Application for Registration of Trademark

In order file an application for registration of a trademark in Vietnam, please provides us with the following information and documents:

• Full name and address of the applicant;
• 15 specimens of trademark to be filed, with the size within 8 cm x 8 cm;
• A description of the trademark, such as meaning, color claimed, translation or transliteration of characters of the trademark into English if such characters are not in English;
• List of goods/services bearing the trademark, which are classified in accordance with the International Classification of Goods and Services;
• An original Power of Attorney executed by the applicant in favor of bizconsult law LLC. The Power of Attorney shall be made in standard form. Please contact us for the form of Power of Attorney or you can download it from our firm's website at www.bizconsult.vietnam.com. No legalization is required to the Power of Attorney. A photocopy of the Power of Attorney can be accepted at the time of filing of the trademark application, provided that the original must be received by us within 2 months from the filing date of the trademark application
• If the trademark is claimed for priority right under Paris Convention, a certified copy of priority documents is required with the English translation thereof (if the priority documents are not in English). Information on the priority right, such as details of application, first application number, first application filing date and first country where the first application was filed, is required. A photocopy of the certified copy of the priority documents can be accepted at the time of filing of the application, provided that the original certified one must be received by us within 2 months from the filing date of the trademark application.

Other Useful Information

• A trademark application can cover more than one Class of goods/services.
• The time limit for examination for granting of a trademark registration is nine (9) months from the legitimate filing date of the application, of which one (1) month is for formality examination, two (2) months are for publication for public opposition and six (6) months are or substantive examination. It should be noted that under the Amended Law on Intellectual Property, effectively 1 January 2010, the duration for substantive examination would not exceed 9 months.
• Applicant will be informed the provisional filing date and number of the trademark application. When the application is passed the formality examination, the application will be accepted legitimate and be published for public opposition. If the trademark satisfies conditions for registration, applicant will be received Notification of Decision on Granting of Registration. The Trademark Registration Certificate will be granted when the granting fee is paid to National Office of Intellectual Property of Vietnam. If the trademark does not satisfy conditions for registration, applicant will be received Notification on Provisional Refusal and applicant is entitled to appeal against such Provisional Refusal. A Flow Chart of Trademark Prosecution in Vietnam can be downloaded from our firm's website at www.bizconsult-vietnam.com.
• A Trademark Registration Certificate is valid for 10 years from the filing date and can be renewed with unlimited time each 10 years.
• A Trademark Registration Certificate may be suspended at a request of a third party on the ground that the trademark has not been using for five (5) consecutive years from the granting date without justifiable reason which is accepted by the National Office of Intellectual Property.

"First Come First Serve" Doctrine

In case of several applications filed by different applicants for registration of trademarks which are identical with or confusingly similar to each other, Certificate of Trademark Registration will only be granted to application which is legitimate and which has earlier priority date or the earliest filing date among those that satisfy conditions for being granted Certificate of Trademark Registration.

It should be noted that under the Amended Law on Intellectual Property, in case of several applications filed by different applicants for registration of trademarks which are identical with or confusingly similar to each other for goods/services which are identical with or confusingly similar with each others, or in case of several applications filed by one applicant for registration of trademarks which are identical with each others for the same goods/services, Certificate of Registration would only be granted to any trademark filed under legitimate application having the earliest priority date or the earliest filing date among those which satisfies conditions for granting of Certificate of Registration. If all of those applications satisfy conditions for granting of Certificate of Registration and all have the same earliest priority date or earliest filing date, Certificate of Registration would only be granted to one trademark that is agreed by all applicants. If no agreement is reached, all applications shall be refused.

Trademark

Trademark is any sign used to distinguish goods or services of different organizations and individuals.

Collective mark is a mark used to distinguish goods or services of members from those of non-members of an organization that is the owner of the mark.

Certification mark is a mark licensed by its owner to other organizations, individuals to use for their goods or services in order to certify characteristics in respect of origin, materials, raw materials and methods of goods production or methods of services supply, quality, accuracy, safety or other characteristics of such goods or services.

Associated marks are marks that are registered by the same owner, identical or similar to each other and are used for identical or similar or inter-related goods and services.

Well-known mark is a mark widely known throughout territory of Vietnam.

Eligibility of Protection

A mark shall be eligible for protection if it meets the following conditions:

• To be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colors;
• To be capable of distinguishing goods or services of the mark owner from those of others.

Right to registration of a mark

An organization or individual shall have the right to registration of a mark to be used for goods or services he or she produced or supplied.

An organization or individual legally engaged in the trade in a product produced by a third party shall have the right to registration of a mark to be used for the product, provided for the producer neither uses such a mark for the product nor objects to such registration.

