What is the relevant Vietnam trade mark authority?
The relevant Vietnam trademark authority is the National Office of Intellectual Property of Vietnam (NOIP).
What is the relevant Vietnam trade mark legislation?
Vietnam IP Law 2005, amended in 2009 (Amended IP Law 2009) and a number of Government Decrees and Ministries’ Circulars concerned such as Decree No.103/2006/ND-CP detailing and guiding the implementation of IP Law, Circular No.01/2007/TT-BKHCN guiding the implementation of Government Decree No.103/2006/ND-CP, and Decree No. 97/2010/ND-CP on sanctioning administrative violations in industrial property, etc., are the relevant legislation.
What can be registered as a trade mark?
A trademark may be a word or words, letters, pictures, figures, including three-dimensional figures, or a combination thereof, either in one or more colors.
What cannot be registered as a trade mark?
Smells and sounds cannot be registered as a trademark in Vietnam.
What information is needed to register a trade mark? The following information is required:
+ Full name and address of the applicant and full name, address and telephone number of the agent.
+ Indication of the type of mark concerned (trademark, service mark, certification mark, collective mark).
+ If the mark is in color, indication of the color(s) concerned.
+ Brief description in words of the pictorial and distinguishing elements of the mark and the general structure of the mark.
+ If priority is to be claimed, an indication of the Convention or agreement on which priority is based, and of the number, country and date of the application whose priority is claimed.
Indication of the goods or services for which registration is desired and of the class or classes of the International Classification to which they belong.
+ If the mark contains a word or words in a language other than Vietnamese or English, a transliteration or an English translation of same must be given.
In case of an application for the registration of a collective mark or certification mark, the rules for the use of the mark must be filed.
What is the general procedure for trade mark registration?
After an application is filed, it is first examined as to compliance with the formal requirements within one month from the filing date. If formal defects are found, the application will be rejected, and the applicant may then amend or correct the application within one month. If the application is found formally in order, it will be accepted as such and a notice of acceptance confirming the filing date and application number will be issued and the application is published (within two months from the date of the notice of acceptance by NOIP). Thereafter, the application will be subjected to an examination as to registrability. If the mark during substantive examination is found registrable and the fees are found duly paid, a decision to grant registration will be taken. The mark will then be registered, a notice concerning the registration will be published in the Industrial Property Official Gazette and a Certificate of Registration will be issued.
How can a trade mark be adequately graphically represented?
A trademark can be adequately graphically represented when the representation is clear, precise, self-contained, and capable of distinguishing so that this graphical representation can precisely determine what the sign is, enabling a person looking at the trade mark to understand what the trademark is.
How are goods and services described?
Class headings or general description of the designated goods/services are not accepted. It is necessary to describe such goods/services in detail.
What territories (including dependants, colonies, etc.) are or can be covered by a Vietnam trade mark?
A Vietnam trademark is valid in Vietnam. Vietnam does not have any dependant territories or colonies.
Who can own a Vietnam trade mark?
A legal entity or natural person having a licensed business, including a foreigner, has the right to registration of a mark to be used for goods or services he or she produced or supplied.
Can a trade mark acquire distinctive character through use?
Yes, if such sign has been functioned as a trade mark and has been widely known by customers.
How long on average does registration take?
On average, the registration takes 12-18 months.
Is there more than one route to obtaining a registration in Vietnam?
Yes. A trademark that has jurisdiction in Vietnam can be obtained by filing a Vietnam national application or an international application designating Vietnam under the Madrid Protocol and/or Madrid Agreement.
Is a Power of Attorney needed? Yes. An original power of attorney, signed by the applicant’s representative, must be filed within one month from the filing date.
Does Vietnam recognize Collective or Certification marks?
Yes. Collective marks distinguish goods or services of members from those of non-members of an organization that is the owner of the mark; whereas, certification marks are marks licensed by their owners to other organizations or individuals to use for their goods or services in order to certify characteristics in respect of origin, materials, raw materials and methods of production or methods of supply, quality, accuracy, safety or other characteristics of such goods or services.
What are the absolute grounds for refusal of registration?
