In which cases the cancellation of Trademark in Vietnam could be avoided?
According to Article 5 C-2 of Paris Convention, use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.
However, there is no specific provision provided for alternation of distinctive characters OR change the nature of trademark OR change mark substantially regarding trademark in Vietnam but it depends mostly on the examiner.
In case Registrant’s mark is a combined of word and symbol and the owner use one element as an independent mark, would such kind of use constitute proper trademark use in Vietnam depends on would it alter the distinctive of registered mark or not. However, in practice, it is recommended to use the same mark as the registered one since Vietnam Trademark Office examines the difference very strictly.
Please define what constitutes “Using trademark in Vietnam”?
According to Article 125.5 of Intellectual Property Law, using trademark in Vietnam means the performance of the following acts:
a/ Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;
b/ Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;
c/ Importing goods or services bearing the protected mark.
Should I file for registering trademark in Vietnam as soon as I start doing business?
Vietnam is a first-to-file jurisdiction. In other words, that means that the first party to file a trade mark application in Vietnam will be the one to whom the National Office of Intellectual Property (NOIP) will issue a trade mark registration. Thus, unlike some countries (called “first-to-use” jurisdiction) where trade mark rights can arise from simply using the trademark, trademark rights in Vietnam arise only upon registration with Vietnam’s National Office of Intellectual Property (NOIP).
For this reason, investors are specially recommended to obtain trademark registration in Vietnam as soon as possible despite they plan manufacturing/ doing business in Vietnam or not yet, where Vietnam adopt the Firs-to-File principle.
Please advise what I should do to prevent refusal of a trademark in Vietnam or increase the chance of being allowable?
- To avoid a possible refusal, the Applicant is advised to file request for disclaim initially at the time of filing.
- Supporting materials/ evidence are vital to prove that the applied mark meets the standard of trademark protection in Vietnam. The supporting materials/ evidence should be original or the true certified/ notarized copies. They should be even accompanied with a notarized original Affidavit and may be submitted after filing a response/ appeal. Except the case that the National Office of Intellectual Property (NOIP) sends a Notice to the applicant to require supporting materials before a fixed deadline, the later submission of materials/ evidence should be as soon as possible and within 01-02 months as from the date of filing response/ appeal for the convenient examination. If the trademark examiner has come to conclusion on the case, the late submitted materials/ evidence will not be considered.
When applying for a trade mark in Vietnam, you must specify a class. Wrong classification of goods/ service in trademark application may lead to a refusal trademark in Vietnam.
Although Vietnam has not yet participated in the Nice Agreement, the NOIP applies Nice Classification in practice to determine application fee and protection scope of a trademark.
Due to difference in culture, languages and technology of manufacturing new products, the description of goods/ services are different among countries. It may take a little research to determine the class to which a product or service fits best. In case the classification of goods/ service is not in compliance with the Nice Classification – 10th Editions, which is being adopted by the NOIP, it often takes long time for examination of trademark application. Therefore, the applicants are recommended to consult domestic lawyers before filing trademark in Vietnam.
What happens if my application to register a trademark in Vietnam fails to satisfy the required conditions?
In accordance with Article 15.7, Circular No. 01/2007/TT-BKHCN, regarding trademark in Vietnam if the subject mark in the application does not meet formal requirement, the NOIP shall issue a Notice on its intended refusal to grant a Certificate of trademark registration, clearly stating the reason(s) for refusal and setting a time limit of two  months from the date of issuance of the Notice for the applicant to give opinions and comply with the requirements in the response.
The given time can be extended for a period of 02 months by paying extension fees.
Please note that, under provisions of trademark in Vietnam, if the applicant does not file response to Notice of refusal or the response is not adequate, the National Office of Intellectual Property (NOIP) will issue a Decision on official refusal. The applicant is given 90 days from the issuing date of the Decision for filing appeal against this Decision. In the Decision, the extension of time is not possible. In case the applicant needs more time for thoroughly preparing the response and/ or supporting materials, a temporary response is recommended.
What are the requirements to the Power of Attorney (POA) when I register a trademark in Vietnam?
A power of attorney is required if the application is filed by an IP attorney. When you register a trademark in Vietnam, name and address of an applicant in POA must be strictly consisted in every document of a trademark application.
Please note that, if applicant is Japanese, Chinese, Korean, name and address of the applicant should be transliterated into Latin characters consistently in all documents in one Application and in all Application.
Besides, the information of date, place, title and full name of the signer in the POA must be accurate and sufficient in order to avoid unexpected refusal.
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
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  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.
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:
 Filing receipt
 Formality examination: The duration of the formality examination is one  month as of the date on which all the statutory required documents are filed sufficiently and in order.
 Publication for opposition
 Substantive examination
 Grant of certificate
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.
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.
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.