Procedure of trademark application in Vietnam: Guide to protect IP In Vietnam

Trademark registration is an essential process for trademark protection in Vietnam for businesses and individuals. This article provides a detailed overview of the procedure to register a trademark in Vietnam, including the necessary documentation, application process, and examination stages.

What is a trademark in Vietnam?

According to the Vietnam IP Law, a trademark is defined as any sign used to distinguish goods or services of different organizations or individuals. These signs can include letters, numerals, words, pictures, images (including three-dimensional images), or their combinations, presented in one or several given colors.

First-to-File Principle of Vietnam Trademark

Vietnam adopts the first-to-file system. If multiple applications are filed for the same mark, the registration is granted to the valid application with the earliest priority or filing date. If multiple applications have the same priority or filing date and meet all conditions, registration is granted to one application agreed upon by all applicants. Without such an agreement, all applications will be refused.

Required documents to file a trademark application in Vietnam

The Vietnam trademark application must include several essential documents:

1. Mark Specimens: the trademark applicant needs to submit five identical mark specimens. Each element of the mark must have dimensions between 8 mm and 80 mm, and the entire mark must fit within an 80 mm x 80 mm model. For marks involving colors, the specimens must be presented in the colors sought for protection.
2. Form of trademark application: This includes a detailed description of the trademark, clarifying its elements and comprehensive meaning. If the mark consists of words or phrases in foreign languages or hieroglyphic languages, they must be translated or transcribed into Vietnamese. Numerals other than Arabic and Roman numerals must be transliterated into Arabic numerals. The list of goods and services bearing the mark must be divided into groups according to the International Classification of Goods and Services (Nice Classification).
3. Fee and Charge Receipts

1. Language: All documents must be in Vietnamese. Documents allowed in another language must be translated into Vietnamese as per Circular No. 01/2007/TT-BKHCN.

For Vietnam trademark applications involving collective or certification marks, additional documents are required:

• Regulations on Use: Regulations governing the use of collective or certification marks.
• Explanation of Characteristics: Explanation of particular characteristics and quality of the product bearing the mark.
• Geographical Indications: Map showing the indicated territory if the mark certifies the geographical origin of a product.
• Permission for the use of Geographic Names: Document from the People’s Committee permitting the use of geographical names or signs indicating the geographical origin of local specialties.

Other Documents (if applicable) of application for trademark in Vietnam

• Power of Attorney (a form of ASL): Required if the request is filed through a representative.
• Permission to Use Special Signs: Documents certifying the permission to use special signs like emblems, flags, or names of Vietnamese state agencies or international organizations.
• Priority Right document: Documents evidencing the right of priority if the application claims priority.

Time Limit for the Procedure of Trademark Applications in Vietnam

Practically, it shall take at least 16-18 months from the filing date to receive the notification of the substantive examination result of the Vietnam trademark application due to the backlog of the Vietnam IP Office.

Contact ASL for Filing Trademark in Vietnam:

Email: [email protected]

WhatsApp/WeChat: (+65) 8749 6692

Step-by-Step Procedure of Trademark Application in Vietnam

The procedure of trademark application in Vietnam includes several critical steps. Understanding the complexity of each step, from fling to publication and eventual registration, is essential for securing your intellectual property rights in Vietnam.

1. Filing Vietnam Trademark Application: Applications must be filed directly or by mail to IPVN or its branch offices in Ho Chi Minh City or Da Nang. Vietnamese organizations and individuals, foreign individuals residing in Vietnam, and foreign organizations with a production or trading establishment in Vietnam may file directly or through a lawful representative. Foreign individuals and organizations without such an establishment in Vietnam must file through a lawful representative.
2. Formality Examination: The IPVN conducts a formality examination to evaluate the validity of the application within one month from the filing date. If corrections or supplements are needed, the examination period may be extended.
3. Request for Correction and Amendment: Before the formality examination deadline, the IPVN notifies the applicant of the examination results. Valid applications receive a notice of acceptance, while invalid applications receive a notice of intended refusal with reasons and a time limit for correction or objection.
4. Refusal to Accept the Valid Application: If the applicant fails to correct errors or makes unreasonable objections within the set time limit, the IPVN issues a notice of refusal. Applicants may complain to the Director General of IPVN or initiate a lawsuit within 90 days of receiving the notice.
5. Publication of the Vietnam Trademark Application: Accepted applications are published in the Industrial Property Official Gazette within two months for oppositions and comments from third parties. A publication fee is required.
6. Substantive Examination: The IPVN conducts a substantive examination within six months from the date of publication to assess the eligibility of the trademark. If corrections or supplements are needed, the examination period may be extended.
7. Notification of Substantive Examination Results: The IPVN sends one of the following notices by the end of the substantive examination period:

• Intended Refusal: If the trademark does not meet protection conditions, a notice of intended refusal is issued, specifying reasons and giving the applicant two months to respond.
• Intended Grant with Corrections: If the trademark meets protection conditions but has errors, a notice of the intended grant with required corrections is issued, giving the applicant two months to make necessary corrections.
• Intended Grant: If the trademark satisfies all conditions, a notice of intended grant and a request for payment of the registration fee are issued.

8. Notification of Refusal: If the applicant fails to correct errors or makes unreasonable objections within the set time limit, the IPVN issues a notice of refusal. Applicants may appeal the decision with the Director General of IPVN or initiate lawsuits.
9. Notification of Intention to Grant a Vietnam Trademark Registration Certificate: If the application fulfills all requirements, the IPVN issues a notification of its intention to grant the registration and requests the payment of the issuance fee.
10. Issuance of the Vietnam Trademark Registration Certificate: Within 10 days after the applicant pays the prescribed fees, the IPVN grants the Trademark Registration Certificate.
11. Entry into the National Register and Publication: The certificate is recorded in the National Register of Marks and published in the Industrial Property Official Gazette within two months after issuance. A publication fee is required.

International Trademark Registration designating Vietnam

Foreign applicants can register a trademark in Vietnam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) under the Madrid Agreement the Madrid Protocol, or both. The IPVN, if accepting the international application, issues a decision on acceptance for trademark protection in Vietnam and publishes it in the Industrial Property Official Gazette.

Trademark Protection in Vietnam and Renewal

In Vietnam, the validity of a trademark protection title, also known as a trademark registration certificate, commences from the date of grant and extends to the end of 10 years from the filing date. Trademark holders can renew this validity multiple times, each renewal extending the protection for an additional ten-year period. The renewal can apply to all or part of the list of goods and services covered in the original trademark registration.

Finally, the procedure of trademark application in Vietnam involves a comprehensive process requiring meticulous preparation and adherence to specific requirements. By understanding the steps involved and ensuring that all documentation is accurate and complete, applicants can effectively secure their trademarks, protecting their intellectual property and enhancing their business competitiveness in Vietnam’s market.

Contact ASL for Filing Trademark in Vietnam:

Email: [email protected]

WhatsApp/WeChat: (+65) 8749 6692

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