Trademark registration in Vietnam – 5 notes to keep in mind

19/04/2022 - 1093 views

Trademark registration in Vietnam is the process by which an applicant (individual or organization) files an application to obtain a certificate of trademark registration according to the provisions of Vietnamese law. In this article, Ageless would like to provide you with 5 remarkable notes when registering trademark in Vietnam.

 

1. The first-to-file principle for trademark registration in Vietnam 

 

As in many countries, the “First to file” principle is applied to trademark registration in Vietnam.

Specifically, in the following cases, the Certificate of Trademark Registration may only be granted with respect to the valid application with the earliest date of priority or filing date among the applications that satisfy all the conditions for the issue of a certificate:

  • There are many applications of different applicants registering identical or similar labels to cause confusion over the use of identical or similar products and services; OR
  • There are many applications of the same applicant registering identical brands for identical products and services.

Therefore, you should file the trademark application in Vietnam as soon as possible to get a better filing date.

 

2. Conducting a trademark search in Vietnam before filing

 

For estimation of the possibility of success in trademark registration in Vietnam, it is recommended to conduct a full similarity search before filing in order to save time and cost as well as reduce possible risks in case the trademark is unregistrable.

For enabling Ageless to conduct the search and provide more precise comments and analysis on registrability in our Search Report, kindly provide us with:

  • The sample of the searching mark;
  • The specific items of goods/services in the designated Class(es), which the client may apply for the searching marks;
  • The name of search requester, who may have already owned earlier identical/ similar trademark application or registration, if possible;
  • Latin transliteration and meaning of Chinese/Korean/Japanese…characters (If any).

You can see more details about trademark search in Vietnam in this article

Trademark registration in Vietnam – 5 notes to keep in mind

 

3. How to apply for trademark registration in Vietnam

 

According to the provisions of the Vietnam Intellectual Property Law, owners of trademarks belonging to the following cases cannot directly submit trademark applications in Vietnam:

  • Foreign individuals not resident in Vietnam;
  • Foreign organizations and individuals without production and business establishments in Vietnam.

In the light of the above, for registering trademark in Vietnam, the above-mentioned trademark owners had to  be appointed to a licensed IP representative in Viet Nam to apply for registration to establish the rights.

In practice, authorizing an IP representative to register the trademark rights is more beneficial to the owner, specifically, the process of registration is handled quickly, and legally with taking care and legal advice from a professional representative already licensed to practice by the Intellectual Property Office of Vietnam.

 

4. The requirements for trademark registration in Vietnam 

 

The following notes are addressed to the owner of the trademark that intends to establish trademark registration in Vietnam:

  • The General of Power (POA):
  • The original POA is compulsory and must be signed directly with wet ink by the legal representative of the Applicant and then affix the company’s seal (if available). The signature is inserted or an electronic signature is not accepted; [No notarization or legalization is required];
  • The copy of the 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.
  • Specimen of mark:

On a Vietnamese trademark application form, the specimen of mark to be affixed has a size not exceeding 80 X 80 mm. Thus, for trademarks composed of many elements/details and colors (if any), in order to ensure the visual quality of the trademark is registered, the resolution of the image file should be as high as possible.

  • Goods/services Classification:
  • The item of goods/services in general meanings or item in the class headings as well is not acceptable;
  • Any item of goods/services listed in Alphabet and under specific code described in the Nice Classification will be accepted smoothly in the examination as to form process;
  • The “GENERAL REMARKS” in the Nice Agreement and other points of view of Examiners will be applied for the examination in the event that the goods/services are not listed under the specific code described in the Nice Classification.

 

5. Should file a multi-class or single-class application of trademark registration in Vietnam? 

 

For the applicant to have a basis to decide whether they should file a multi-class or single class trademark application in Vietnam, we have summarized its advantages and disadvantages based on our practical experience as follows:

 

Criteria

Single-class trademark application

Multi-class trademark application

Fees for registering and management

higher

lower

Formality Examination period

Shorter [about 30 days]

Longer [about 45-60 days]

Substantive examination period

(opposition period)

Shorter [about 20-22 months] [if there is neither opposition from a third party nor provisional refusal from the Examiner]

Longer [about 28-30 months] [if there is neither opposition from a third party nor provisional refusal from the Examiner]

In case an application is challenged with opposition from a third party, only its examination period would take longer for the Examiner to consider the opposition. That means it does not affect the examination period of other applications at all.

In contrast, if a multi-class application is challenged with opposition from a third party, the examination period of all classes would take longer for the Examiner to consider the opposition. In other words, all classes would be suspended for registration regardless of which class the opposition aims at.

In case the substantive examination of an application results in a provisional refusal by the Examiner, it does not affect the substantive examination result of other applications at all.

In contrast, if the substantive examination of a multi-class application results in a provisional refusal by the Examiner, all classes would be suspended for an appropriate response of the Applicant regardless of which class the Office Action aims at.

Post-filing (assignment, license, franchise)

In case of performing a trademark assignment, license, or franchise, it is pretty easy for the Registrant.

In contrast, it would be quite inconvenient for the Registrant to include only a class of the trademark in the agreement.

 

The procedures for trademark registration in Vietnam are not overly complicated, however, applicants need to keep in mind the above notes for the filing to go smoothly and achieve the highest efficiency.

Should you have any further questions about intellectual property matters in Vietnam, Laos, Cambodia and Myanmar, please kindly contact us via our email address info@ageless.vn

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