“AOP”: The matter of registration of a collective mark
Recently, D&N International, on behalf of Association suisse des AOP-IGP, Sweeden (“Applicant”) has successfully overcome the NOIP’s provisional refusal to register the collective mark for goods in classes 29, 30, 31, 32 & 33 (“the Applied Mark”).
The Applicant filed an international application for registration of the Applied Mark in Vietnam. However, the NOIP provisionally refused to protect the Applied Mark on the ground that the application dossier lacked the document specifically required for registering a collective mark as provided in Article 105 of IP Law of Vietnam.
Having reviewed the case, D&N International advised and assisted the Applicant in preparing required the specific documents, i.e. Regulations governing the use of the collective mark and the list of people authorized to use the mark. D&N International, concurrently, on behalf of the Applicant, responded to the NOIP’s provisional refusal.
After reviewing the document supplemented by the Applicant, on October 17, 2016, the NOIP issued the Decision No. 4142/QĐ-SHTT accepting to protect the Applied Mark.
To avoid the risks of being refused by the NOIP, any organization who intends to register collective mark should not only prepare the information and document required for a dossier of applying for a normal mark, such as sample of mark, specification of goods/services bearing the mark, and a power of attorney (if the application is filed through an IP representative) but also pay attention in preparing a Regulations governing the use of the collective mark specifically required for a dossier of applying for a collective mark. According to Article No. 105.4 of IP Law of Vietnam, the Regulations governing the use of a collective mark must include the following minimum obligatory contents:
- Name, address, grounds of establishment and operations of the collective organization that is the owner of the mark;
- Requirements to become a member of the collective organization;
- List of organizations and individuals permitted to use the mark;
- Conditions for using the mark;
Remedies applicable to acts against violating the rules on using the collective mark.