Understanding the procedure and time limit

for obtaining a trademark (brand name) in Vietnam in only 2 minutes

Email to: vinh@bross.vn

Definition

Trademark[1] is a sign (mark) used to distinguish the same kinds of goods or services of different organizations and individuals. Marks protected as trademarks must be visible ones in the form of letters, words, drawings, images, including three-dimension mark or a combination thereof embodied in one or more colors.

Not all applied-for marks are accepted for protection because there are about 30% out of more than 40,000 annually filed trademarks in Vietnam are rejected in whole or in part because they do not pass protection criteria prescribed by laws. See examples of 4 trademarks actually refused by the National Office of Intellectual Property of Vietnam (NOIP):

Requirements for trademark application

1. Eight (08) copies of the trademark intended to be protected (size must not exceed 8 x 8 cm)
2. One (01) original version of Power of Attorney (PoA) in favor of Bross & Partners. This PoA does neither need notarization nor legalization. Without a copy of PoA on filing is accepted provided its original copy must be submitted in 01 month from the filing date.
3. Name of goods, services and class under the Nice classification[2].

Procedure and timeline

Any trademark application shall be undergone 4 phases before being granted a certificate of registration:

1. Formal examination: classification of goods/services, PoA, required government fees, ect., relating to as-filed application will be examined within one (01) month before a decision on acceptance of legitimate application is released). Unless the Paris convention-based priority date is claimed, the filing date as shown on the decision shall become the priority date of the as-filed trademark.
2. Publication of application: applications will be subsequently published within 2 months on Official Gazette to be likeky opposed by third party.
3. Substantive examination: is conducted within nine (09) months from the date of publication. Whether both of two criteria for protection: (a) the applied-for mark is neither descriptive, deceptive nor deceptively misdesceptive, and (b) the applied-for mark is not likely to be confused with earlier trademark, are met or not shall be concluded before a notice of allowance together with a required grant fee is issued.
4. Grant of title of protection: It takes about 2-4 months from the date of payment of grant fee, a certificate of registration of trademark that is in force in a period of 10 years will be sent to the rightholder.

In theory, it only takes about 12 months to get a certificate of trademark registration if everything goes smooth. But in practice it may take 18 or 24 months to be received a registration. The reason for severe prolonged pendency explained by the NOIP is a huge volume of unexamined trademarks up to ten thousands coupled with understaffed status.

Two Recommendations

1. It is advisable to carefully research and select appropriate trademarks (brand names) in conformity with your business idea and field. You may refer to our article titled “9 best tips to help you successfully register your brand name in Vietnam” readable at the link: http://bross.vn/newsletter/ip-news-update/9-Best-Tips-and-Tricks-to-Help-You-Successfully-Register-Trademark-or-Brand-in-Vietnam;
2. You should hire an experienced and qualified trademark agent (eg. Bross & Partners). If possible, double check or search against registrability of a pontential brand name should be made before submitting a new trademark application in Vietnam.

Bross & Partners is very experienced in helping clients conduct trademark clearance search including legal opinion delivery on possible oppsotion or infringement by other 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.