vietnam

HOW REGISTER TRADEMARK IN VIETNAM

HOW REGISTER TRADEMARK IN VIETNAM

Register trademark Vietnam with 5 step:

#1. Step 1: Search for the possibility of trademark registration

#2. Step 2: File the trademark application

#3. Step 3: Follow up trademark registration records at the National Office of Intellectual Property

#4. Step 4: Grant protection certificate or respond to the refusal notification

#5. Step 5: Renew the validity of the trademark registration certificate

Register trademark Vietnam:Is stipulated by law, an undisputed registration process takes 9-10 months involving three stages: (i) examination as to formality and publication of application (3 months); (ii) examination as to substance (6 months); and (iii) issuance of a registration certificate (10 days). However, it often takes quite longer in practice due to the slow process of consideration of applications at the Trademark Office.

What is required for filing a trademark application in Vietnam?

For filing a trademark application in Vietnam, the following information and documents are required:

(i) Full name and address of the Applicant (required at the time of filing);
(ii) A phonetic transcription/transliteration and identification of the language used should be indicated if there are any elements of the trademark with wording other than in Roman characters (required at the time of filing);
(iii) A detailed specification of goods and/or services and its corresponding international class, if known (required at the time of filing);
(iv) A Power of Attorney, which is signed by the Applicant. No legalization or notarization is required (required within one (1) month from the filing date);
(v) Fifteen (15) clear print/specimen of the mark of a size, which is not in excess of 80x80mm and less than 15x15mm (required at the time of filing);
(vi) A certified true copy of the basic application if a convention priority is claimed and its sworn Vietnamese translation (required within 1 month from the filing date).


How long does it take to get a registration of a straightforward trademark application?

Is stipulated by law, an undisputed registration process takes 9-10 months involving three stages: (i) examination as to formality and publication of application (3 months); (ii) examination as to substance (6 months); and (iii) issuance of a registration certificate (10 days). However, it often takes quite longer in practice due to the slow process of consideration of applications at the Trademark Office.


What is the estimate of costs for filing a trademark application in Vietnam?

The costs for filing a trademark application in Vietnam are varied depending o­n the number of goods/services listed in the application.

In particular, the official filing fees are calculated based o­n the number of goods/services listed o­n each application, (i) US$37.00 for the first class not exceeding 06 items of goods/services and US$30.00 per each additional class not exceeding 06 items of goods/services (if any) and US$6.40 per each additional item of goods/services in excess of 06. Meanwhile, our attorney fees are charged based o­n the number of class listed therein at the rates of US$160.00 for the first class not exceeding to 06 items of goods/services and US$100.00 for each additional class not exceeding 06 items of goods/service, and US$3 for each addition item of goods/services in excess of 06.

Accordingly, the estimate of the costs (including both official fee and our charges) for filing a straightforward application in o­ne class not exceeding 06 items of goods/services is US$197 and for each additional class from the second o­ne not exceeding 06 items of goods/services is US$130. To calculate the costs, please click here.


Is a pre-filing trademark search necessary? How long does it take and how much does it cost?

To avoid the possibility of potential rejection or a risk of opposition, a pre-filing search is highly recommended. The estimate of costs for conducting a similar search is 100.00US$ per class. 50US$ will be additionally charged if professional advice o­n the availability of the mark is required.

A search report can be delivered within 02 to 03 days from the date of receiving client's instructions.


What is trademark? What are registrable marks in Vietnam?

Trademark means any sign used to distinguish goods and/or services of different organizations or individuals.

A trademark may be in the form of word (Vinataba, Chi Long), name (Giorgio Armani, Tien Dat), symbol or device (Ebay device, Thai Tuan device), slogan (Think different, Khoi nguon sang tao), or combination of these elements and is manifested in o­ne or more colors.

Registrable marks must be distinctive. Indistinctive marks include, but not limited to i) simple geometrical shapes, numerical figures, alphabetical letters, letters that cannot pronounced as a word or letter of foreign languages that are not commonly used; ii) marks which indicate time, place, origin, quality, nature, purpose, etc. of the goods/services in question. However, it is possible to secure registration of an inherently indistinctive mark by proving it has become distinctive of the applicant's goods/services through use in commerce (i.e. secondary meaning)


Are three-dimensional trademarks protected in Vietnam?

