Trademark registration is essential for trademark protection in Vietnam. This article provides a comprehensive guide on how to register a trademark in Vietnam, outlining the necessary documents, general requirements, and methods of filing an application.
What can be registered as a trademark in Vietnam?
A trademark, by definition, is any sign used to distinguish the goods or services of different organizations or individuals. In Vietnam, signs eligible for trademark registration must be visible, including letters, numerals, words, pictures, images (including three-dimensional images), or their combinations, presented in one or several given colors.
Minimum Documents Required to Register a Trademark in Vietnam
To register a trademark in Vietnam, you must prepare the following minimum documents:
- Trademark application form: Two copies of the declaration for registration, typed according to form No. 04-NH Appendix A of Circular No. 01/2007/TT-BKHCN. The trademark description must include a sample of the mark, clarifying its elements and comprehensive meaning. If the mark contains words or phrases in foreign languages or hieroglyphic languages, these must be translated or transcribed into Vietnamese. Similarly, numerals other than Arabic and Roman numerals must be transliterated into Arabic numerals. The section listing goods and services bearing the mark must be divided into groups per the latest version of the Nice Classification published by the IPVN in the Industrial Property Official Gazette.
- Trademark Specimens: In addition to the trademark specimen attached to the written declaration, the application must include five identical mark specimens. These must be presented with dimensions of each element ranging between 8 mm and 80 mm, and the entire mark must fit within an 80 mm x 80 mm space in the written declaration. If the mark involves colors, the specimens must show the colors sought for protection.
- Fee and Charge Receipts: Receipts for the necessary fees must be included.
- Language of Documents: All documents must be in Vietnamese. If allowed to be in another language according to Points 7.3 and 7.4 of Circular No. 01/2007/TT-BKHCN, they must be translated into Vietnamese.
Contact ASL for Filing Trademark in Vietnam:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
Additional Documents for Collective or Certification Marks
For applications registering a collective or certification mark, additional documents are required:
- Regulations on Use: Regulations governing the use of collective and certification marks.
- Explanation of Characteristics and Quality: Explanation of the unique characteristics and quality of the product bearing the mark, if applicable.
- Map Showing Indicated Territory: A map showing the indicated territory if the mark certifies the geographical origin of a product.
- Permission from Local Authorities: Document from the People’s Committee of a province or city permitting the use of geographical names or signs indicating the geographical origin of local specialties if the mark includes such elements.
Other Documents (If Applicable)
- Power of Attorney: A power of attorney if the application is filed through a representative.
- Permission to Use Special Signs: Documents certifying permission to use special signs such as emblems, flags, or names of state agencies or international organizations.
- Proof of Priority Right: Documents evidencing the right of priority if the application claims a priority right.
Methods for Trademark Registration in Vietnam
Applicants can choose between paper filing or online filing through the IPVN’s online public service portal.
Paper Filing
Applicants may apply for a trademark directly or via postal service to the IPVN’s offices.
Online Filing
Conditions for online filing include the possession of a digital certificate, a digital signature, and a registered account approved by the IPVN’s Online Application Receiving System.
Steps for Online Filing:
- Complete Online Form: Fill out the trademark application form on the IPVN’s Online Application Receiving System.
- Confirmation of Submission: Receive a confirmation of online submission.
- Submit Documents and Pay Fees: Present the confirmation of online submission, attach necessary documents, and pay fees at one of the IPVN’s offices within one month of the online submission date.
- Application Number Issuance: If all documents and fees are submitted correctly, an application number will be issued. If not, the application will be denied, and an online application cancellation notice will be sent.
Trademark Procedure in Vietnam
- First stage: Filing trademark application in Vietnam: 1-2 days;
- Second stage: Formality acceptance of trademark application: 1-2 months from the filing date;
- Third stage: Publication of Vietnam trademark registration. Within 2 months from the formality acceptance, the Vietnam trademark shall be published in the Vietnam IP Gazette;
- Fourth stage: Substantive examination. Within 9-12 months from the publication date, the trademark shall be accepted for registration or refused.
In practice, the trademark procedure in Vietnam shall take at least 16-18 months due to the backlog of the Vietnam IP Office.
How long is the validity of the Vietnam trademark after being issued a trademark certificate?
Vietnam Trademark shall be valid for 10 years (counted from the filing date) after being registered successfully. It can be renewed after every ten years.
Contact ASL for Filing Trademark in Vietnam:
Email: [email protected]
WhatsApp/WeChat: (+65) 8749 6692
Register a Trademark in Vietnam Through the Madrid System
The Madrid System facilitates the international registration of trademarks, allowing trademark holders in Vietnam to extend their protection globally. This system is particularly beneficial for businesses looking to operate in multiple countries.
The Role of the World Intellectual Property Organization (WIPO)
WIPO handles the international aspect of trademark registration:
- Receiving Applications: WIPO receives applications for international registration initially filed through the office in the applicant’s country of origin.
- Classification and Processing: WIPO classifies the goods and services associated with the trademark, processes the application, and ensures it meets all requirements.
- Registration and Notification: Once processed, WIPO registers the trademark in its database, notifies the office of origin, and publishes the registered marks in a periodical gazette.
Reasons for Trademark Refusal in Vietnam
When filing for a trademark in Vietnam, applicants may face refusals based on several grounds. Understanding these reasons can help in preparing applications and addressing potential issues proactively.
Trademark Refusal for Lack of Distinctive Character
One common ground for trademark refusal in Vietnam is the lack of distinctive character. A trademark is considered to lack distinctive character if it fails to perform its primary function of distinguishing the origin of goods and services offered by different entities.
Elements leading to a lack of distinctiveness could include:
- Generic Terms: Trademarks that use common, everyday words that describe the product or service.
- Descriptive Terms: Trademarks that merely describe a characteristic or quality of the product, such as “Fresh” for a juice brand.
- Common Symbols: Trademarks using symbols widely recognized and used in everyday language, like a simple star or heart.
Overcoming the Lack of Distinctiveness of Vietnam Trademark Registration
If a trademark contains elements prohibited under Vietnamese law, no arguments can overcome this type of refusal. However, if the trademark is not prohibited, the applicant must provide arguments and supporting evidence to demonstrate its distinctive character.
Trademark Refusal Due to Similarity with Other Trademarks
Another frequent reason for trademark refusal is the similarity to existing trademarks, known as cited trademarks. A trademark may be rejected if it is deemed too similar to an already registered trademark, potentially causing confusion among consumers.
Assessing the similarity between trademarks in Vietnam
- Visual Similarity: How the trademarks look when compared side by side.
- Phonetic Similarity: How the trademarks sound when pronounced.
- Conceptual Similarity: The overall idea or impression conveyed by the trademarks.
Overcoming Similarity Issues of registering a trademark in Vietnam
To overcome a refusal based on similarity, the applicant needs to demonstrate that the proposed trademark is dissimilar to the cited trademark(s) and does not create any likelihood of confusion. This could involve:
- Detailed Comparison: Providing a detailed analysis showing differences in appearance, sound, and meaning.
- Different Market Sectors: Demonstrating that the trademarks are used in completely different market sectors, reducing the risk of confusion.
Registering a trademark in Vietnam involves navigating a detailed process that requires careful preparation of various documents and adherence to specific guidelines. Understanding the requirements for both national and international trademark registration can help applicants ensure a smooth and successful application process. Given the complexities involved, especially for foreign applicants, seeking assistance from local IP experts is highly recommended. These professionals can provide valuable guidance and support, effectively helping businesses gain trademark protection in Vietnam.
*** 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.
Leave a Reply