Registering a trademark in Vietnam is an essential step for any business or individual aiming to protect their brand and prevent unauthorized use by others. However, the trademark registration process can be complex and involves multiple steps that must be carefully followed. To successfully register a trademark in Vietnam, it is important to understand the search for availability, the required documentation for filing, the steps and practices of trademark examiners, how to respond to office actions, and the current protections for unconventional trademarks, such as sound and scent marks. Moreover, understanding the significance of disclaimers within the scope of trademark protection is crucial.

In this article, we will explore these key aspects of trademark registration in Vietnam to help you navigate the process confidently and ensure the best possible protection for your brand.

Trademark Registration Rights

The right to register a trademark belongs to organizations or individuals that produce goods or provide services. The Intellectual Property Law in 2005, specifically Article 87 (amended and supplemented in 2022), outlines these rights in detail.

1. Organizations or individuals that produce goods or provide services:  

   - Have the right to register trademarks for their own goods or services.

2. Organizations or individuals engaged in lawful commercial activities:  

   - May register a trademark for products produced by others but brought to market by them.  

3. Legally recognized collective organizations:  

   - Have the right to register collective trademarks for members to use according to the organization's regulations.  

   - For signs indicating geographical origin, the registering entity must be a collective group of organizations or individuals engaged in production or business in that locality.  

   - For specific geographical names or signs indicating the origin of Vietnamese specialties, state approval is required.

4. Organizations responsible for controlling or certifying the quality, characteristics, or origin of goods and services:  

   - May register certification trademarks if they are not directly engaged in production or business.  

   - For geographical names or signs indicating the origin of Vietnamese specialties, state approval is required.

5. Co-ownership of trademarks:  

   - Two or more organizations or individuals may jointly register a trademark.  

   - Condition: The trademark must be used in the name of all co-owners or for goods/services produced or provided by all co-owners, without misleading consumers about the origin of the goods/services.

6. Transfer of trademark registration rights:  

   - Individuals with the right to register a trademark may transfer this right through contracts, inheritance, or legal succession.  

   - Condition: The transferee must meet the same conditions as the original right holder.

7. Restrictions on trademark registration by representatives or agents:  

   - Applies to trademarks protected in countries that are parties to international treaties prohibiting representatives or agents from registering trademarks without the owner's consent, to which Vietnam is also a party.  

   - Representatives or agents may not register the trademark without the owner's consent, unless there is a justifiable reason.

Conditions for Trademark Eligibility for Exclusive Protection

A sign used for distinguishing goods or services must be visible in the form of letters, words, drawings, images, including three-dimensional shapes or a combination of these elements, presented in one or more colors, or a sound sign represented graphically.

A visible sign can be protected as a trademark if it has the ability to distinguish and does not deceive consumers.

The sign must not conflict with previously established rights of others, such as trademarks, trade names, geographical indications, or industrial designs owned by other entities.

If the trademark is a sound, the trademark sample must be a sound file and a graphical representation of that sound.

The trademark must be described to clarify its constituent elements and its overall meaning (if applicable).

If the trademark contains words or phrases from ideographic languages, they must be transliterated.

If the trademark contains words or phrases in a language other than Vietnamese, they must be translated into Vietnamese.

See more:  Vietnam foreign investment laws

Trademark Registration Application

Trademark Registration Dossier Includes:

• 02 Trademark Registration Request Forms (according to Form No. 04-NH in Circular 01/2007/TTBKHCN).
• 05 Trademark Specimens (The complete trademark must be presented within a template frame of 80mm x 80mm. If color protection is requested, all trademark specimens on the form and attachments must be presented in the exact colors to be protected.)
• Fee Payment Receipt.
• 01 Notarized Copy of Business Registration Certificate or a notarized copy of ID card/passport for personal identification (to gather information for drafting the Power of Attorney and registration documents).
• 01 Power of Attorney (in case an individual or organization authorizes an industrial property service representative to file the application).
• Other Documents (if applicable):

• Documents confirming permission to use special signs (if the trademark contains symbols, flags, emblems of domestic or international organizations).
• Documents confirming the right to register.
• Documents confirming the transfer of registration rights from another party.
• Priority right documents (if priority rights are claimed in the application).

See more:  trademark lookup in Vietnam

Detailed Trademark Registration Procedure for 2024

The process of registering a trademark is carried out through the following detailed steps:

Step 1: Application Submission

Trademark registration applications can be submitted directly, online, or via postal mail to the headquarters of the Intellectual Property Office in Hanoi, or its representative offices in Ho Chi Minh City, Hanoi, and Da Nang. Specifically:

1. Submitting in person or by post:

   - Intellectual Property Office Headquarters in Hanoi: 386 Nguyen Trai, Thanh Xuan District.

   - Ho Chi Minh City Representative Office: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1.

   - Da Nang Representative Office: 3rd Floor, 135 Minh Mang, Khue My Ward, Ngu Hanh Son District.

2. Submitting online through the Intellectual Property Office’s public service portal at http://dvctt.noip.gov.vn:8888/HomePage.do. Note that to submit online, applicants need a digital signature (USB Token) and a registered account on the portal.
3. Submitting by post: Applications can be sent via postal mail to any of the application reception points of the Intellectual Property Office. The filing date is determined based on the postmark of the sending location.

Step 2: Formality Examination

The Intellectual Property Office will check the formal validity of the application. The results can be:

• Acceptance of valid application: A decision to accept the application will be issued.
• Rejection of valid application: A notice of intended refusal will be issued, stating the reasons and requesting corrections within 2 months. If not corrected or if the correction does not meet the requirements, a decision to refuse will be made.

The formality examination process takes approximately 1 month.

Step 3: Publication of the Application

After the application is accepted as valid, within 2 months, the information will be published in the Industrial Property Gazette.

Step 4: Substantive Examination

The Intellectual Property Office will assess the eligibility of the trademark for protection based on protection conditions and determine the scope of protection. This process takes around 9 months from the date of publication.

Step 5: Decision on Granting or Refusing the Protection Title

• Refusal to grant a protection title**: If the trademark does not meet the protection requirements.
• Granting the protection title: If the trademark meets the requirements and the applicant has paid all necessary fees and charges. The decision will be recorded in the National Trademark Register and published in the Industrial Property Gazette.

See more:  Vietnam Intellectual Property Representative Organization

Trademark Registration Services at NVCS Law Firm

Many people often wonder how to register a trademark quickly. If you find the trademark registration process too complex and time-consuming, you can turn to reputable legal consulting services at NVCS Law Firm. With years of experience in trademark registration, we are confident in meeting all customer requirements.

NVCS Law Firm not only addresses the challenges related to trademark registration but also assists clients with the following tasks:

• Providing complete legal and practical information necessary for the trademark registration process.
• Fully preparing the necessary procedures, completing the application, and submitting the trademark registration application on behalf of the business. Clients only need to provide the NVCS Law Firm with a power of attorney. We will handle all procedures and deliver the Trademark Registration Certificate issued by the Intellectual Property Office to the client.
• Monitoring the application and responding to any requests from the Intellectual Property Office.
• Advising and supporting clients with post-registration tasks, including procedures related to renewing protection certificates and strategies to protect the trademark.

If you are looking to register trademark ownership, don't hesitate to contact Apolat Legal for prompt consultation and support!

Lawyer: Mr. Tony

Phone: +84 919 195 939

Email: tuulawyer@nvcs.vn

Website: nvcs.vn