Since July 1, 2006 where the Intellectual Property Law came into force, the protection of three-dimensional mark is officially recognized in Vietnam. The NOIP is very strict in examining the distinctiveness of the three-dimensional mark that relate to the shape of the designated goods or their packages. Generally, if the shape can be recognized as no more than the shape of the designated goods, the shape cannot be registered as a three dimensional trademark unless it has acquired distinctiveness through long and extensive use.


How are well-known trademarks protected in Vietnam?

As a party to the Paris Convention, Vietnam is obligated to give a special protection to well-known trademark. A well-known trademark is defined as a mark that becomes widely known in the whole territory of Vietnam. Rights over a well-known trademark are established based o­n use, not based on registration.


Why should a trademark be registered?

Trademarks should be registered with the competent authority to enjoy legal protection. By registration, the trademark owner can protect the right over his mark by preventing others from applying for or using identical or similar marks in respect of identical or similar or related goods and services and thus reducing damages to the benefit and interest derived from the trademark that any third party may cause.




Who can file applications for registration of trademarks in Vietnam?

Individuals, legal entities or other subjects lawfully engaged in production activities in Vietnam may, directly or through an Industrial Property Representative Service organization, file applications for registration of their trademarks in Vietnam. For foreign individuals or legal entities that do not have a legal representative or actual production or business facilities in Vietnam, they can file applications for registration of trademarks through an IP Representative Service organization only.


Is a multi-class trademark application accepted by the Trademark Office?

Yes, it is possible to file an application for o­ne trademark covering more than o­ne class of goods/services in Vietnam but subject to be accompanied by additional fee for each additional class.


How are goods classified in Vietnam?

The International classification of goods/services under Ninth Agreement is currently applied in Vietnam. The specification of goods/services of an application should include those goods/services upon which the mark is used or there is a present bone fide intention to use the mark. Those goods/services must be described in sufficient detail. The indication of goods/services is preferably correlative or equivalent to the basis number listed in the 9th edition of the Nice Classification.


Are class headings applicable in Vietnam?

No. Class headings or general description of the designated goods/services are not applicable to the TM Office. It is necessary to describe such goods/services in full detail.


Is it possible to amend the trademark itself and the designated goods/services under the pending application?

Yes. The applicant may amend the trademark itself and/or the designated goods/services under the pending application, provided that such amendments will not change the nature of the mark as filed and/or not broaden the scope of protection of the designated goods/services.


When do trademarks possessing no distinctive characteristic get protection?

As stipulated by law, marks which do not possess distinctive characteristics, such as simple shapes and geometrical shapes, numerical figures, alphabetical letters, letters which cannot be pronounced as a word, or letters of foreign languages which are not commonly used shall not be protected. However, such marks shall be eligible for registration if they have been widely used and recognized in the market place.


Is there any advantage to using a trademark before filing an application?

Vietnam applies first-to-file system. Therefore, use of the trademark is not a condition for filing an application in Vietnam. However, in the event of a priority conflict between applications filed at the same time, registration will be granted to the applicant who proves the most extensive use.


How are well-known trademarks protected in Vietnam?

As a party to the Paris Convention, Vietnam is obligated to give a special protection to well-known trademark. A well-known trademark is defined a mark that has been continuously used for prestigious products/services so that it becomes widely known. Rights in a well-known trademark are established based o­n a decision o­n the recognition of a trademark as well-known to be issued by the Vietnam Trademark Office upon the owner's request.


Is marking of a registered trademark required in Vietnam?

The marking of “TM”, “SM” or “®” to trademarks is not required and generally provides no legal protection. Nonetheless, the “®” symbol is used only if the trademark has already been registered in Vietnam.


Can a trademark which is considered confusingly similar or identical to another person's trademark of which the validity has expired or been suspended/cancelled be registered?

