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Vietnam

Our trademark group includes trademark attorneys, specialist lawyers and investigators all working together to provide clients seamless services. Our trademark services in Vietnam include:

A trademark search prior to filing a trademark application is optional. We are able to conduct unofficial searches with the TM Office and the search report along with our professional opinion regarding the availability of the mark will be rendered within 2-3 working days.

To enable us to proceed with a trademark search, the following information is necessary:

(i) A clear specimen of the mark ; and

(ii) The list of goods/services and the corresponding international class, if known.

To calculate costs for conducting a trademark search, please click here.

Filing and pursuit of trademark applications

In Vietnam, multi-class applications are acceptable i.e. an application can be filed for more than one class of goods or service with payment of additional fee for additional class. Class headings or general description of goods/services is no longer acceptable. To avoid a potential official action, it is necessary to designate the detailed goods, preferably each item of the goods is equivalent or correlative to a basic number listing in the International Classification of G/S of nineth edition of Nice Classification.

Filing requirements
Information and documents required at the time of filing
i)               Full name and address of the Applicant;
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;
iii)            A detailed specification of goods and/or services and its corresponding international class, if known;
iv)            ifteen (15) clear prints/specimens of the mark of a size, which is not more than 80x80mm and not less than 15x15mm;
v)              Number Application and filing date of the basic application if a convention priority is claimed.
Additional documents must be submitted within one months from the filing date
i)               An Original Power of Attorney, which is simply signed by the Applicant. No notarization or legalization is required;
ii)             A certified true copy of the basis application and its sworn Vietnamese translation (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.
 
Estimate of Filing Costs
Costs for filing trademark applications in Vietnam vary depending on number of factors such as number of classes of goods or services of the application and number of items of goods/services claimed included in each class as well . To calculate the estimate of filing costs, please click here.
Basic Procedure for Obtaining a Trademark Registration in Vietnam
Please click here to see a flow chart and basic procedure for obtaining a trademark registration in Vietnam.

Renewal of trademark registrations

A trademark registration is valid for a period of ten years commencing from the filing date of the application and can be renewed for subsequent ten-year term, ad infinitum. Late renewal is allowable within a 6 month period after the expiry date of the registration, subject to payment for late renewal.
For filing a renewal application, the following documents are required :

(i)           A Power of Attorney, which is signed by the Applicant. No notarization and legalization is required;

(ii)         An original or simple copy of trademark registration certificate.

To calculate costs for filing a renewal of a trademark registration, please click here.

Recordal of change of name and/or address

As stipulated, any changes which likely affect the Trademark Registration, such as change of name and/or address of the trademark owner should be recorded with the TM Office as soon as practicable.

For recordal of change of name and/or address of the trademark owner, the following documents are required at the time of filing :

i)              A Power of Attorney, which is simply signed by the trademark owner. No notarization and/or legalization is required;
ii)             A notarized Declaration of change of name and/or address by the trademark owner, or Certified true copy of the legal document evidencing the change of name and/or address;
iii)           Original certificate of trademark registration(s), for endorsement purpose.
 
To calculate costs for filing a recordal of change of name and or address of a trademark owner, please click here.
Recordal of assignment/licence agreement
A trademark assignment agreement must be made in writing and recorded with the TM Office as soon as possible to make it legally effective and enforceable. To recordal of an assignment agreement, the following documents are required at the time of filing:
i)               A Power of Attorney, which is simply signed by the Assignee or the Assignor. No notarization and/or legalization is required;
ii)             An original or notarized copy of Assignment Agreement, which is simply signed by both Assignor and Assignee in all pages of the agreement. No notarization and legalization is required;

iii)           Original certificate of trademark registration(s), for endorsement purpose.

A trademark license agreement automatically take effect between two parties as per their agreement, but it must be recorded with the TM Office in order to be effective against a third party. To recordal of a trademark licence agreement, the following documents are required at the time of filing:
i)               A Power of Attorney, which is signed by the Licensee or the Licensor. No notarization and/or legalization is required;
ii)             An original or notarized copy of a License Agreement, which is signed by both Licensor and Licensee in all pages of the agreement. No notarization and legalization is required;
iii)            A copy of trademark registration certificate.

Representation in Opposition proceedings

Under the current IP Law of Vietnam, opposition is not considered as a seperate proceeding, it is only considered as a reference in the examination proceeding of trademark applications. Within a period from the publication date of the application and the date on that a decision on granting a certificate of trademark registration is issued (i.e. during the time of the substantive examination) any interested party may file an opposition against a pending application with the NOIP and in such a case, it has to present the grounds for opposition and provide evidences on which the opposition are based.

For filing an opposition against a pending application, the following documents are required:

(i)             A Power of Attorney, which is signed by the Applicant. No notarization and/or legalization is required (required at the time of filing);

(ii)           Documentary evidence in support of the opposition (if any).

 Representation in Cancellation/Invalidation proceedings

A cancellation action may be filed by any third party at any time within five (5) years from the date of registration if it can be evidenced that the mark does not meet the criteria for protection. After five years of registration, the registered mark will become incontestable and no cancellation action is available. However, there is no time limit for a cancellation brought on the ground that the trademark owner registered the mark in bad faith.

An invalidation action may be initiated by any interested party if it can be evidenced that i) the validity of the trademark registration is expired ; or ii) the registered mark is not in use within five (5) consecutive years calculated backward in time from the date on which a request for invalidation on the basis of non-use is made to the TM Office by any third party; or iii) the trademark owner no longer exists or terminates its business operation without legitimate successor.

For filing a cancellation/invalidation against a trademark registration, the following documents are required :

(i)               A Power of Attorney, which is signed by the Applicant. No notarization and/or legalization is required (required at the time of filing) ;

(ii)              Documentary evidence in support of the cancellation/invalidation (if any).

Trademark Portfolio Management

Our scope of trademark porfolio services covers the following works :

 

(i)              Providing all prosecution services necessary for trademarks, including filing applications, oppositions, cancellations,  responding to office actions, recording assignments and licenses etc;

(ii)             Docketing all deadlines on a computerized database providing both short and long term maintenance dockets;

(iii)           Conducting, analyzing and providing advice and opinions on availability and registrability of proposed marks;

(iv)            Providing counseling to clients regarding use required, proof of use or affidavit;

(v)             Reviewing all watch notices or notices of infringing activity and make recommendations;

(vi)            Conducting investigations regarding potentially infringing marks and preparing and responding to cease-and-desist letters relating to trademark infringement matters;

(vii)          Providing comparative law expertise regarding registrability questions to assist clients in selecting marks based on availability, ease of registration, enforceability;

(viii)         Maintaining and providing clients, as requested, with a status chart on a regular basis reflecting current status of each mark;

(ix)           Providing presentations to clients, as requested, regarding trademark laws and procedures.