Although Vietnam has not yet been official member of Nice Agreement, the Nice Classification – 10th Edition is being adopted for classification for filing trademark application in Vietnam as well as calculating the Official fees and scope of trademark protection. Accordingly, any item of goods/services listed in (i) the Alphabetical List or (ii) under specific code described in List of Goods and Services in Class Order of the Nice Classification would be accepted smoothly in examination as to form process. Vice verse, the “GENERAL REMARKS” in the Nice Agreement and other point of view of Examiners will be applied for the examination.
Here are AGELESS’s eight notes on the description of products/services in trademark application in Vietnam:
1. For purpose of estimating fee
Under Vietnam Trademark Law, the official fees will be calculated based on number of class and additional item of goods/services in each class. For each additional item of goods/services beyond the 6th item, the Applicant is required to pay extra fee.
For purpose of estimating fee, “Class Headings” in the Nice Classification and general item of goods/services will not be accepted and must be clarified as specific item.
2. Language in the trademark application in Vietnam
All information in the trademark application in Vietnam must be written in Vietnamese under regulation. However, upon Ageless’s experience and current practice, using bilingual language (Vietnamese and English) in description of goods/services will be helpful for consideration of the National Office of Intellectual Property of Vietnam (NOIP).
Specifically, it will help the trademark examiner in understanding the nature of a good/service more exactly in case of un-clear or confuse. Besides, amendment of description of goods, after filing, may be accepted smoothly.
3. The products/services name in Trademark application in Vietnam
Due to difference in culture, language and others between Vietnam and other countries, it is recommended providing both home and international name of a new/unpopular product(s), if available. Besides, providing any additional information related to the goods (such as its function, its purpose, its component/ingredient or its image) is certainly helpful for getting the most exact description for the designated goods.
4. A local classification
In addition to applying the 10th Edition of Nice Classification, Vietnam and other ASEAN countries are issued a local classification (ASEAN TMclass) for over 13.800 typical goods and services in this area. Using the item in ASEAN TMclass for filing new trademark application in Vietnam will be accepted smoothly in examination. The detailed information of ASEAN TMclass could be found at www.asean-tmclass.org or www.aseanip.org .
5. Scope of protection
For getting the best scope of protection and minimizing risk as well as obtaining strong measures in dealing with possible infringement, the trademark Applicant is advised to pay attention to the following principles:
– Filing trademark application in Vietnam for exact and specific items of goods/services, which they are actually manufacturing or trading; AND
– Designating for other general goods/services as large as possible covering or near-by their manufacturing/trading items, if possible, to get the broadest scope of protection.
For example, if a company specializes in producing electric hand drills, they should designate for at least two items of goods such as “electric hand drills” AND ”hand-held tools, other than hand-operated” in Class 07 when filing trademark application in Vietnam.
6. Multipurpose composite goods
According to General Remarks of the Nice Classification, a finished product which is a multipurpose composite object (e.g. clocks incorporating radios) may be classified in classes that correspond to any of its functions or intended purposes. However, under Vietnam current practice, classification of such kind of goods will depend much on the subjective point of view of trademark examiners under the examination process. In case of receiving an Office Action requesting the Applicant to transfer this kind of goods to other class, it is rather difficult and consumes time to persuade the examiner remaining it in the former class.
Therefore, if transferring this item to other class does not change the nature of goods or incurring extra fee, the Applicant should consider agreeing with the examiner’s opinion for time saving.
7. Requirements on listing the specification of goods/services in trademark application in Vietnam
Under Vietnam current regulation, the list of goods/services in trademark application in Vietnam must be spaced by a semicolon (;) between specific items. Therefore, it is recommended to describe your designated goods/services clearly and coherently in respect of both vocabulary and grammar. For instance, instead of “accessories for vehicles, such as, tires, brake, chassis”, the Applicant should describe specifically as “tires for vehicles; brakes for vehicles; automobile chassis”.
8. Notes on particular items of goods/services in trademark in Vietnam
In addition to above mentioned general rules, there are still some notes on particular items of goods which should be paid attention to, such as:
– For purpose of determining the scope of protection, services including “trading, wholesale and retail store, installation, designing, etc.” must be clarified the subject which you intend to.
For example: Trading of cosmetics; wholesale and retail store in the field of clothing, handbags, computers; installation of computer software; dress designing, etc.;
– “Functional food” is always classified in Class 05, instead of Class 29 or 30;
– Producing/manufacturing service of a particular product will not be accepted as a service and must be transferred to corresponding goods class.
For example: “service of producing computer” must be amended as item of goods “computer” and transferred to Class 09.
– “Plant protection product” is not considered as specific goods and must be clarified, such as “plant protection product, namely, pesticides, preparations for destroying noxious plants”.
In conclusion, in order to minimize defect, risk and un-expected cost incurred, it is highly recommended to check the specification of goods and advise if there any of goods/service items should be reclassified or apparently not acceptable before filing trademark application in Vietnam.
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