A newly applied trademark which is considered confusingly similar or identical to another person's trademark of which the validity has expired or been suspended shall be considered for protection o­nly when the time-period calculating from the expiry date or suspension date of the cited trademark to the filing date of the new trademark application is equal to or exceed 5 years. However, this provision shall not apply to the mark of which the validity is suspended o­n the ground of non-use.

In case of cancellation, the applied trademark shall be considered for protection after the cancellation is completed and the cited trademark’s owner does not proceed with Appeal procedure



What is the term of a trademark registration and how can the mark be renewed?

The legal protection of a registered trademark begins from registration date. A registration is valid for 10 years calculating from the accepted filing date of the application and can be renewed for subsequent 10 years term, ad infinitum.

A request for renewal must be filed within six (6) months prior to its expiry date. A request for renewal can be filed later than the above-mentioned period, but not exceeding six (6) months from the expiry date with payment of an extra fee accounting to 10% of a prescribed fee for each month overdue.


Can the trademark itself and the designated goods be changed after being registered?

Where there is any change that likely affect the registered trademark, such as change of the owner's name and/or address, or upon the merger, application for amendment must be filed with the Trademark Office for recordal. The registered trademark itself and the designated goods shall not be amended; this provision shall, however, not apply to the restriction of designated goods.


Is proof of use required for obtaining trademark registration?

Proof of use is not required at the time of registration and at the renewal as well. A grace period of five (5) years for excusing non-use is provided.


Is there any possibility to file an invalidation action against a registered mark based o­n non-use?

Under the current law and practice of Vietnam, the validity of a trademark registration may be terminated if it is not used by the owner or transferred to others for use within 5 consecutive years calculated backward on time from the date on that a request for termination is filed by a third party, except where the trademark has been used or re-used at least 3 months before the filing date of the request. The burden of proof of use is o­n the Registrant.


Should the specific royalty amount be indicated in the license agreement?

A specific royalty amount must be indicated in the trademark license agreement. In practice, the parties concerned may agree o­n the actual royalty amount separately, whatever royalty amount indicated in the agreement shall be recorded in the decision o­n registration of trademark license agreement issued by the Trademark Office upon registration of the license.


Is a trademark license required to be registered at the Trademark Office?

Yes. It is an obligation to record a trademark license with the Trademark Office. The effective date of the license is the recorded date at the TM Office.


How is the procedure for responding to an examiner's rejection of an application?

A response to the examiner's rejection of an application must be filed within 2 months from the date of issuance of the notification. The examiner must re-examine the application in the view of the response made by the Applicant and the result thereof must be available within 04 to 06 months from the filing date of the response. If dissatisfied with the examiner's decision, a further appeal can be filed with the TM Appeal Board within the TM Office.


How is the procedure for appealing against a decision of refusal of an application or a decision of refusal of granting a registration certificate?

An appeal against the decision of refusal of an application or the decision of refusal of granting a registration certificate must be filed with the TM Appeal Board within 03 months from the date of issuance of the decision. The TM Appeal Board must examine and settle the matter within 30 days from the date of receipt of the appeal. However, such period is often longer in practice. It may be months or few years. If dissatisfied with the TM Appeal Board's decision, a further appeal may go to the Ministry of Science and Technology or can be taken before the competent administrative court.


Is it possible to prevent others from using marks identical or similar to a trademark in a pending application?

No. In Vietnam, trademark rights to a trademark are only established o­n the basis of certificates of registration of trademark issued by the TM Office. O­nce the trademark is still in a pending application, the trademark protection has not yet been effective and therefore the owner has no right to prevent others from using the identical or similar marks.


What types of remedies may be available in case of infringement?

Different remedies are available when a registered mark is infringed including administrative, civil and criminal proceedings. (For details see Enforcement of Rights)

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FAQs

How many classes can be listed in an application?

Unlimited number of class. Vietnam accepts multi-class trademark application.

 

Should I separate the logo and the word into 02 applications?

