the protection of trade identities in your jurisdiction?

Our answer: The Law on Intellectual Property of 2005 as amended in 2009 coming into effect from July 1, 2006, the 2005 Civil Code (Part Six and Part Seven) becoming effective as from January 1, 2006 and the Penal Code of 1999 as revised in 2009 are the most important acts providing for the protection, inter alia, of trademark.

Essentially, Vietnam merely accepts to protect visible marks, whose criteria of protection are specified in Article 72, 73 and 74 of the IP Law. In Article 72, a mark is eligible for protection when it is (i) a visible sign in the form of letters, words, drawings or images, including holograms and three dimensions or a combination thereof, represented in one or more colors, and (ii) is capable of distinguishing goods or services of the mark owner from those of other subjects.

The IP law also provides for the protection of geographical indications, whose exclusive right is established on the basis of a title of protection issued by the National Office of Intellectual Property of Vietnam (NOIP). Right to a tradename (business name) may be obtained through use in commerce without registration. Furthermore, the IP law also stipulates measures for preventing the acts of taking advantages of first-to-file principle to establish other’s trademarks that are either widely-used and recognized or famous in Vietnam

Question 2: Is your jurisdiction a first-to-use jurisdiction or a first-to-register jurisdiction?

Our answer: First-to-file principle (also known as “first-to-register”) is now applied by Vietnam. Nonetheless, in a particularly limited cases, first-to-use may be used, for example, protection of a famous trademark without registration, enforcement of first-to-use-based measures against unfair competition acts in respect of unregistered trade identities namely widely-used trademark, tradename or product package design, etc.

Question 2a: Please describe the rights afforded by use and separately by registration in your jurisdiction.

Our answer: In accordance with its first-to-file principle, Vietnam sets out in Article 6 of the IP Law that industrial property rights, among others, over trademark shall be generated and established only on the basis of a decision of the competent State body to grant a protection title or the recognition of international registration pursuant to an international treaty of which Vietnam is a member. For the reason, rights afforded for a mark by a particular registration certificate will establish scope of protection of that mark enjoyed by registrant.

However, for a well-known mark, industrial property rights shall be established on the basis of use without depending on registration procedure thereof. Similarly, according the international practice and norm, for a tradename, its industrial property rights are established on the basis of its lawful use in commerce without registration.

Regardless of Vietnam’s application of first-to-file principle, kindly note that industrial property rights over unregistered mark or trade identities or business indications namely trade dress, slogan, commodity package design, etc., in some limited cases may be protected and enforced by Vietnam as if they have been registered in the form of trademark or industrial design. Vietnam’s exceptional provisions promulgated are to comply with the Paris Convention’s provisions on preventing industrial property right-related unfair competition acts

Yet the burden of proof of well-known mark or tradename or unfair competition act of unregistered mark or other unregistered business indications belongs to the holders of these subjects.

Question 3: What types of marks are registrable in your jurisdiction, (e.g., trade marks, service marks, collective marks, certification marks)?

Our answer: There are five types of mark registrable in Vietnam including:

Trademark including service mark means any sign used to distinguish goods and/or services of different organizations or individuals.
Collective mark: means a mark used to distinguish goods and/or services of members from those of non-members of an organization which is the owner of such mark.
Certification mark: means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods and/or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods and/or services bearing the mark.
Associated mark: means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated.
Well-known mark: means a mark widely known by consumers throughout the Vietnamese territory.

Apart from the above registrable categories of trademark also commonly known as traditional marks, non-traditional marks such as 3-dimensional mark, shape mark, trade dress may be protected. To be updated on the Vietnam perspective regarding the establishment and enforcement of exclusive rights over non-traditional marks in practice, kindly further find useful information at the link:
http://bross.vn/publication--news/news/The-challenges-of-breaking-with-tradition

or access to the World Trademark Review at the link:
http://www.worldtrademarkreview.com/Magazine/Issue/46/Country-correspondents/Vietnam-Bross-Partners

Question 4: Are there any marks prohibited from registration (e.g. flags, symbols) in your jurisdiction?

