1. What is trademark? What are registrable marks in Vietnam?
Trademark means any sign used to distinguish goods and/or services of different organizations or individuals.
A trademark may be in the form of word (Vinataba, Chi Long), name (Giorgio Armani, Tien Dat), symbol or device, slogan (Think different), or combination of these elements and is manifested in one or more colors.
Registrable marks must be distinctive. Indistinctive marks include, but not limited to i) simple geometrical shapes, numerical figures, alphabetical letters, letters that cannot pronounced as a word or letter of foreign languages that are not commonly used; ii) marks which indicate time, place, origin, quality, nature, purpose, etc. of the goods/services in question. However, it is possible to secure registration of an inherently indistinctive mark by proving it has become distinctive of the applicant’s goods/services through use in commerce (i.e. secondary meaning)
2. How long does it take to get a registration of a straightforward trademark application?
Normally, an undisputed registration process takes 13-18 months involving three stages: (i) examination as to formality and publication of application (3-4 months); (ii) examination as to substance (9-12 months); and (iii) issuance of a registration certificate (2-3 months). However, it may take longer in practice due to the slow process of consideration of applications at the Trademark Office.
3. What is the estimate of costs for filing a trademark application in Vietnam?
The costs for filing a trademark application in Vietnam vary depending on the number of classes of goods/services and the number of goods/services in each classes as listed in the application.
To calculate the costs, please contact us at email@example.com for detailed advice.
4. Is a pre-filing trademark search necessary? How long does it take and how much does it cost?
To avoid the possibility of potential rejection or a risk of opposition, a pre-filing search is highly recommended. A search report can be delivered within 05 working days from the date of receiving client’s instructions.
To calculate the costs, please contact us at firstname.lastname@example.org for detailed advice.
5. Are three-dimensional trademarks protected in Vietnam?
Since July 1, 2006 when the Intellectual Property Law came into force, the protection of three-dimensional mark is officially recognized in Vietnam. The NOIP is very strict in examining the distinctiveness of the three-dimensional mark that relate to the shape of the designated goods or their packages. Generally, if the shape can be recognized as no more than the shape of the designated goods, the shape cannot be registered as a three dimensional trademark unless it has acquired distinctiveness through long and extensive use.
6. How are well-known trademarks protected in Vietnam?
As a party to the Paris Convention, Vietnam is obligated to give a special protection to well-known trademark. A well-known trademark is defined as a mark that becomes widely known in the whole territory of Vietnam. Rights over a well-known trademark are established based on use, not based on registration.
7. Why should a trademark be registered?
Trademarks should be registered with the competent authority to enjoy legal protection. By registration, the trademark owner can protect the right over his mark by preventing others from applying for or using identical or similar marks in respect of identical or similar or related goods and services and thus reducing damages to the benefit and interest derived from the trademark that any third party may cause.
8. Who can file applications for registration of trademarks in Vietnam?
Individuals, legal entities or other subjects lawfully engaged in production activities in Vietnam may, directly or through an Industrial Property Representative Service organization, file applications for registration of their trademarks in Vietnam. For foreign individuals or legal entities that do not have a legal representative or actual production or business facilities in Vietnam, they can file applications for registration of trademarks through an IP Representative Service organization only.
9. Is a multi-class trademark application accepted by the Trademark Office?
Yes, it is possible to file an application for one trademark covering more than one class of goods/services in Vietnam but subject to be accompanied by additional fee for each additional class.
10. How are goods classified in Vietnam?
The International classification of goods/services under Nice Agreement is currently applied in Vietnam. The specification of goods/services of an application should include those goods/services upon which the mark is used or there is a present bone fide intention to use the mark. Those goods/services must be described in sufficient detail. The indication of goods/services is preferably correlative or equivalent to the basis number listed in the 10th edition of the Nice Classification.
11. Are class headings applicable in Vietnam?
No. Class headings or general description of the designated goods/services are not applicable to the TM Office. It is necessary to describe such goods/services in full detail.
12. Is it possible to amend the trademark itself and the designated goods/services under the pending application?
Yes. The applicant may amend the trademark itself and/or the designated goods/services under the pending application, provided that such amendments do not change the nature of the mark as filed and/or not broaden the scope of protection of the designated goods/services.
13. When do trademarks possessing no distinctive characteristic get protection?
As stipulated by law, marks which do not possess distinctive characteristics, such as simple shapes and geometrical shapes, numerical figures, alphabetical letters, letters which cannot be pronounced as a word, or letters of foreign languages which are not commonly used shall not be protected. However, such marks shall be eligible for registration if they have been widely used and recognized in the market place.