The absolute grounds for refusal of registration include:
- signs lacking distinctive characteristics, such as simple geometric shapes, figures, letters and words of uncommon languages. However, such signs may be protected as a mark if they have become distinctive through extensive use and are recognized as a mark;
- signs, symbols, pictures or common names of goods in any language, which are common knowledge or which have been extensively and often used;
- signs indicating the time, place, method of manufacture, kind, quantity, quality, property, composition, purpose or value of the goods or services, or being otherwise of descriptive character in relation to the goods or services or their origin. However, such signs may be protected as a mark if they have acquired distinctiveness through use before the filing of trademark applications;
- signs being identical with or confusingly similar to quality marks, control marks, warranty marks or like marks of international organizations having noticed and requested for repression of use of such marks, except for the very marks registered as certification marks in the name of the very organizations;
- signs being identical with or confusingly similar to a State flag, State emblems of countries, or symbols, flags, armorial bearings, abbreviations or 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, except with the consent of the relevant agencies or organizations;
- signs being identical or confusingly similar to real names, aliases, pen names or images of leaders, national heroes or distinguished persons of Vietnam or foreign countries;
- signs liable to mislead, confuse or deceive consumers as to the origin, nature, functions, intended purposes, quality, value or other characteristics of the goods or services;
- signs describing the legal status and domain of activity of business entities; and
- signs indicating the geographical origin of goods or services, however such except for those signs which have been widely used and recognized as a trademark or registered as collective marks or certification marks.
What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
Any party to a decision of refusal of registration from the NOIP has the right to appeal that decision.
What is the route of appeal?
An appeal against the rejection of an application or refusal to grant registration may be lodged with the NOIP within ninety (90) days from the date the appellant receives the decision or notice concerned. Against the decision on the appeal, further appeal may be lodged within thirty (30) days with the MoST, or administrative proceedings may be instituted. In case of disagreement with the decision of the MoST, the appellant still has the right to initiate a lawsuit in accordance with administrative procedures.
What are the relative grounds for refusal of registration?
Relative grounds for refusal registration on account of the existence of rights of other parties include:
- signs being identical with or confusingly similar to the mark of another party registered in Vietnam or registered in an international registration under the Madrid Agreement or the Protocol extending to Vietnam for the same or similar goods or services;
- signs being identical with or confusingly similar to a mark whose registration in Vietnam or whose international registration under the Madrid Agreement or the Protocol extending to Vietnam has been applied for the same or similar goods or services in an application having an earlier filing or priority date. This applies even for marks belonging to the same owners except for associated marks;
- signs being identical with or confusingly similar to a mark of another party the registration of which has expired or was cancelled less than five years ago, except if it was cancelled only on account of non-use;
- signs being identical with or confusingly similar to the mark of another party which is recognized as a well-known mark in accordance with Article 6bis of the Paris Convention or being identical with or confusingly similar to the mark of another party which is used on an extensive scale and recognized as that other person’s mark;
- signs being identical with or confusingly similar to a protected trade name if the use of such signs is likely to cause confusion to consumers as to origin of goods or services, or a protected geographical indication if the use of such signs is likely to cause confusion to consumers as to geographical origin of goods;
- signs identical with a geographical indication or consist of a geographical indication or being translated or transliterated from a protected geographical indication for wines or spirits, if such signs shall be registered for wines or spirits not originating from the place indicated by that geographical indication;
- signs being identical with or not significantly different from a protected industrial design or an industrial design whose protection has been applied for, having an earlier priority date; and
In case of an application for the registration of a mark identical or similar to an earlier mark of another party, a letter of consent of that other party could be filed, but the NOIP in such case may still refuse registration if it is of the opinion that registration of the mark may lead to confusion in connection therewith it should be stated in the letter of consent that the simultaneous use of the marks by both parties concerned will not cause confusion amongst the public.
Are there ways to overcome a relative grounds objection?
A relative grounds objection can be overcome by limiting the specification so that no conflict remains, obtaining consent from the relevant earlier rights owner or removing the earlier mark from the register through revocation or invalidation due to non-use of a registered mark or bad faith registration.
On what grounds can a trade mark be opposed?
The grounds on which a trademark can be opposed are:
- The applicant for registration neither has the right to registration nor has been assigned such right.
- The subject matter of the trademark failed to satisfy the protection conditions at the grant date of the Certificate.
Who can oppose the registration of a Vietnam trade mark?
Any legal entity or natural person can oppose the registration of a Vietnam trademark.
What is the procedure for opposition?
During the period from the date a trademark application is published (which takes place within two months from the date of the notice of acceptance by the NOIP) to the date of decision on the grant of a trademark registration certificate, any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a trademark registration certificate.
What happens when a trade mark is granted registration?
Registration of a trademark is published in the Industrial Property Official Gazette and a registration certificate is sent to the owner of the trademark.
From which date following application do an applicant’s trade mark rights commence?
Trademark rights commence from the granting date.
What is the term of a trade mark?
The term of a trademark is ten years counted from the filing date, and is renewable indefinitely for consecutive terms of ten years.
How is a trade mark renewed?
The request for renewal must be filed and the renewal fee be paid within six months before the expiration of the running period, or within six months after the expiration provided that a surcharge amounting to 10% of the renewal fee shall be paid for each month of late filing.