Our answer: Yes, there are. Please see our detailed analyses in Q9 below.

Question 5: Who is the proper applicant for registration?

Our answer: Anybody including organizations or individuals shall have the right to register marks to be used for goods they produce or services they provide in Vietnam.

For those have not their business presence in Vietnam, an application for registration of a mark is mandatory to submit through a trademark agent registered before NOIP.

Question 5a: Can a partnership, individual, other legal body or non-legal body file and hold trade mark rights?

Our answer: Yes.

Question 6: Is your jurisdiction a member of the Nice Classification?

Our answer: No. However, the Nice Classification including its latest revised version – the 10th edition thereof, is now applied by Vietnam for the purpose of registration of marks

Question 7: Please list the documents required for filing a trade mark application.

Our answer: For filing a trademark application in Vietnam, the following minimum documents are required:

08 reproductions of the mark;
A Power of Attorney (PoA) simply signed by a legal representative of the applicant. No notarization or legalization is required. A faxed copy of PoA is accepted at the filing but the original shall be filed within 01 month from the filing date;
Class/List of Goods or Services pertaining to mark.
A receipt of payment of filing fee

Question 8: Please describe whether your jurisdiction is an examination jurisdiction and if so, please describe the kind of examination, i.e. for formalities, for relative rights or for absolute rights.

Our answer: As provided by the IP Law, an applied-for mark must be examined as to both absolute refusal and relative refusal and it shall be examined as to formality (e.g., applicant’s information, classification, payment of fees) and substance (e.g., inherent distinctiveness of the mark, whether it is identical with or confusingly similar to the prior trademarks). It takes about one month for formality clearance and 9- 12 months for substantial examination.

Question 9: Please describe any marks which are not registrable according to your legislation (e.g., geographical terms, foreign words, surnames, etc.).

Our answer: According to the laws and practice, a mark merely containing or partially containing geographical terms is frequently rejected because of likely causing deception or misunderstanding as to source of goods/services bearing that mark. Nevertheless, if a geographical term-based mark attaching to the goods/services that has been either acquired secondary meaning through use, or perceived by consumer to be different meaning (e.g. although Thai Binh is the name of a province in the North of Vietnam, it is still regarded eligible for registration as a trademark because it is commonly associated by consumers to equally mean “Peace” in both Vietnamese and English). In other popular cases, a mark containing a geographical name that is lower than district level, except for where such district-level-lower geographical name is widely known in terms of goods/services identical with or confusingly similar with those bearing applied-for mark, may be protected without requirement that goods/services bearing that mark truly originate from that geographical location.

It is also noted that a mark constituted by foreign words other than Latin, English characters, e.g. Chinese, Russian, Thai languages, etc. can be refused except for where its transliteration, as a part of that mark, is added thereto. Whereas a mark consisted of surname can be still registrable unless there is apparent evidence proving that such surname is lack of distinctiveness.

Like almost other countries’ trademark laws in the world, Vietnam examines a mark based on both absolute and relative refusal grounds, which are set out in Articles 73 and 74 of the IP Law respectively.

Relative refusal grounds found under the laws of Vietnam comprise, inter alia, such situations as an applied-for mark is identical or confusingly similar with other person’s earlier pending or registered mark which has been filed or registered for identical or similar goods/services, or that mark is deemed generic, or that mark is 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, or such mark is 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.

Absolute refusal grounds shall be applied for a mark seeking for protection that is basically deemed not self-distinctive belonging to one the following group:

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.

Question 10: Does your jurisdiction have an opposition procedure?

Our answer: Yes.

Question 10a: Please describe the opposition procedure, including the bases for filing an opposition and also the opposition term, whether there is a possibility for extension for filing an opposition. Can oppositions be suspended?

Our answer: Unlike other jurisdictions’ prescribed time-limit for a trademark opposition that is normally relatively short, e.g. typically within a period of 30 days or 60 days, under the current laws of Vietnam, such time-limit is very long, i.e. as from the date an application for registration of a trademark is published in the Official Gazette of Industrial Property up until prior to the date of issuance of a decision granting a protection title, any organization or individual shall have the right to oppose an applied-for mark before NOIP.

