How to Overcome the IP Vietnam’s Provisional

Refusal of the Madrid-based Certification Mark

Email: vinh@bross.vn

(Vietnam ranked as the 14^th in the top 20 countries having highest numbers of certification trademark applications in the world. Source: WIPO Statistics Database, September 2017)

Certification Trademark under the Vietnam IP Law

A certification mark is not and cannot also be used by its owner in a way to distinguish goods, services but only granted to be used by any other organization or individual other than the right holder on the condition these entities or persons have met, complied with certain conditions of origin, raw materials, materials, manufacturing methods, safety or other characteristics specified by the rightholder of certification mark.

Certification mark may be identified through practical examples of registered certification marks in Vietnam as below, wherein 2 certification marks “Hanoi AGRI Cert & device” were successfully represented by Bross & Partners:

When does Vietnam Issue Provisional Refusal of Madrid-based Certication Mark Application and How to Surmount It?

As you may be aware that the Madrid system is only compatible with ordinary trademarks but not friendly to certification trademark. It means that you cannot provide a complete set of required documents regarding certification mark including the required regulation on use of certification mark. Accordingly, you is obliged to wait for receipt of the Intellectual Property of Vietnam (“VNIPO”) provisional refusal of international application for certification mark before you seek and appoint a Vietnamese trademark local agent to respond to the refusal in a period of 3 months.

Provided by the laws, you should prepare and submit the followings with the VNIPO:

(1) Regulation of use of certification mark

(2) A description of characteristics (speciality), quality of the certified goods/services

(3) Geographical area map showing the geographical origin (if an applied-for mark is the certification mark certifying geographical origin of the product, or testifying a certification mark containing a geographical name or other sign indicating the geographical origin of local specialties)

With respect to the Regulation on the use of certification mark, special attention needs to be paid to the following 6 contents:

1. Brief information about a certification mark, owner of certification mark, goods and services bearing the certification mark;
2. Conditions for being granted the right to use of certification mark as well as conditions for ceasing such right;
3. Obligations of certification mark users (quality assurance, specific characteristics of goods or services bearing the mark, bound to be under the control of quality by the owner, required payment of certification mark management or use fees);
4. Rights of certification mark registrant (to control compliance with the regulations on use of certification mark, collection of required fees or roaylties, suspension of the right to use certification marks against any person or organization which do not satisfy the required conditions imposed by the regulation on the use of certification mark);
5. Mechanism for licensing, controlling and inspecting the use of certification mark and ensuring the quality and reputation of certified goods or services;
6. Dispute settlement mechanism related to the exploitation and use of certification.

Bross & Partners has had experience in advising and successfully registered certification marks and collective marks in Vietnam. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.