In terms of drawing formality examination, please advise in which cases that an application of design in Vietnam would be refused?
In general, there are 3 main reasons for refusing an application of design in Vietnam regarding the drawing of the trademark:
• The unclear sets of drawing:
- The quality of the drawings:
For quality of drawings, the most popular failures are unclear and not sharp enough as well as jagged or blurred, so that the drawings could not exactly displayed the details of the design.
In order to prevent the mentioned refusals and wasting time and fees as well on amending drawings, the applicant of design should use drawings in technical design and avoid taking photos of the finished products, which the design is applied for. Normally, this caused light effects on drawings, for instance, shadow, opaque, unbalance light reflection, which impact on the quality of drawings. Preferably, all the figures should be best to be divided into separated files and saved in JPEG format.
- The ratio of the drawings
The drawings provided by the industrial design applicant, especially the drawings directly taken from the finished products, which design is applied for do not often have a same scale. Therefore, it is necessary to carefully check the ratio among figures before filing application of design in Vietnam.
- The address of design applicant in priority application (if any)
An application of design in Vietnam can take priority rights under international treaties, such as Paris Convention. To claim priority rights, the design applicant has to submit a certified copy of the first application. In some countries such as Japan, Korea; however, the first page of priority documents in Japanese/Korean and English does not indicate the address of design applicant. The National Office of Intellectual Property of Viet Nam (NOIP) will be issued notice of formality refusal because the evidence is not sufficient to clearly verify applicant whom in priority documents and later Vietnam design application.
If there is any problem occurs during examination stages of an industrial design application in Vietnam, what kind of notices would be issued by the competent authority?
Incase an industrial design application in Vietnam does not meet formality requirements or any criteria for protection as to substance, there are two kinds of official notice respectively as follow:
(1) Notice of result of examination as to refusal: the notice of result will be issued by the National Office of Intellectual Property of Viet Nam (NOIP). Accordingly, the design applicant is give time and chance to make correction, amendment for errors or submit their response to the Notice of result.
(2) Decision of refusal: In case the design applicant does not take any action in response to the notice of refusal or the response is not persuasive, a Decision of refusal will be issued and any response to this decision will be regulated by Law on complaints in 2011.
What is an industrial design under Vietnam Intellectual Property Law?
Industrial design is one of objects of industrial property rights which created or owned by them and rights to repression of unfair competition.
According to Law on Intellectual Property in Vietnam, an industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements.
Is parallel import legal in Vietnam?
Parallel imports (sometimes referred to as gray market goods) refer to branded goods that are imported into a market and sold there without the consent of the owner of the trademark in Vietnam. Parallel imports are generally allowed in Vietnam (Article 20 and Article 125.2 of the IP law). Vietnam’s legal provisions on parallel imports, meanwhile, can help ensure adequate access to Intellectual property protected imports. The regulation of parallel trade involves balancing the interests of local consumers and distributors, particularly with regard to pharmaceutical and agrichemical products.
However, as being a soon-to-be member of the Trans-Pacific Partnership (TPP), Vietnam will regulate the provisions to restrict the parallel imports in case without the owner’s consent.
What is evidence of distinctiveness of trademark in Vietnam?
To show that a trademark in Vietnam has in fact become distinctive, you will need to file evidence in a statutory declaration explaining:
- An explanation of origin, history and time of continuous use of the mark in Vietnam and other countries;
- Number of nations in which the mark has been registered or recognized as a well-known mark in Vietnam and other countries;
- List of goods and services bearing the mark in Vietnam and other countries;
- The territorial area in which the mark is circulated, turnover from products sold or services provided;
- Quantity of goods and services bearing the mark manufactured or sold;
- Property value of the mark, price of assignment or licensing of the mark and value of investment capital contributed in the form of the mark in Vietnam and other countries;
- Investment in and expenses for advertising and marketing of the mark in Vietnam and other countries, including those for participation in national and international exhibitions;
- Infringements, disputes and decisions or rulings of the court or competent agencies;
- Surveyed number of consumers knowing the mark in Vietnam and other countries through sale, purchase, use, advertisement and marketing;
- Rating and evaluation of reputation of the mark in Vietnam and other countries by national or international organizations or the mass media;
- Prizes and medals awarded on the mark in Vietnam and other countries;
- Results of examinations held by intellectual property examination organizations.
Can a third party file a cancellation action on the basis of non- use of a trademark in Vietnam?
As per the Vietnam IP Law, the court shall, on a request from any interested party, may order the cancellation of Trademark registration in Vietnam if it is proven that the trademark has not been seriously used for 5 consecutive years unless:
- Where the use of trademark in Vietnam is commenced or resumed at least 3 months before the request for cancellation.
- The owner of the trademark proves that non-use was for reasons beyond his control such Import restrictions and other governmental procedures that are imposed of goods and services distinguished by the Trademark.
Therefore, we recommend that the owners should continuous use their trademark in Vietnam after they is being protected.
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.