A collective organization legally established shall have the right to registration of a collective mark to be used by its members in accordance with the rules on using collective mark.

With regard to a sign indicating the geographical origin of goods or services, the organization that has the right to registration shall be the collective of organizations or individuals engaged in the production or trade of goods or services in the relevant locality.

An organization with the function to control and certify the quality, characteristics, origin or other relevant criteria of goods or services shall have the right to registration of a certification mark provided that such organization is not engaged in the production or trade of such goods or services.

Two or more organizations or individuals shall have the right to jointly register a mark in order to become the co-owners thereof, provided that:

• The use of such a mark shall be on behalf of all of the co-owners or shall be for the goods or services of which all of the co-owners are engaged in the production or trade;
• The use of such a mark shall not cause any confusion to consumers as to the origin of goods or services.

A person who has the right to registration as mentioned above, even after filing registration application, is entitled to assign, in writing, the right to other organizations or individuals by way of a written contract for bequest or bylaw inheritance, provided that the assignee satisfies the respective criteria applicable to person having the right to registration.

With regard to a mark being protected in a member country of an international treaty which prohibits the representative or agent of a mark owner to register such mark and of which Vietnam is also a member country, then such representative or agent shall not be permitted to register such mark unless it is so agreed by the mark owner, except where a legitimate reason is available.

Signs not protected as marks

• Signs identical with or confusingly similar to the national flags, national emblems;
• Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless permitted by such agencies or organizations;
• Signs identical with or confusingly similar to real names, alias, pen names or images of leaders, national heroes or famous persons of Vietnam or foreign countries;
• Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations which require that their signs must not be used, except where such seals are registered as certification marks by those organizations;
• Signs liable to mislead, confuse or deceive consumers as to the origin, functional parameters, intended purposes, quality, value or other characteristics of the goods or services.

Distinctiveness of marks

A mark shall be considered as distinctive if it consists of one or several easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and is not those signs provided for hereunder.

A mark shall not be considered as distinctive if it is signs falling under one of the following cases:

• Simple devices and geometric figures; numerals, letters, or words of uncommon languages, except for signs having been widely used and recognized as a mark;
• Signs, symbols, pictures or common names in any language of goods or services that have been widely and often used and are common knowledge;
• Signs indicating the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the goods or services, except for signs having acquired distinctiveness through use before the filing of mark registration applications;
• Signs describing the legal status and activity field of businesses;
• Signs indicating the geographical origin of the goods or services, except for signs having been widely used and recognized as a mark or signs registered as collective marks or certification marks as mentioned;
• Signs not being integrated signs which are identical with or confusingly similar to a registered mark in respect of identical or similar goods or services on the basis of a registration application having earlier filing date or earlier priority date, as applicable including applications filed under international treaties to which Vietnam is party;
• Signs identical with or confusingly similar to another person's mark having been widely used and recognized in respect of the similar or identical goods/services as before the filing date or the date of priority, as the case may be;
• Signs identical with or confusingly similar to another person's mark already registered in respect of identical or similar goods or services the Mark registration Certificate of which has been terminated for no more than 5 years, except where the ground for such termination is non-use of the mark by its owner or his licensee without justifiable reasons for a term of 5 consecutive years prior to a request for termination of validity, except the use is commenced or resumed at least 3 months before the request for termination;
• Signs identical with or confusingly similar to another registered person's mark recognized as well-known in respect of the goods or services that are identical with or similar to those bearing the well-known mark; or in respect of dissimilar goods/services if the use of such marks may prejudice the distinctiveness of the well-known mark or the registration of such signs is aimed at taking advantage of goodwill of the well-known mark;
• Signs identical with or similar to another person's trade name having been used if the use of such signs is likely to cause confusion to consumers as to the source of goods or services;
• Signs identical with or similar to a geographical indication being protected if the use of such signs is likely to cause mislead consumers as to the geographical origin of goods;
• Signs identical with or containing geographical indications or being translated from the meaning or transcription of the geographical indication being protected with respect to wines or spirits if such signs have been registered for use with respect to wines and spirits not originating from the geographical area bearing such geographical indication;
• Signs identical with or insignificantly different from another person's industrial design having been protected on the basis of an industrial design registration application with filing date or priority date earlier than those of the mark registration application.

Criteria for recognition of a well-known mark

The following criteria shall be taken into account while considering well-known status of a mark:

• The number of the related consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;
• Territorial scope of circulation of the goods/services bearing the mark;
• Turn-over of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;
• The period of continuous use of the mark;
• Widespread goodwill of the goods/services bearing the mark;
• Number of the countries granting protection to the mark;
• Number of the countries recognizing the mark as well known;
• Value of assignment, licensing price, or the value of investment capital contribution in respect of the mark.