Guidance on Registration of Trademark in Vietnam

ON REGISTRATION OF TRADEMARK IN VIETNAM

1. DEFINITION AND CONDITIONS FOR PROTECTION

Trademarks (sometimes known as “brands” or brand names”) are signs used to distinguish products/services manufactured/provided by different persons, entities. Signs eligible for protectability as a trademark shall be visible ones in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors.

2. EXAMPLES OF REFUSED MARKS

Not every application for registration of mark is accepted protection. During recent years, there are a lot of applications for registration of mark are rejected in Vietnam because of non-compliance with conditions for protection. Below are some typical cases of mark which were already refused by the Trademark Office for your reference:

3. PRE-FILING SEARCH AGAINST PROPOSED MARK

Search means conducting a finding on the Vietnam trademark database to identify whether a proposed mark is confusingly similar or identical with earlier marks filed or registered by others that are used for the same kind of goods/service or not.

Although the search is optional, you are highly recommended to conduct a search before filing application for registration of a proposed mark. The trademark search result together with the legal opinions made by us will be sent to you in about 2–3 working days.

4. REQUIRED DOCUMENTS

• 8 reproductions of the mark, maximum size 8x 8cm, minimum size 1.5 x 1.5cm;
  

• A Power of Attorney (POA) simply signed by a legal representative of the applicant. No notarization or legalization is required. A faxed copy of PoA is accepted at the filing but the original shall be filed within 01 month from the filing date.
  

• List of Goods or Services pertaining to trademark.

5. PROCEDURES

As provided by the Law on Intellectual Property 2005, as revised in 2008, which took effect as of January 1, 2010, the prosecution of an application for trademark registration is basically divided into the following 4 stages:

Formality examination

An application for trademark 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 trademark application will be substantively examined within 9 months from the date of its publication on the IP Gazette.Where the trademark meets criteria for trademark protection and the applicant pays official fee for granting  certificate  of  trademark  registration, NOIP  will  issue  a  Certificate  of  trademark 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 trademark registration.

Certificate of Trademark 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. Registered trademark 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.