Yes, if you are able to do so.  Because, according to the current law and regulations, a trademark is protected exactly as it was represented in the application. That means if you register the logo and the word together, you will have to use the logo and the word together in practice, while the trademarks usually change over time. Not to mention the case where either part is rejected, the applicant will have to amend the application (and it is not certain that this amendment will be accepted).

 

How much does it cost for registering 01 trademark for 1 class in Vietnam?

Total: 150$ (from filing to granting)

 

What are required documents ?

– Power of Attorney (only signed, no Legalization, No Notarization)
– The sample of Trademark.
– List of Goods/ Services.
– The information of Applicant.
– Priority documents (if yes)
– Other document (letter consent, co-owner agreement)

 

2 comment at post
  1. Visitor
    Owen
    22/09/2020

    I hope you are doing well, I would like to proceed with your firm for the registration of the trademark. As I want to work with your firm we can start together on trademark registration and then continue after for company registration and other legal needs I might have after. To tell you the truth now. I wish to develop in Vietnam a new real estate project based on well being and wellness. The name of the trademark and name of the project is "TRADEMARKS" same name as "the plant which bring wellness to human by its precious emollient substance" I wish to register this name as a trademark, I have a logo, but its too simple so I want to register only the name. I have made a survey in Vietnam already and this name as word is available. But I'll ask you to make another survey in order to be sure. the categories are: 36、41、42、43 、20 I agree with your quotation. I wish we can start the process of registration soon. We can call each other today if you have a convenient time for discussion. I'll also be present from early July in HCMC, we can be able to have meeting also. Please send me also the payment procedure. Please find in attachment the power of attorney signed and the trademark categories. Looking forward to your reply.,

