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9 Best Tips and Tricks to Help You Successfully Register Trademark or Brand in Vietnam
(Ngày đăng: 2019-03-28)

Email to: vinh@bross.vn; contact@bross.vn

 

Trademark data in Vietnam may have reached nearly a half million records, it is thus clear that the opportunity to successfully register new trademarks or brand names in Vietnam will likely become more difficult, especially for new businesses (start-ups) those who are preparing to enter the market. According to some unofficial sources, the proportion of trademarks or brands rejected protection in whole or in part tends to increase, which can even account for about 30% of the total of over 40,000 annually filed applications, of which applications originating from the Madrid system merely account for about 20%[1].

 

The reasons for refusal of protection are a bit abundant, particularly it may be any of refusal ground set out at Sections 73 and 74 of the IP Law, and among other things[2]. In summary, in order to be protected, all applied-for marks must basically pass a two-step test, or two-step legal standards, namely:

 

  1. An applied-for mark must be inherent distinctive. A test for checking inherent distinctiveness is the first mandatory legal standard to assess whether the mark applied for registration is considered to have a trademark function (distinctive character). In other word, a mark seeking protection would be deemed devoid of distinctive character if it is merely descriptive of utility, function, composition, nature or other attributes of goods or services; and
  2. An applied-for mark must not conflict with others’ earlier rights. A conflict finding means determining whether the second legal standard is satisfactory, meaning it requires to find likelihood of confusion between applied-for mark and other earlier filed/registered trademarks/brands.

 

With more than 10 years of experience providing high-quality intellectual property services to clients all over the world, Bross & Partners is pleased to share 9 leading tips or tricks to help you choose and successfully register trademarks/brands in the market of Vietnam market:

 

  1. Filing an application for registration of a trademark/brand as soon as possible. It is best to apply as soon as possible, even though you have not yet done business. Hesitating or waiting for until your product is sold or displayed may result in your loss of brand/trademark because Vietnam applies first-to-file rule for establishing trademark rights, a rule resembles mechanism for registration of a domain name. For example the brand X-Men was actually not filed/registered by Marvel Characters, Inc. in Vietnam designating cosmetics or shampoo (class 03) while a Vietnamese company, International Household Product Manufacturing Joint Stock Company (ICP) applied for registration trademark X-Men pertaining to the same product, leading to the 7-year dispute wherein Marvel Characters Inc., tried to invoke many other legal grounds such as infringement of well-known trademark, copyright (figures and characters subject to other’s copyrighted material) but was eventually dismissed by the court[3]

 

  1. Geographical name used as a trademark/brand should be restricted. A new trademark or brand should be checked whether or not it is a geographical name (geographical locality) because a trademark applied for that is merely geographical descriptive or that its element is geographical place or geographical name is regularly rejected due to violation with Section 73(5) of the IP Law, namely, those signs (geographical names) are deemed as misleading, misunderstanding, or even deceptive as to origin of products. For example: applied-for marks Hà Lan (English translation as the Netherlands or Holland), or Tara were all refused protection as trademarks since they are other country’s name, or geographical name of foreign territories.[4]

 

  1. Naming trademark or brand in logographic system or non-Latin languages should be avoided. Trademarks or brands are merely, or maily constituted by, non-Latin languages, or logographic writing, or little-known foreign characters or foreign writings such as Thai, Chinese, Korean, Japanese, etc., are all almost denied protection by the National Office of Intellectual Property (NOIP) as they are unable to be readable, memorizable and perceivable by Vietnamese consumers. For example: an applied-for mark “科琼” filed along with transliteration explaining the first Chinese character means “science” and the second is “fine jade" was still objected protection by virtue of Section 74(2)(a). Where unavoidable, you should include a Latin transliteration (or Romanization of Chinese) to inside that applied-for mark to create a new mark before submitting for registration.

 

  1. If possible, keep away from naming and registering trademark/brand consisted exclusively of one or two alphabetical letters. The reasons are that 1-letter or 2-letter marks would be ex officio determined by the NOIP as inherently indistinguishable, except where they can be read as one word (ie. AP), or they have acquired distinctiveness through extensive use or secondary meaning over time (ie. the brand GS by GS Yuasa Corporation used for automobile and motorcycle batteries). If being merely expressed in the form of simple letters, applied-for marks such as A, GS, T&T are all certainly considered as devoid of trademark function.

