How to file a trademark in Vietnam: a comprehensive guide to protecting your Intellectual Property

Intellectual property (IP) can be a firm’s most valuable asset. Therefore, knowing how to file a trademark is crucial for trademark protection in Vietnam. This guide outlines the procedure for trademarks in Vietnam.

Who Can File Trademark in Vietnam?

Organizations, individuals, and foreign entities can file trademark applications in Vietnam. They can submit applications directly or through a lawful representative within Vietnam. However, foreign individuals who are not permanent residents in Vietnam and foreign organizations or individuals who do not have a production or trading establishment in Vietnam must file their applications through a lawful IP representative. Foreign applicants can also obtain trademark rights in Vietnam by submitting an international application through the Madrid System.

Contact ASL for Filing Trademark in Vietnam:

Email: [email protected]

WhatsApp/WeChat: (+65) 8749 6692

Definition of a Trademark in Vietnam

In Vietnam, a trademark is any sign that distinguishes the goods or services of different organizations or individuals. The signs eligible for registration as trademarks must be visible and can include: letters, numerals, words, pictures, images, including three-dimensional images, and combinations of the above, presented in one or several given colors.

Trademark Registration Through the Intellectual Property Office of Vietnam (IPVN)

To file a trademark application through the IPVN, the following key documents are required:

1. Declaration for Registration: According to Circular No. 01/2007/TT-BKHCN.
2. Five Images of Trademark.
3. Receipts for fees: Proof of payment for the necessary fees.
4. Terms of Use: If the trademark is to be used by multiple organizations.

When filing a trademark application in Vietnam, the following additional documents must be submitted:

• Power of Attorney (a form of ASL)
• Documents Certifying Permission to Use Special Signs: For instance, national emblems, flags, armorial bearings, names of state agencies, or international organizations.
• Proof of Priority Right, if any

General Requirements for Industrial Property (IP) Registration Applications

When filing a Vietnam trademark registration application, certain general requirements must be met:

1. Language of Documents: All documents must be in Vietnamese. For documents allowed to be in another language per Points 7.3 and 7.4 of Circular No. 01/2007/TT-BKHCN, they must be translated into Vietnamese.
2. Document Format: All documents must be presented in portrait format (except for drawings, figures, charts, and tables, which may be in landscape) on A4 paper sheets (210 mm x 297 mm). The top, bottom, left, and right margins must all be 20 mm. The text should be in Times New Roman font, size not smaller than 13, except for documents originally not intended to be included in the application.
3. Use of Pre-Designed Forms: For documents that must be made according to pre-designed forms, those forms should be used with all necessary information filled in the appropriate sections.
4. Page Numbering: Documents consisting of many pages must have page numbers in Arabic numerals.
5. Clarity and Cleanliness: All documents must be typewritten or printed with non-fading ink, clear and clean, and free from erasures and modifications. If there are any negligible spelling errors in a document submitted to the Intellectual Property Office of Vietnam (IPVN), the applicant may correct such errors but must append their signature of certification (and a seal, if any) at the corrected words.
6. Common Terms and Standards: Terms used in the application must be common ones (other than dialects, rare words, or coined words). Symbols, units of measurement, electronic fonts, and spelling rules used in the application must conform to Vietnam standards.
7. Electronic Data Carriers: The application may be accompanied by carriers of electronic data for part or the entire content of its documents.

When filing a trademark application in Vietnam, applicants have two primary methods to choose from: paper filing and online filing. Each method has its procedures and requirements.

Paper Filing

Paper filing involves submitting a physical application either directly to one of the IPVN’s offices or via postal service. Here are the detailed steps:

1. Preparation of Documents: Gather all required documents, including the declaration for registration, images of the design, receipts for fees, terms of use, explanations of product characteristics, and any necessary permissions.
2. Submission of Application: Submit the completed application form and accompanying documents directly to an IPVN office or send them via postal service. Ensure all documents are properly signed and authenticated as required.
3. Payment of Fees: Transfer the application fees through the postal service. Attach the receipt of the payment to the application package.
4. Receipt of Application Number: Upon submission, the IPVN will review the documents. If everything is in order, an application number will be issued, which the applicant can use to track the status of their application.

