Basic procedure for obtaining a Vietnamese trademark registration
In order to enable us to proceed with filing, the following information and documents are required:
(i) Full name and address of the Applicant (required at the time of filing);
(ii) A phonetic transcription/transliteration and identification of the language used should be indicated if there are any elements of the trademark with wording other than in Roman characters (required at the time of filing);
(iii) A detailed specification of goods and/or services and its corresponding international class, if known (required at the time of filing);
(iv) A Power of Attorney, which is signed by the Applicant. No legalization or notarization is required (required within one (1) month from the filing date);
(v) Fifteen (15) clear print/specimen of the mark of a size, which is not in excess of 80x80mm and less than 15x15mm (required at the time of filing);
(vi) A certified true copy of the basic application if a convention priority is claimed and its sworn Vietnamese translation (required within 1 month from the filing date).
Upon receipt of the trademark application, the National Office of Intellectual Property (“the NOIP”) will provide application number, filing date and filing receipt.
The scan or fax copy of the following documents shall be accepted for filing but should be submitted to the NOIP whithin 01 month as from the filing date :
(i) An Original Power of Attorney;
(ii) A certified true copy of the basis application (if a convention priority is claimed);
(iii) A Deed of Assignment of the Priority Rights (if the Applicant is different from the Applicant having filed the Priority Application).
The trademark application as filed shall be subject to examination as to formality within 01 month as from its filing date; however, in practice, it may be extended to further 01–02 months. In this process, the trademark application shall be examined to its unity, accuracy of information, proper classification of goods/services.,etc. If the trademark application is rejected due to its incompliance with the formal criteria, the applicant will be given 01 month for amendment or correction and this peirod can be extended to a further 01 month.
Decision on Acceptance as to formality of a Trademark Application
If the trademark application meets all requirement as to formality, the NOIP shall issue a Decision on acceptance as to formality for the trademark application. Any related information of the trademark application shall be accordingly recorded.
Publication of Application
The application is then published in the National Gazette within 02 (two) months as from the signing date of the Decision on Acceptance as to formality for opposition of a third party and imultaneously examined as to registrability. During a period from the publication date to the date on that a decision on granting/refusal of a certificate of trademark registration is issued, any third party shall be entitled to file opposition(s) against pending application(s) with the NOIP.
The application is subsequently examined as to registrability to identify whether or not it meets the criteria for protection such as distinctiveness, availability, etc. The result thereof is expected available within 09 to 12 months from the date of Decision on Acceptance of Trademark Application.
Upon completion of the substantive examination, if the trademark application (i) meet the protection criteria, the NOIP shall issue the Decision on intention to grant a Certificate of Trademark Registration and request the applicant to pay fees for granting, publication of the registration or (ii) does not meet protection criteria, the NOIP shall issue a Notification of refusal and give 02 months for the applicant to respond. The applicant shall be entitled to request for extionsion of a further 02 months.
Decision on refusal to grant a Certificate of trademark registration
In case, the applicant does not file the respopnse to NOIP’s Notification in due course or the submitted response is not acceped by the NOIP, the NOIP shall issue a Decision on refusal to grant a Certificate of trademark registration and give 90 (ninety) days for applicant to proceed with Appeal.
Decision on intention to grant a Certificate of trademark registration
In case, the substantive examination shows that the trademark application is qualified for protection or the response to Notification of refusal is accepted, the NOIP shall issue a Decision on intention to grant a Certificate of trademark Registration and request the application to pay fees for granting, publication of trademark registratiron.
Fees for granting and publication must be paid within 01 months as from the signing date of Decision on intention to grant a Certificate of Trademark Registration. After the given time, if no fee is paid, the application will be irrevocably dismissed. Whereas, if fees are sufficiently paid, the NOIP shall issue a Certificate of Trademark Registration and forward the original to the applicant.
The legal protection of a trademark begins from the date on that the certificate of trademark registration is granted and shall be valid for a period of ten (10) years as from its filing date and can be renewed for consecutive periods of ten years.
The registered trademark needs not be in use in Vietnam at the time of registration, but it is vulnerable to expunction if it is not used for five (5) consecutive years calculated backward in time from the date on which a request for termination of the validity of the registration is made by any third party. However, if the mark is used or re-used at least 3 months prior to the date of the request for termination, the mark likely avoids the invalidation.