Protection of Certification Trademark in Vietnam and

New Legal Requirements for Registering Certification Mark You Should Know

Email:vinh@bross.vn

(Source: WIPO Statistics Database, September 2017)

Legal Nature of Certification Trademark

According to the WIPO’s statistics indicated in the above diagram, while China is the global champion in terms of the amount of certification trademark applications filed with 804 applications, although only 40 certification mark applications Vietnam remains ranked as the 14^th in the top 20 countries having highest numbers of certification trademark applications in the world.

Certification marks are different from collective marks and ordinary trademarks in the following legal characteristics:

1. 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:
2. Certification mark may be identified through practical examples of registered certification marks in Vietnam wherein included 2 registered certification marks “Hanoi AGRI Cert & device” successfully represented by Bross & Partners:

3. Identification characteristics of certification marks compared with collective mark

Important legal changes relating to requirements for certification mark registration in Vietnam

Legal information about certification mark in the Vietnam Intellectual Property Law is quite general, in addition to the definition defining the legal nature of a trademark certifying that the trademark owner allows an organization or individual to other used for goods and services for the purpose of certifying that goods or services conform to standards on characteristics, raw materials, materials, quality, safety, etc[2].

To understand the conditions for protection, how to prepare required documents based on the important legal changes related to certification marks, you need to pay attention to the first and very important principle in Clause 4, Article 19, Decree 103/2006/ND-CP is amended by Decree 122/2010/ND-CP (hereinafter referred to as "Decree 106/2006 as revised") stipulating that a certification mark that is composed of, or originates from, geographical name then when applying for registration, it is required to get the Chairman of Provincial People's Committee approved in writting.

The most specific guidelines for certification mark are available in Circular 01/2007/TT-BKHCN dated September 22, 2006 that was amended 4 times in which latest revision is Circular 06/2016/TT-BKHCN (hereinafter referred to as "Circular 01/2007 as amended").

In addition to the minimum required documents when seeking protection of an ordinary trademark such as reproduction of mark, request, fees, etc., a certification trademark registration dosier requires four additional types of documents:

1. Regulation of using certification mark

2. A description of characteristics (or speciality), quality of the branded product (if an applied-for mark is the certification mark claiming its special quality-based products, or certifying geographical origin)

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)

4. A written document issued by the provincial People's Committee permitting the use of geographical names or other signs indicating the geographical origin of local specialties to register as a certification mark.

As far as the documents proving the standing of filing application is concerned, because the law stipulates that only organization that has the function of controlling, certifying quality, characteristics, origin or other standards related to goods and services is entitled to register certification mark provided that he/she does not manufacture or produce goods, services bearing such certification mark[3]. Accordingly, individual or person cannot be potential applicants for certification mark. In practice, to our best understanding, qualified organizations that are deemed to have sufficient ability for controlling quality, characteristics of goods and services bearing the certification mark can be a State-agency with general authority in charge of sector involved in the speciality (eg. District People's Committee of Yen The, Bac Giang province recorded as the rightholder of certification mark Yen The Hill Chicken & device/Reg. 170039), or can be non-profit organization like Binh Thuan dragon fruit Association recorded as a registrant of  Binh Thuan dragon fruit & device/Reg. 156844.

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.