Online Filing (not stable during this time, only recommended during the COVID time)

Online filing is a more streamlined process that involves the use of digital tools. Here’s how to apply online:

1. Digital Certificate and Signature: Obtain a digital certificate and a digital signature. These are essential for online submissions and ensure the authenticity and security of the application.
2. Registered Account: Create and register an account on the IPVN’s Online Application Receiving System. This account must be approved by the IPVN before it can be used for submissions.
3. Online Application Form: Complete the application form online. Ensure all details are accurately filled in and all required documents are uploaded in the correct format.
4. Print and Present: After completing the online form, print it out and present it, along with the necessary documents, to an IPVN office.
5. Payment of Fees: Pay the required fees online or via postal service. Attach proof of payment to the application package.
6. Application Number: Once the application is submitted and verified, an application number will be issued.

Time Limit for Processing Trademark Registration Applications (practically 16-18 months at least due to the backlog of the IP Office)

From the date on which the registration application is received by the IPVN, the registration application of a trademark shall be examined in the following order:

1. Formality Examination: A trademark registration application shall have its formality examination within one month from the filing date.
2. Publication of Trademark Registration Applications: A trademark registration application shall be published within two months after it is accepted as a valid application.
3. Substantive Examination: An industrial property registration application shall be substantively examined within nine months from the date of application publication.

If the trademark is accepted to issue a trademark certificate, it shall be valid for 10 years from the filing date.

Trademark Registration Through the Madrid System

The Madrid System allows for international registration of trademarks, enabling trademark holders in Vietnam to extend their protection globally. This system is particularly beneficial for businesses looking to operate in multiple countries.

WIPO plays a critical role in the Madrid System, handling the international aspect of trademark registration:

1. Receiving Applications: WIPO receives applications for international registration that are initially filed through the office in the applicant’s country of origin.
2. Classification and Processing: WIPO classifies the goods and services associated with the trademark, processes the application, and ensures it meets all requirements.
3. Registration and Notification: Once the application is processed, WIPO registers the trademark in its database, notifies the office of origin, and publishes the registered marks in a periodical gazette.

Contact ASL for Filing Trademark in Vietnam:

Email: [email protected]

WhatsApp/WeChat: (+65) 8749 6692

The first-to-file principle of trademark in Vietnam

Viet Nam has adopted the first-to-file system, which prioritizes the chronological order of applications over the actual date of trademark use in commerce. This system is designed to provide a clear and orderly framework for trademark registration in Vietnam, ensuring that the rights to a trademark are awarded to the party who first sought to register it, provided all legal requirements are met.

Under this principle, when multiple parties file applications for the same trademark, the Intellectual Property Office of Vietnam (IPVN) will grant registration to the application that has the earliest priority date or filing date and meets all conditions required by law. This is to prevent disputes and confusion over trademark ownership and to streamline the registration process.

In cases where multiple applications fulfill all conditions and share the same earliest priority or filing date, the IPVN will only grant registration to one of the applications. This decision is contingent upon an agreement among all the applicants. If such an agreement cannot be reached, the IPVN will refuse to grant registration to any of the applications.

The implications of the first-to-file system are significant for businesses and individuals seeking trademark protection in Vietnam. It underscores the importance of filing a trademark application promptly after a trademark is created. Delaying the filing process or disclosing the trademark publicly before filing can jeopardize the ability to secure exclusive rights to the trademark. Therefore, applicants are strongly advised to keep their inventions confidential until the application is filed.

The first-to-file system in Vietnam aligns with international practices and provides a predictable and reliable framework for trademark registration. It encourages applicants to act swiftly and diligently in protecting their intellectual property rights. For foreign entities seeking trademark protection in Vietnam, it is essential to understand this principle and work with a lawful representative in Vietnam to navigate the registration process effectively.

Conclusion

Trademark registration in Vietnam involves several steps and the submission of various documents. By understanding the requirements and processes, organizations and individuals can effectively protect their intellectual property within Vietnam and internationally through the Madrid System.

*** After more than 10 years of operation, ASL has been ranked as the top-tier IP Firm for years by Legal500, AsiaLaw, and WTR. We have been well known for OneTouch of IP protection in more than 27 countries with Budget savings from 15-35%. The more clients file trademark, patent, and industrial designs through ASL, the more savings our clients receive.