Our trademark group includes trademark attorneys, specialist lawyers and investigators all working together to provide clients seamless services. Our trademark services in Vietnam include:
- Conducting searches in order to assess availability of a desired mark
- Giving opinion on the registrability and use of trademarks
- Filing and pursuit of trademark applications
- Renewal of trademark registrations
- Recordal of change of name and/or address
- Recordal of assignment/licence agreement
- Representation in Opposition proceedings
- Representation in Cancellation/Invalidation proceedings
- Trademark Portfolio Management
- Representation in a trademark infringement proceeding
Conducting searches in order to assess availability of a desired mark
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
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 :
iii) Original certificate of trademark registration(s), for endorsement purpose.
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.