As far as international registrations of marks designating Vietnam is concerned, it is noted that at present, re-publication of those marks has not been available in Vietnam, however, from our own experience, a time-limit for opposition submission is deemed to start from the date of WIPO Gazette until prior to the date on which Vietnam, as a designated country, must notify WIPO of its refusal or its statement of grant of protection.

An opposition by third party shall be deemed to be an information source during the process of examining applications for registration of that mark.

NOIP shall, within the time-limit of one month from the date of receipt of a written opposition by a third party, notify such opposition to the applicant and fix a further time of a maximum of one month for the applicant to provide its opinion in reply.

Upon receipt of the counterstatement in reply from the applicant, and if NOIP considers it necessary, NOIP shall notify the counterstatement by the applicant to the third party and fix a further time of a maximum of one month from the date of that notice for the third party so that the latter provides its additional opposition in reply [second opposition].

NOIP shall review the opinions of both the third party and the applicant on the basis of the evidence and arguments provided by those parties and on the basis of the data in the application. In the event that NOIP considers that the opinion of the third party is unfounded, it need not notify such opinion to the applicant, but must notify the third party that it refuses to consider the opinion of the third party and must specify its reasons.

In case that the opinion of the third party relates to the entitlement for registering a mark, and if NOIP is unable to confirm whether or not such opinion is founded or unfounded, NOIP shall notify the third party to institute court proceedings to resolve the matter.

If within a time-limit of one month from the date of such notice, the third party does not notify NOIP that the third party has instituted court proceedings, and then the opinion of the third party shall be deemed to have been withdrawn. If NOIP is in fact notified by the third party that the latter has instituted court proceedings, NOIP shall suspend examining the application to await resolution of the dispute by the court. After receipt of the court’s decision, the examination of the application shall continue in conformity with the court decision.

On the case by case basis, NOIP may, if it considers it necessary and if the parties so request, organize direct discussions between the third party and the applicant in order to clarify the matters raised in their opinions.

The time taken for the applicant to provide an opinion in reply to the opinion of the third party shall not be included in the time-limit stipulated for NOIP to conduct the relevant procedures.

Apart from the situation that an application of registration of trademark may be most popularly challenged in an opposition proceeding by third party because it either is a likelihood of confusion with a prior pending or registered mark, or is merely descriptive, non-distinctive as a trademark, Vietnam also allows third party to oppose a trademark application by use-based rights of unregistered mark even though Vietnam applies the first-to-file principle. Particularly, an third party may defeat applicant’s application for registration of a mark if the former substantiates that he has established his use-based rights of unregistered mark under one of the following grounds: (a) unregistered mark is a well-known mark within the definition of Article 75 of the Vietnam Law on IP; or (b) unregistered mark is a widely-used one before the filing date of the opposed mark; or (c) the applicant is dishonest in applying for registration (also known as bad faith act provided in the Paris Convention)

Question 11: Please describe any documents which are required to place an opposition on file.

Our answer: For filling an opposition against a trademark application, the following documents are required:

A written request for opposition submitted timely therein containing information relating to opposed mark, legal basics and arguments in support of the opposition.
A simply signed Power of Attorney in favour of a registered trademark agent. Neither notarization nor legalization of Power of Attorney is required
A receipt of payment of opposition fee.

Question 12: Is it possible to file cancellation proceedings in your jurisdiction?

Our answer: Yes.

Question 13a: If so, please set out the procedure, including who has standing to cancel and the bases of cancellation.

Our answer: Under the laws of Vietnam, there are two different procedures that may make the validity of a registered mark be terminated. As the first one, validity of a registered mark may be terminated as of the time of which decision of termination takes effective as provided in Article 95 of the IP Law in the following cases:

The owner fails to pay the stipulated validity maintenance;
The owner declares relinquishment of the industrial property rights;
The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;
The mark 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.

