Frequently Asked Questions – Trademark- Part 2

5.   WHO HAS A RIGHT OF REGISTRATION

Organizations or individuals producing and dealing their goods, services, for example limited company, joint stock company, joint venture company, private enterprise, business household;

Collective organization organized legally has a right to register Marks to allow its members to use in accordance with the regulation on collective Mark. For example: Co-operative, Famer Association, Association, or a group of 2 or more enterprises;

Organization having a function of quality control, characteristics, origin of goods has a right to register Marks provided that it does not produce or provide those goods, services. For example: International Standard Organization (ISO), Vietnam Certification Centre (QUACERT), Vietnam Tea Association;

Foreign Individuals, organizations proceed to register TradeMark by authorizing an Industrial Property Agent in Vietnam.

6.  WHY IS IT NECESSARY TO DO SEARCH TRADEMARK PRIOR TO FILE A TRADEMARK APPLICATION?

Mark/Brandname search is essentially looking up and studying on ground of Mark database in Vietnam to determine the intended-to-file Mark to be identical or confusingly similar to the earlier Marks owned by other people registerd for same goods or services. Search result shall provide legal information on relevant earlier Marks, therefrom, Bross & Partners shall consult our deem clients to successfully register Mark/Brandname and to avoid your Marks/brandnames being refused after a long period of 12- 18 tháng.

7.    DOES VIETNAM APPLY FIRST FILING PRINCIPLE?

Vietnam is currently one of members of Paris Convention on intellectual property. Therefore, in case two or more individuals or organizations file a Mark application for the same list of goods, services at the same time, the application of the earlier shall be accepted.

An applicant for registration of an invention, industrial design or Mark may claim priority on the basis of the first application for registration of protection of the subject matter if the following conditions are fully satisfied:

(a)The first application was filed in Vietnam or in a country being a contracting party to a treaty of which the Socialist Republic of Vietnam is also a member, containing provisions on priority right, or in a country which has agreed with Vietnam to apply such provisions;

b)The applicant is a citizen of Vietnam or of a country defined in sub-clause (a) of this clause, who resides or has a production or business establishment in Vietnam or in a country defined in sub-clause (a) of this clause;

c)The claim for the priority right is clearly stated in the application and a copy of the first application certified by the receiving office is enclosed;

(d)The application is filed within the time-limit provided for in a treaty of which Vietnam is a member.

An application for registration of industrial property which enjoys priority right shall bear the priority date being the filing date of the first application.

8.   WHAT IS THE PROCESS FOR TRADEMARK APPLICATION FILING IN VIETNAM

Under the Vietnam Law on Intellectual Property taken into effect from 1 July 2006, as amended on 19 June 2009, enforced from 1 January 2010, 4 periods involve in examining a Mark application:

Formality examination

An application for Mark registration will be examined in 01 month as of the filing date by the Vietnam National Office of Intellectual Property (NOIP) as to formality requirements  such as applicant’s information, classification of goods and/or services bearing the trade Mark, etc.,Where the  application fully meets formality requirements,  Decision on Acceptance of the Application will be issued.

Publication of application

The application which has been legitimately accepted will be published on the Official Gazette of Industrial Property within 2 months as of the date of acceptance.

Substantive  examination

The Mark application will be substantively examined within 9 months from the date of its publication on the IP Gazette.Where the Mark meets criteria for Mark protection and the applicant pays official fee for granting  Certificate  of  Mark  registration, NOIP  will  issue  a  Certificate  of  Mark registration. In practice, however, the above time limits as provided by the law may prolong due to the current overload at NOIP.

From our experience, if no obstacle arises during the application for  registration,  it will normally take about 14-18 months as of the filing date to obtain Certificate of Mark registration.

9.   WHAT ARE RIGHTS OF PROPRIETOR OF TRADEMARK CERTIFICATE?

Registered Mark owner shall have the following rights:

To use or authorize others to use industry property objects;

To prevent others from using industrial property objects by administrative, civil even criminal remedies;

To dispose of industrial property objects by transfering or licensing.

10.    HOW LONG HAS A MARK CERTIFCATE VALIDITY?

Certificate of Mark Registration will take effect in the whole territory of Vietnam as from the granting date until the expiry of 10 years counting from the filing date and it is renewable for every 10 years.

11.     WHEN THE VALIDITY OF A PROTECTION TITLE SHALL BE TERMINATED?

The validity of a protection title shall be terminated in the following cases:

(a) The owner fails to pay the stipulated validity maintenance or extension fee;

(b) The owner declares relinquishment of the industrial property rights;

(c) The owner no longer exists, or the owner of a Certificate of registered Mark is no longer engaged in business activities and does not have a lawful heir;

(d) The Mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;;

Based on the result of the examination of a request for termination of validity of a protection title and the opinions of the parties involved, the State administrative body for industrial property rights shall issue a decision on termination of validity of a protection title or notify refusal to terminate the validity of the protection title.

12.     CAN A PROTECTION TITLE BE INVALIDATED?

A protection title shall be entirely invalidated in the following cases:

(a) The applicant for registration has neither had nor been assigned the right to register the invention, industrial design, layout design or Mark;

(b)The industrial property object failed to satisfy the protection conditions at the time the protection title was granted.

14.   IS IT REQUIRED FOR ANY CHANGE IN CERTIFICATE CONTENT TO BE NOTIFED TO THE NOIP?

Arising any changes in name, address of the proprietor of the Mark Certificate, scope of protection, (narrowing is accepted only), the proprietor has to file a request for this change with the NOIP to update the information.

When a request for narrowing scope of protection is filed by the proprietor, the Mark application shall be undergone substantive examination again.

15.    IS IT POSSIBLE FOR THE OWNER OF THE PROTECTION TITLE TO CANCEL MARK APPLICATION HAVING IDENTICAL OR CONFUSINGLY SIMILAR
SIGNALS OF AN INDIVIDUAL/ ORGANIZATION?

Yes, it is. Before the Mark application is granted and after it is published in the Official Industrial Property Gazette, any third party who has rights or relevant rights and interests can file a request for cancellation for grant in written with the NOIP enclosing conving proof.

16.  IS A PROTECTION TITLE FORCED TO USE AFTER GRANT?

After grant, if the granted Mark is not used for consecutive five years accounted from the filing date, the Mark can be cancelled by any third party. Thus, to validate the Mark, use thereof is recommended.

Where no plan of use for Mark pasted on goods/services, the owner is recommended to apply non-regular use form such as advertisement, offering letters and to save the proof.