  2. Visitor
    NOIP VN
    07/12/2020

    1. Minimum documents - 02 Declaration for registration which are typed according to form No. 04-NH Appendix A of Circular No. 01/2007/TT-BKHCN [The trademark description: the sample of the mark must be described in order to clarify elements of the mark and the comprehensive meaning of the mark, if any; where the mark consists of words or phrases of hieroglyphic languages, such words or phrases must be transcribed; where the mark consists of words or phrases in foreign languages, such words or phrases must be translated into Vietnamese. If the mark contains numerals other than Arabic and Roman numerals, those numerals must be transliterated into Arabic numerals. The section “List of goods and services bearing the mark” in the written declaration must be divided into groups in accordance with the International Classification of Goods and Services under the latestversion of Nice Agreement published by the IPVN in the Industrial Property Official Gazette.]. - In addition to the mark specimen attached to the written declaration, the application must be enclosed with 05 identical mark specimens that satisfy the following requirements: a mark specimen must be clearly presented with the dimensions of each element of the mark ranging between 8 mm and 80 mm, and the entire mark must be presented within a mark model of 80 mm x 80 mm in size in the written declaration; For a mark involving colors, the mark specimen must be presented with the colors sought to be protected. - Fee and charge receipts. * For an application for registration of a collective mark or certification mark, in addition to the documents specified above, the application must also contain the following documents: - Regulations on use of collective marks and certification marks; - Explanation of particular characteristics and quality of the product bearing the mark (if the to-be-registered mark is a collective mark used for a product with unique characteristics or a mark for certification of the quality of a product or a mark for certification of geographical origin); - Map showing the indicated territory (if the to-be-registered mark is a mark for certification of the geographical origin of a product); - Document of the People's Committee of a province or city directly under the Central Government permitting the use of geographical names or signs indicating the geographical origin of local specialties to register a trademark (if the registered mark is a collective mark certification mark contains place names or signs indicating the geographical origin of local specialties). 2. Other documents (if any) - Power of attorney (in case the request is filed through a representative); - Documents certifying the permission to use special signs (if the trademark contains emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese state agencies/ organizations or international organizations, etc.); - Paper on assignment of the right to file an application (if any); - Documents certifying the lawful right of registration (in case the applicant enjoys the right to file from another person); - Documents evidencing the right of priority (if the patent application has a claim for priority right). 3.General requirements for industrial property (IP) registration applications - Each application can request grant of one protection title which is of a type suitable to the trademark stated in the application; - All documents of the application must be in Vietnamese. For documents that are allowed to made in another language according to the provisions of Points 7.3 and 7.4 of Circular No. 01/2007/TT-BKHCN must be translated into Vietnamese; - All documents of the application must be presented in the portrait format (particularly, drawings, figures, charts and tables may be presented landscape) on A4 paper sheets (210 mm x 297 mm), of which the top, bottom, left and right margins are all 20 mm, in Times New Roman font, text is not smaller than size 13, except for accompanied documents originally not intended to be included in the application; - For documents that must be made according to pre-designed forms, those forms shall be used with all necessary information filled in appropriate sections; - A document consisting of many pages must have page numbers in Arabic; - All documents must be typewritten or printed with a non-fading ink, clear and clean, and free from erasures and modifications; if detecting any negligible spelling error in a document submitted to the Intellectual Property Office of Viet Nam (IPVN), the applicant may correct such error but shall append his/her signature of certification (and a seal, if any) at the corrected words; - Terms used in the application must be common ones (other than dialects, rare words, coined words). Symbols, units of measurement, electronic fonts and spelling rules used in the application must conform to Vietnam standards; - The application may be accompanied with carriers of electronic data of part or the entire content of its documents. 4. Fees and charges for trademark registration - Official charges for filing application: VND 150,000/ 01 application; - Fee for publication of application: VND 120,000/ 01 application; - Fee for the trademark search for the substantive examination process: VND 180,000/ 01group of goods or services; - Fee for the trademark search from the 7th good or service onwards: VND 30,000/ 01 good or service; - Fee for formality examination: VND 550,000/ 01 group of goods or services; - Fee for formality examination from the 7th good or service onwards: VND 120,000/ 01 good or service. 5. Time limit for processing trademark registration applications 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: - A trademark registration application shall have its formalityexamination within 01 month from the filing date. - Publication of trademark registration applications: A trademark registration application shall be published within 02 months after it is accepted as a valid application; - An industrial property registration application shall be substantively examined within09 months from the date of application publication. 6. Methods of filing application The applicant may choose paper filing or online filing through the IPVN's online public service portal, specifically as follows: a) Paper filing The applicant may submit an application for a trademark directly or via postal service to one of the IPVN's application receiving places, specifically as follows: - Head Office of IPVN, address: 386 Nguyen Trai, Thanh Xuan District, Hanoi city. - Representative Office of IPVN in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh city. - Representative Office of IPVN in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang city. In case of filing an application for a trademark by post, the application charges/ fees must be transferred by postal service, and then a copy of the Money Transfer Receipt must be attached to application and send to one of the above-mentioned IPVN’s officeto prove the amount paid. (Note: If the fee or charge is transferred to one of the above-mentioned IPVN's application-receiving places, the applicant must send the dossier to the corresponding application-receiving point). b) Online filing - Conditions for online filing: Applicants need to have a digital certificate, a digital signature and a registed account which is approved by the IPVNon the Online Application Receiving System. - Online filing: + The applicantneeds to complete the steps of filing a trademark application form on the IPVN's Online Application Receiving System. After that, a confirmation of online submission will be sent to the applicant. + The confirmation of online submission must be presented to one of the IPVN's office and the applicant needs to attached documents (if any) and pay fees/ charges as prescribed within 01 month from the date of online submission. + If all documents and fees/ charges mentioned above are fully submitted as prescribed, an IPVN’s officer will issue the application number in the Online Application Receipt System. If one of the documents and fees/ charges is not fully submitted, the application will be denied. In the event that the applicant fails to complete the prescribed application procedure, the online application procedure will be canceled and the Online Application Cancellation Notice will be sent to the applicant via the Online Application Receiving System. Application form: APPLICATION FORM - DECLARATION FOR REGISTRATION OF A TRADEMARK (ISSUED UNDER THE CIRCULAR NO. 01/2007/TT-BKHCN OF FEBRUARY 14, 2007 BY THE MINISTRY OF SCIENCE AND TECHNOLOGY)

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