A Primer on Trademarks in Vietnam

Lawyer Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

What is a trademark?

Trademarks (“brand names” regularly referred to by consumers) are signs used to distinguish products of the same kind from competing businesses. For example, “Samsung Galaxy S10” and “Apple iPhone 11” both refer to smartphones and are perfectly distinguishable from each other.

Marks (signs) used as trademarks can include both sound marks and visible marks, for example, visible signs include letters, words, drawings, images, 3-dimensional product configuration (3D marks) or a combination thereof embodied in black and white or color. For instance, the following 4 types of signs are now protected as trademarks in Vietnam.

Why must register a trademark?

• Not registering a trademark or late registering a trademark late can lead to your business being susceptible to legal risks such as being forced to remove business signs, recalling products, or being threatened with lawsuits for compensation by competitors holding a pre-registered similar trademark. For example, the verdict 32/2015/KDTM-ST dated July 17, 2015 of the Hanoi People's Court held that the defendant is ordered to pay damages of 2,230,595,000 VND (roughly $100,000) due to using the mark XEXtra on pharmaceutical products that has infringed the plaintiff's exclusive right to use the registered trademark SEFTRA.
• When being copycatted a brand name, an enterprise that is operating under that brand name basically cannot prohibit or claim for compensation for using product brand names identical with or similar to, his/her brand name, unless his/her brand name had been granted a trademark registration by the VNIPO. The reason is that Vietnam only recognizes the right to exclusive use a trademark upon grant of protection.

What benefits does trademark registration bring?

• Enterprises that own registered trademarks have the right to prohibit others from using identical/similar trademarks designated for competing goods or services.
• A registrant of a registered trademark is secure in production and business, can avoid legal risks, namely being threatened or suing for trademark infringement by competitots.
• A registered trademark is protected for 10 years and renewable after every 10 years.

Conditions for Trademark Protection

Not all signs are accepted for registration as trademarks. To be protected, a mark must satisfy both conditions:

• It must be inherently distinctive, that is, it is not descriptive or deceptive of ingredient, usage, function, or other characteristics of goods or services). Eg. ST25 used for rice and Nano used for water purifiers, both of which are descriptive, lacking inherent distinctiveness.
• It must also not conflict with the other’s prior rights, eg., no likelihood of confusion with other’s earlier registered trademark. For example: an applied-for mark Neo Nestle is confusingly similar to a registered trademark NESTLÉ and both marks are used for milk product.

Brand Names Should Avoid

To save cost and time, you should immediately delete applied-for marks that are merely descriptive of functions, uses, characteristics with respect to goods or service, or primarily geographically descriptive, or generic term. Eg., the following marks were totally rejected by the VNIPO:

How is a Trademark Application Examined?

According to the 5-step examination process described below, it statutorily takes about 12-13 months, if neither refusal grounds are found nor opposition is submitted by third party, from the filing date until receiving a trademark registation certificate. However, the pendency may prolong depending on the VNIPO’s overload time to time:

• Step 1 – filing an application: an applied-for mark lodged to VNIPO will be assigned an application number and filing date.
• Step 2 - formality examination: a decision on formality acceptance is issued in 1 month from the filing date.
• Step 3 - publication of application: a formally accepted application is published in the Gazette (Volume A) within 2 months from the date of the decision.
• Step 4 – substantive examination: both conditions “inherent distinctiveness” and “no likelihood of confusion” are examined by the VNIPO in 9 months from the month of application publication before a notice of grant along with the grant fee to be paid in 3 months is released by the VNIPO.
• Step 5 – grant of certificate: a trademark registration will be issued within about 1 month after the grant fee has been made by the applicant.

Requirement for Filing and Cost

Bross & Partners shal advise and quote relevant cost upon receipt of three types of documents:

• Name and address of the applicant.
• Trademark or brand name to be registered.
• List of goods or services bearing trademark.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has rich experience in registering trademark and resolving complicated IP disputes in Vietnam.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.