IMPORTANCE OF THE ESTABLISHMENT OF TRADEMARK RIGHTS
Trademark rights in Vietnam are only established on the basis of registration except rights over a well-known trademark which are established by use. In addition, Vietnam applies first-to-file principle; therefore, our clients are always advised to file application(s) for registration of their trademark(s) as early as possible to prevent trademark piracy which are now popular in Vietnam. Currently, if a trademark is pirated, it is very costly and time-consuming to recovery the trademark and in several cases, it is impossible to recovery the trademark if there is no direct evidence proving that the applicant has known about the trademark and has filed the application in bad faith.
We provide a full range of trademark services in Vietnam including but not limited to:
- Trademark Searches including identical search, similarity search and company’s name search and other types of searches upon specific request;
- Trademark Filings;
- Office Action Responses;
- Appeal Filings;
- Trademark Renewal;
- Recordal of Changes/Assignments/Licenses;
- Trademark Monitoring;
- Trademark Portfolio Management;
- Contentious Works including Trademark Opposition, Invalidation and Cancellation.
In addition, we also provide the same services for trademark matters in Laos, Cambodia and Myanmar. Please contact our trademark attorneys for appropriate advice for trademark matters in these countries.
GENERAL INFORMATION ON TRADEMARK PROTECTION IN VIETNAM
Trademark means any sign used to distinguish goods and/or services of different organizations or individuals. Until now, a registrable trademark must be a visible sign which can be in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors.
It is worth noting that since the CPTPP has been officially effective for Vietnam since 14 January 2019, Vietnam is making necessary amendments to its IP Law so as to be in accordance with the requirements set forth by the said agreement. Accordingly, the registrability of non-traditional trademarks, namely the sound marks at least, are scheduled to be incorporated into domestic legislation in the coming time.
Types of trademarks
Under the current IP Law, the trademark protection can be obtained for ordinary marks, certification marks and collective marks. Of note, seeking protection for associated marks is almost impossible due to the lack of specific regulations on the registration procedures and examination rules.
Validity term and Renewal
The legal protection of a trademark begins from the date on that the registration certificate was granted, and a registration is valid for a period of 10 years computed from the filing date.
The validity of a registered mark may be renewed for multiple terms of 10 years each. A renewal application can be filed within 6 months before the expiration date. Late renewal is allowed within a 6-month grace period after the expiration date, which will be subject to certain amount of extra fee. If no renewal application is filed by the end of the grace period, the validity of the registration will be automatically invalidated.
Use of trademark
A registered trademark needs not be in use in Vietnam at the time of filing or grant of registration, but it is vulnerable to termination/revocation 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 will likely avoid the termination.
Of note, as the domestic IP law and regulations of Vietnam are silent on whether evidence of use of similar versions can serve as evidence of use of the registered mark in defending against a revocation action on the ground of non-use, Article 5(C)(2) of the Paris Convention can be referred to as an important legal provision for determination of such issue.
Under any circumstances, the judgement on this issue is to be determined on a case-by-case basis and depends much on the competent authority’s discretion. In principle, the trademark owner is always advised to use the mark(s) as it/they are registered.
Please contact our trademark attorneys for appropriate advice on a specific case.
Registration of trademarks in Vietnam can be obtained via two routes: (i) National route, namely, Vietnamese applications filed directly with the Vietnam Intellectual Property Office (“VNIPO”) and (ii) International route, namely, International Applications under Madrid System designating Vietnam.
I/ NATIONAL ROUTE (VIETNAMESE APPLICATIONS)
- According to the VNIPO’s internal regulations, national trademark applications are examined by the Trademark Examination Center (“TEC”)
- Registration procedure:
The time-frame for a straightforward trademark application to mature into registration would take about 18 to 24 months involving four phases:
♦ Examination as to formality (1-2 months);
♦ Publication of application (2 months)
♦ Examination as to substance (13-16 months); and
♦ Issuance of a registration certificate and publication of the registered mark (2 – 3 months).
- Documents required for trademark filing:
- Full name and address of the applicant;
- A Power of Attorney (PoA) is not required at the time of filing, but the original must be submitted within 01 month from the filing date [A PoA needs to be simply signed by the authorized representative of the applicant. Neither legalization nor notarization is required.] A clear specimen of mark, which can be photocopied (size is not smaller than 15×15 mm and not larger than 80×80 mm);
- A detailed specification of goods and/or services and its corresponding international class, if known (the International Classification of Goods and Services under the 11th Edition of the Nice Agreement is currently applicable). Class headings or general description of goods/services is not acceptable;
- Certified documents proving priority right (if the applicant wishes to claim priority right).
- Filing fees are calculated on the basis of (i) number of classes of goods/services and (ii) number of items of goods/services claimed in each class of the application.
II/ INTERNATIONAL ROUTE (MADRID APPLICATIONS)
- According to the VNIPO’s internal regulations, international trademark applications designating Vietnam are examined by the Center for Geographical Indication and International Trademark Examination Center (“GITEC”)
- Registration procedure:
Madrid applications designating Vietnam (through the International Bureau (IB) of WIPO) are examined within a prescribed 12 months from the date of designation. At the end of the 12-month examination period, the VNIPO will send to the IB either (i) a relevant Statement of Grant of Protection in case the applied-for mark is qualified for protection, or (ii) conversely, a Notification of Provisional Refusal in case the applied-for mark is not qualified.
In the latter scenario, the time limit for the applicant to file a response to such a provisional refusal is 03 months, and in order to do this, a foreign applicant is required by law to authorize a local registered IP agent to represent it and pursue the case before the VNIPO.
1. Opposition proceedings
Under the current IP law of Vietnam, any opposition to a pending trademark application can be filed by a third party before an official decision on refusal or grant of registration has been issued.
Opposition is not considered as a separate proceeding, it is only considered as a reference for the examination of trademark applications. In other words, opposition is not examined independently, i.e. it is examined concurrently with the substantive examination of the opposed trademark application.
The grounds for opposition vary depending on the merits of each case, e.g. the opposed mark is identical or confusingly similar to a prior registered mark or a well-known trademark, the opposed mark falls into the categories which are excluded from trademark protection or the applicant of the opposed mark does not have the right to register the mark, etc.
2. Invalidation Proceedings
Any third party shall have the right to file with the VNIPO a request to terminate the validity of a registered trademark. The grounds for termination can be as follows:
- The owner has ceased to exist or is no longer engaged in business activities without any lawful heir;
- The registered trademark has not been used by its owner or his/her licensee without justifiable reasons for 5 consecutive years prior to a request for termination of validity, except where the use is commenced or resumed at least 3 months before the request for termination;
- The owner of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulation on use of the collective mark;
- The owner of a registered certification mark violates the regulation on use of the certification marks or fails to supervise or ineffectively supervises the implementation of such regulation.
3. Cancellation proceedings
Any third party shall have the right to file with the VNIPO a request to cancel the validity of a registered trademark. The grounds for cancellation can be as follows:
- The registered trademark was filed in bad faith, typically, the proprietor of a registered trademark did not have the right to register that mark;
- The registered trademark failed to satisfy the protection conditions at the time the protection title was granted.
If based on the ground of bad faith, the cancellation request can be filed at any time. Whereas, if based on the second ground mentioned above, the cancellation request must be filed within 5 years from the registration date of the challenged trademark.
For other contentious works, please see “IP enforcement and litigation”.