Regarding trademark in Vietnam, please advise on what grounds can a trademark be refused registration?

The Intellectual Property Law 2005 establishes a set for grounds of signs not registrable as marks in Vietnam, and in terms of formality and substance, here are the most common cases (Article 72 to Article 75)

►Refusal in terms of formality in trademark in Vietnam

There are three typical reasons in the notice of refusal, which are:
- Namely wrong classification of goods/ service,
- Wrong POA ( Power of Attorney)
- Unclear trademark sample.


►Refusal in terms of substance in trademark in Vietnam

Some typical reasons related to Refusal in terms of substance including:

- Refusal in relation to absolute grounds. These grounds for objection concern the nature of the mark itself.

- Refusal in relation to relative grounds which are concerned with conflict between trademark application and the Ones having priority of earlier filling date.

- Three-dimensional (3D) trademark

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What is the requirements for a filling trademark in Vietnam?

1. One original Power of Attorney, POA, executed by a person in charge.
In case the appliccantis a legal entity (company or corporation) and own a corporation seal under their jurisdiction, the POA should be signed by authorized person and then affixed the corporation’s seal. In case the corporation seal is not available, only the signatures are acceptable.
No further notarization or legalization is required.
Please be noted that the copy of POA is accepted at filing, but the original POA must be submitted within one [01] month counted from the filing date without any extra fee.

2. The list of interested goods/services for which are applied in specific one by one.Vietnamese Trademark Law requires all the designated goods/services which are covered in the application must be specified. The item of goods/services in general meanings or item in the class headings as well is not accepted.

3. The sample of mark in .JPEG file (with a minimumresolution of 300 dpi) and not exceed 8 centimeters both in length and in width.

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How long does it take to to obtain a Certificate of Trademark Registration in Vietnam?

In summary, it takes approximately[15-18] months from the date of filing to obtain a Certificate of Trademark Registrationin Vietnam in case of neither objection nor oppositionby any third party, in practice.

The procedure of trademark in Vietnam as below:

[1] Filing receipt

[2] Formality examination: The duration of the formality examination is one [1] month as of the date on which all the statutory required documents are filed sufficiently and in order.

[3] Publication for opposition

[4] Substantive examination

[5] Grant of certificate

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What is the term of a trademark registration in Vietnam?

A certificate of trademark registration in Vietnam shall be effective from the granting date and last for 10 years from the filing date, and can be renewed for indefinitely for each consecutive 10-year term.

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.

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What is the protection conditions for trademark in Vietnam?

According to Article 72 of Law on Intellectual Property of Vietnam, a trademark shall be protected when it satisfies the following conditions:

1. Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors and it is not belong to the signs not protected as marks according to Article 73 of Vietnam IP Law.

2. Being capable of distinguishing goods or services of the mark owner from those of other subjects.

The following signs shall not be protected as marks:

1. Signs identical with or confusingly similar to national flags or national emblems;
2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations or socio-professional organizations or international organizations, unless permitted by such agencies or organizations;
3. Signs identical with or confusingly similar to real names, alias, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries;
4. Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by those organizations;
5. Signs which cause misleading or confusion or deceive consumers as to the origin, properties, intended utilities, quality, value or other characteristics of goods or services.

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How to protect the well-known marks in Vietnam?

In Vietnam, a well-known trademark would be protected in accordance with Article 75 of the Intellectual Property Law and Article 6bis of the Paris Convention. A well-known trademark is protected, irrespective of whether they are registered or not. However the owners have to prove the well-known characters and their trademarks satisfy the conditions for being considered well-known.
According to Article 75 of Law on Intellectual Property of Vietnam, the following criteria shall be taken into account when a mark is considered well-known:

1. The number of involved consumers who have been aware of the mark through purchase or use of goods or services bearing the mark or through advertising;
2. Territorial area in which goods or services bearing the mark are circulated;
3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;
4. Duration of continuous use of the mark;
5. Wide reputation of goods or services bearing the mark;
6. Number of countries protecting the mark;
7. Number of countries recognizing the mark as a well-known mark;
8. Assignment price, licensing price, or investment capital contribution value of the mark.

If a well-known trademark is recognized under a civil proceeding or under a recognition decision of the National Office of Intellectual Property, NOIP, that well-known mark shall be recognized in the national list of well-known trademarks. However, due to lacking of detail guideline and specific criterion, no trademark is recognized on the list.

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