14. Is there any advantage to using a trademark before filing an application?
Vietnam applies first-to-file system. Therefore, use of the trademark is not a condition for filing an application in Vietnam. However, in the event of a priority conflict between applications filed at the same time, registration will be granted to the applicant who proves the most extensive use.
15. Is marking of a registered trademark required in Vietnam?
The marking of “TM”, “SM” or “®” to trademarks is not required and generally provides no legal protection. Nonetheless, the “®” symbol is used only if the trademark has already been registered in Vietnam.
16. How are well-known trademarks protected in Vietnam?
As a party to the Paris Convention, Vietnam is obligated to give a special protection to well-known trademark. A well-known trademark is defined a mark that has been continuously used for prestigious products/services so that it becomes widely known. Rights in a well-known trademark are established based on a decision on the recognition of a trademark as well-known to be issued by the Vietnam Trademark Office upon the owner’s request.
17. Can a trademark which is considered confusingly similar or identical to another person’s trademark of which the validity has expired or been suspended/cancelled be registered?
A newly applied trademark which is considered confusingly similar or identical to another person’s trademark of which the validity has expired or been suspended shall be considered for protection only when the time-period calculating from the expiry date or suspension date of the cited trademark to the filing date of the new trademark application is equal to or exceed 5 years. However, this provision shall not apply to the mark of which the validity is suspended on the ground of non-use.
In case of cancellation, the applied trademark shall be considered for protection after the cancellation is completed and the cited trademark’s owner does not proceed with Appeal procedure.
18. What is the term of a trademark registration and how can the mark be renewed?
The legal protection of a registered trademark begins from registration date. A registration is valid for 10 years calculating from the accepted filing date of the application and can be renewed for subsequent 10 years term, ad infinitum.
A request for renewal must be filed within six (6) months prior to its expiry date. A request for renewal can be filed later than the above-mentioned period, but not exceeding six (6) months from the expiry date with payment of an extra fee accounting to 10% of a prescribed fee for each month overdue.
19. Can the trademark itself and the designated goods be changed after being registered?
Where there is any change that likely affect the registered trademark, such as change of the owner’s name and/or address, or upon the merger, application for amendment must be filed with the Trademark Office for recordal. The registered trademark itself and the designated goods shall not be amended; this provision shall, however, not apply to the restriction of designated goods.
20. Is proof of use required for obtaining trademark registration?
Proof of use is not required at the time of registration and at the renewal as well. A grace period of five (5) years for excusing non-use is provided.
21. Is there any possibility to file an invalidation action against a registered mark based on non-use?
Under the current law and practice of Vietnam, the validity of a trademark registration may be terminated if it is not used by the owner or transferred to others for use within 5 consecutive years calculated backward on time from the date on that a request for termination is filed by a third party, except where the trademark has been used or re-used at least 3 months before the filing date of the request. The burden of proof of use is on the Registrant.
22. Should the specific royalty amount be indicated in the license agreement?
A specific royalty amount must be indicated in the trademark license agreement. In practice, the parties concerned may agree on the actual royalty amount separately, whatever royalty amount indicated in the agreement shall be recorded in the decision on registration of trademark license agreement issued by the Trademark Office upon registration of the license.
23. Is a trademark license required to be registered at the Trademark Office?
Yes. It is an obligation to record a trademark license with the Trademark Office to become valid to a third party. The effective date of the license is the recorded date at the TM Office.
24. What is the procedure for responding to an examiner’s rejection of an application?
A response to the examiner’s rejection of an application must be filed within 2 months from the date of issuance of the notification. The examiner must re-examine the application in the view of the response made by the Applicant and the result thereof must be available within 06 months from the filing date of the response. If dissatisfied with the examiner’s decision, a further appeal can be filed with the TM Appeal Board within the TM Office.
25. What is the procedure for appealing against a Decision on refusal of an application or a Decision on refusal of granting a registration certificate?
An appeal against the decision of refusal of an application or the decision of refusal of granting a registration certificate must be filed with the TM Appeal Board within 03 months from the date of issuance of the decision. The TM Appeal Board must examine and settle the matter within 30 days from the date of receipt of the appeal. However, such period is often longer in practice. It may be months or few years. If dissatisfied with the TM Appeal Board’s decision, a further appeal may go to the Ministry of Science and Technology or can be taken before the competent administrative court.
26. Is it possible to prevent others from using marks identical or similar to a trademark in a pending application?
No. In Vietnam, trademark rights to a trademark are only established on the basis of certificates of registration of trademark issued by the TM Office. Once the trademark is still in a pending application, the trademark protection has not yet been effective and therefore the owner has no right to prevent others from using the identical or similar marks.
27. What types of remedies may be available on the case of infringement?
Different remedies are available when a registered mark is infringed including administrative, civil and criminal proceedings. (For details see Enforcement of Rights)