Since Vietnam is a member state of such multilateral conventions regarding the protection of trademark as the Madrid Agreement concerning the International Registration of Marks (June 25, 1939) and the Protocol Relating to the Madrid Agreement (collectively known as “the Madrid system”), therefore, to obtain protection of a trademark in Vietnam, trademark holder may either file through national route or international route (the Madrid system), of course, applicants whose nationality or real and effective industrial or commercial establishment must belong to one of the Madrid system’s 91 member-states as of October 15, 2014. Below guidance merely relates to acquiring a registration of a trademark via national route.
Definition of Trademark
Trademarks, also known as marks, brands or brand names are signs used to distinguish products/services manufactured/provided by different persons/entities. Signs eligible for protectability as a trademark shall be visible ones in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors.
There are five types of marks, which are commonly regarded as traditional marks, protectable as a trademark under the 2005 IP Law revised in 2009 coming into effect as from July 1, 2006:
- Common mark: 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 or defensive 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 or famous mark: means a mark widely known by consumers throughout the Vietnamese territory.
Without prejudice to the above principle, some non-traditional marks namely, three-dimensional mark (3D mark) and trade dress may be still registrable for either goods or services on the implied condition that “look and feel” based visual or phonetic impression of those marks isdistinct and recognisable.For examples:
To be updated on the Vietnam perspective regarding the establishment and enforcement of exclusive rights over non-traditional marks in practice (e.g. 3-dimensional mark or shape mark), kindly click our analyses at the link:
Or access to the World Trademark Review at the link:
Criteria for Protection of a Trademark
No mark is granted protection where that mark is a sign prohibited from protection by Section 73 of the IP Law (also known as absolute refusal grounds), in particular:
- 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, sociopolitico-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.
No protection is also accorded where an applied-for mark falls into one of the following categories by Section 74.2 of the IP law (also commonly called relative refusal grounds):
- 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.
- 8 reproductions of the mark, maximum size 8x 8cm, minimum size 1.5 x 1.5cm;
- A Power of Attorney (PoA) simply signed by a person with legal authority to bind a juristic applicant. Neither notarization nor legalization is required. A faxed or scanned copy of PoA is accepted at the filing but the original shall be filed within 01 month from the filing date at no cost.
- List of Goods or Services pertaining to trademark under the 10th edition of the Nice Classification.
- A certified true copy of the basic application if a Paris Convention based priority is claimed.
Other notably relevant provisions
- A multi-class application is accepted;
- Official fee for each further item of goods or services from 7th one included in each class shall be surcharged at approximately 5.7USD;
- Neither Intent-to-use Declaration nor Declaration of Use is required as a prerequisite for obtaining a certificate of trademark registration;
- Proposed marks merely constituted by foreign words/scripts other than Vietnamese, Latin or English characters, e.g. Chinese, Russian, Thai languages, etc. are frequently rejected by NOIP due to lack of distinctiveness.
Timeline for Obtaining a Certificate of Trademark Registration
Where application for registration of a mark goes smooth, it takes about 13-14 months counting from the filing date to receive a certificate of registration.
- Formality examination: fundamentally checking classification of goods/service in 01 month from filing date before NOIP issues its decision on formality acceptance of application;
- Application Publication: Applied-for mark upon formality acceptance shall be published on the IP Gazette in a period of 02 months counting from the date of decision for the purpose of possible opposition by third party;
- Substantive Examination: absolute refusal and relative refusal based examination are simultaneously conducted by NOIP in 9 months commencing from the gazetted date;
- Statement of Grant of Protection: official fee for grant of certificate indicated therein shall be paid by the applicant within 30 days and it normally takes 30 days to receive original certificate.
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.
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. It is noted that no proof of use relating to registered mark is required at the time of renewal. 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.