 

  1. You should carefully consider choosing trademark/brand that has been popularily viewed in the market. The reasons are that it is very difficult for you to prove your trademark is distinctive enough from a great deal of earlier cited marks used by the NOIP as refusal ground on the one hand, it is not easy for your brand/trademark to be memorized in the public mind by reason of lack of strong impression on the other hand. For instance, both the IPLIB http://iplib.noip.gov.vn/WebUI/WSearch.php (administered by the NOIP) and the WIPO monitor https://www.wipo.int/madrid/monitor/en/index.jsp show that there are nearly 250 trademarks sought for protection contain the elements “stars” pertaining to food commodity in class 30 in Vietnam.

 

  1. Descriptive or suggestive content between brand/trademark and products bearing it should be thoroughly taken into consideration. Where your intended brand/trademark is highly suggestive or descriptive of function, nature or characteristics of goods/services, and you do not want to change or cancel seeking protection (ie. by reason of marketing objective or purpose), it is best to combine it with another visible sign (ie. unique logo or device), or attempt to revised it as shortened form or misspelled words, for instance, the totally descriptive phrase "well yogurt" can be registrable as trademark if it is reworded as WELLYO.

 

  1. Carefully choose brand name/trademark too long or complicated. A brand name/trademark that is too long or difficult to pronounce would be hard recognized and read because Vietnamese consumers can mostly remember only Vietnamese or Latin brands/trademarks with a simple structure and easy-to-read. For example: Allergan's brand name for neuropathy medicince, Botox Botulum Toxin Type A Purifield Neurotoxin Complex (even though it is arranged in 3 lines), is still considered too long, or Schwarzkopf used for cosmetics is regarded too difficult to read.

 

  1. Caution with brand name/trademark meaning negative or delivering descriptive attribute of goods/service in any other languages other than Vietnamese. A brand name/trademark, in spite of being likely deemed as merely descriptive in foreign language, may still be registered as long as the NOIP’s examiner (trademark attorney) has not yet found evidence to deny it. However, upon grant of protection, such registered trademark may be cancelled due to its descriptive meaning, this shows Vietnam appears to follow the doctrine of foreign equivalents. Ex: Cotto was partially canceled with respect to sanitary ware made of ceramics because the term Cotto in Italian means burnt, cooked or fired (brick).

 

  1. Do not miss out your slogan or tagline as a fully protected trademark/brand. Slogans or taglines used in commerce may be still a good brand/trademark as long as it is not too descriptive (as little as possible) in respect of the characteristics of goods/services it is used for. For example: Just Do It, Ngọn Lửa Của Niềm Tin (a Flame of Faith) by PVI, Nâng Nui Bàn Chân Việt by Biti’s are slogans with trademark functions.

 

Should you have particular question, feel free to contact us at vinh@bross.vn or cellphone 84-903 287 057.

 

Bross & Partners, a renowned intellectual property law firm founded in 2008, regularly ranked/recommended as one of the Vietnam's leading intellectual property law firms by the reputable legal guides such as the Managing Intellectual Property (MIP), Jetro, World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). Bross & Partners has had intensive expertise and extensive experience enabling it to assist clients to effectively protect or defense in complex intellectual property disputes regarding trademark, copyright, related rights, patent, design and domain name in Vietnam and abroad.

 


[1] The trademark database filed or registered in Vietnam includes national trademark database (available from http://iplib.noip.gov.vn/WebUI/WSearch.php ) and internationally registered trademark database through the Madird system designating or expanding territory into Vietnam (see link: https://www.wipo.int/madrid/monitor/en/index.jsp ). Number of nationally registered trademarks accumulated as of May 2017 is about 280,000 while number of valid international registrations/territorial expansion in Vietnam is more than 108,000.

[2] Section 73. Signs ineligible for protection as marks

The following signs shall be ineligible for protection as marks:

1. Signs identical with or confusingly similar to national flags or national emblems.

2. 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.

3. 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.

4. 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.

5. 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

Section 74. Distinctiveness of marks

1. A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of this article.

2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

(a) 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;

(b) 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;

(c) 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;

(d) Signs describing the legal status and business sector of business entities;

(dd) 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;

(e) 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;

(g) 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;

(h) 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;

(i) 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;

(k) 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;

(l) 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;

(m) 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;

(n) 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.

 

 

 

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