Secondly, where a cancellation decision comes into effect, validity of a cancelled mark should have been deemed null and void at the time of granting. According to Article 96 of the IP Law, a registered mark may be cancelled partly or wholly in one of the following cases:

The applicant for registration has neither had nor been assigned the right to register that mark; or
That registered mark failed to satisfy the protection conditions at the time the protection title thereof was granted.

No provisions that are mentioned in the IP Law are implied that organization or individual who requests the State administrative body for industrial property rights to invalidate or cancel a protection title shall prove his/her legal interest relating to the mark subject to proposed cancellation or invalidation actions, thus, it is understood that any organization or individual has the right to challenge validity of a registered mark.

As a special attention, for taking a cancellation or invalidation of a registered mark, statute of limitations shall be five (5) years from the granting date, except where the protection title was granted as a result of dishonesty (bad faith) of the applicant.

In the proceedings of cancellation and invalidation actions, NOIP is initial competent body to receive, settle and adjudicate the dispute. If dissatisfied by the parties, the case may be either reviewed by NOIP’s upper body, i.e. Minister of Science and Technology or heard by a competent court depending on the request made by either party.

Question 14: What is the term of a registration and can a registration be renowned early without shortening the terms of registration?

Our answer: Term of protection of a registration of a trademark is 10 years, calculated from the filing date. Renewal may be conducted within six months prior to the expiry date of the registration. There is no provision on submitting a request for premature renewal, however, from our owner experience, a premature renewal request, e.g. 01 year before the due date, may be accepted by NOIP without shortening the term of the registration.

Question 15.: Please describe the renewal requirements for renewing a registration setting out the procedure.

Our answer: For the purpose of recording a renewal of a trademark registration, the below documents are required to submit with NOIP on filing:

A written request for renewal;
An original copy of certificate of trademark registration if the registrant wants next due date to be recorded thereon. However, photocopied one may be accepted if no endorsement of renewal thereof is required
A simply signed Power of Attorney in favour of a registered trademark agent. Neither notarization nor legalization of Power of Attorney is required
A receipt of payment of renewal.

Although it takes about 2 months for completion of a renewal, it may practically take 4-6 months to receive renewed certificate due to NOIP’s backlog time to time.

Question 15a: Is proof of use of the mark required to be filed on renewal?

Our answer: No.

Question 15b: Is it possible to file later renewal?

Our answer: Yes. It is possible to file a request for late renewal in a grace period, i.e. no later than six months after the expiry date of the registration against payment of a surcharge.

Question 16: What are the requirements for maintenance of a registration in your country? That is, is it necessary during the life of a registration, to file any proof of use to maintain the registration?

Our answer: Not required. Nevertheless, as provided by the laws, registrant of a registered mark is required to put his/her trademark into use in commerce, otherwise such mark may be vulnerable to invalidation by third party’s 5-year consecutive non-use-based validity termination action against such mark.

Kindly note that in the proceeding of invalidation, the burden of proof of 5-year consecutive non-use belongs to third party. If no substantiated counterstatement along with valid evidence is made by registrant, the mark in question shall be deemed non-used and its validity shall be terminated as from the date on which NOIP’s decision on invalidation of a trademark registration takes effective

Question 16a: Are there marking requirements for your jurisdiction?

Our answer: Yes. Indication ® attached to the mark shall be used only when that mark has been registered, otherwise an administrative fine against non-compliance act shall be applied. In case of a trademark license agreement, mark licensees shall be obliged to indicate on goods and goods packages that such goods have been manufactured under mark licence contracts.

Question 17: Please describe the procedure for the proper licensing of trade marks.

Our answer: Trademark licensing agreements are contracts entered into by the licensor with one or more licensees. License agreements must be written and must contain major required terms and conditions as follows:

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.

Under the laws of Vietnam, a trademark license contract shall be valid as agreed upon by the parties involved but shall be legally effective as against a third party upon registration with NOIP.

Recommendation: if a registered mark is or will be used by someone other than the registered proprietor, such as a subsidiary or any other, a trademark license agreement should be entered into and registered with NOIP for the purpose of maintaining validity of such registered mark against third party’s possible invalidation actions.