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Question 1: What is a trademark?

Under current law, a trademark is defined as any sign used to distinguish goods and/or services of different organizations or individuals.

A trademark must satisfy the requirements of:

  • Visible sign or sound trademark that can be graphically presented.
  • Being distinctive for the relevant goods or services
Question 2: Is there any kind of applications other than national applications?

Vietnam is a member of  Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. Therefore, the international applications under the Madrid System can designate Vietnam.

Question 3: Who has the right to file a trademark application (who is the applicant)?

Under Article 87 of the Law on Intellectual Property (IP Law), in general, the following organizations and individuals shall have the right to file the trademark application:

  • The ones who produces produce products or render the services;
  • The ones who trade in products produced by others register marks for such products, provided that the producers neither use such marks nor object to such registration;
  • Collective organizations for collective marks;
  • Organizations with the function of controlling and certifying quality, properties, origin or other relevant criteria of goods or services for certification marks.
Question 4: Who is the prescribed filer?

Under Article 89 of the IP Law, it is required for foreign individuals not permanently residing in Vietnam, and foreign organizations and individuals without production or business establishments in Vietnam to file their trademark applications through Vietnamese IP representatives.

For the rest, the filer can be the applicant.

Question 5: What are the required documents/information for filing a trademark application?
  • Trademark Sample;
  • Description of Goods and Services classified as per Nice International Classification (11th edition);
  • Information of the Applicant (Name and Address) and the Priority Claim;
  • Power of attorney (POA) & Priority document (most frequently used: the certified copy of the Application).
Question 6: What are the deadlines relating to a trademark application? Is there any possible extension of the deadlines and if yes, how to obtain the extension?
  • Filing deadline

Vietnam runs the first to file trademark system, therefore earliest filing gives the client more favor during the registration process. 

For Application with Priority Claim under Paris Convention: The filing deadline is six months from the priority date.

  • Deadline for submission of the POA and priority document
  • Non-extendable deadline for the original POA: one (01) month from the filing date;
  • Non-extendable deadline for the priority document: three (03) months from the filing date.
  • Other deadlines
  • Response to an office action as to formality matters: two (02) months and extendable once for two months;
  • Response to an office action as to substantive matters: three (03) months and extendable once for three months;
  • Payment of granting fees after Notice of Grant: three (03) months and extendable once for three months.
  • Excuse: Force majeure event and objective obstacles.
Question 7: How much does it cost for filing a trademark application?

The cost for filing a design application in Vietnam depends on several factors, including:

  1. Number of classes of goods & services;
  2. Number of items of goods/ services in each class;
  3. Number of priorities claimed.

Specifically, in accordance with Circular No. 263/2016/TT-BTC issued by the Ministry of Finance (MOF), detailed official fees for filing a trademark application are as follows:

  1. Filing application: 150,000 VND
  2. Convention priority claim (per priority): 600,000 VND
  3. Publication of application: 120,000 VND
  4. Goods & Services classification (if the applicant does not self-classify): 100,000 VND
  5. Search and substantive examination (per each class having 06 items of goods & services): 730,000 VND
  6. Search and substantive examination (for each additional item of goods from the 7th one in each class): 150,000 VND
Question 8: What are the subject matters excluded from trademark protection?

Under Article 73 of the IP Law, the following subject-matters shall be excluded from trademark protection:

  1. Any sign that is identical or confusingly similar to the national flags, national emblems, national anthems of the Socialist Republic of Vietnam and other countries, or The International;
  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;
  5. Signs which cause misleading or confusion or deceive consumers as to goods or services;
  6. Inherent shape of the product or a shape that is the result of the technical properties of the product;
  7. Copy of the work, unless it is permitted by the work owner.
Question 9: What are Distinctiveness of marks?

Under Article 74 of the IP Law, the requirement of Distinctiveness of marks is as follows:

  • Being easily noticeable and memorable;
  • Not consist exclusively of simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such signs have been widely used and recognized as a mark;
  • Not consist exclusively of conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
  • Not describe the goods & services, legal status and business field of business entities;
  • Not conflict with the prior rights of Registered trademarks, well-known trademarks, trade names, geographical indications, industrial designs.
Question 10: What is the time frame of trademark examination?

Trademark applications will be examined as to formalities, then published, and then substantively examined as described below:

  • The formalities examination results will be available within few months.
  • The application will be published within two months after it passes the formalities examination.
  • In law, the substantive examination results will be available within nine months from the publication date but it is much more longer in practice.
Question 11: What is the “first to file” principle in Vietnam?

The “first to file” principle is specified in Article 90 of the IP Law. Accordingly, in case there are multiple trademark applications which are identical or confusingly similar each other, only one certificate shall be granted for the application with the earliest priority or filing date among the applications. In case of the same priority or filing date, still only one application is granted, and therefore, the applicants will have to discuss to reach an agreement on which application will receive the certificate.

Question 12: What is the requirement of unity of a trademark application?

The unity of requirement is specified in Article 101 of the IP Law, in which a trademark application will be applied for registration for one mark to be used for one or more different goods or services.

Question 13: What are the requirements for recordals of change or assignment on a pending application?

Under Article 115 of the IP Law, as long as the application is pending (no decision on refusal or grant has been issued), the applicant may request the recordal of change or assignment.

 

The supporting documents would be a document evidencing the change or assignment.

  • For a change, it is required to submit a notarized Declaration of Change or certificated copy of legal document evidencing the change.
  • For an assignment, it is required to submit the Assignment document.

Such assignment document must be an original without notarization or a certified/notarized copy thereof. The IPVN strictly examines such documents. For example, if the document has more than one page, in addition to the signatures at the last page, each of the other pages must also be signed at one of its corners or the document would have to contain marks showing that its pages belong to one document like a notary seal overlapping on all of the pages.

For a trademark application with multiple applicants, a written consent of the co-applicants for the recordal of the assignment is also required.

Question 14: When a third party can file an opposition?

Under Article 112.a of the IP Law, within 05 months from the publication date, any third party is entitled to raise objections against the registration of a trademark.

Question 15: What should we do in case of receiving a decision on refusal?

In case the Applicant does not succeed in the response to the office action and receive a Decision on refusal, the applicant may take the following actions.

Step 1: The applicant may proceed with:

  • Filing a first instance appeal to the IPVN within 90 days from the receipt date or the aware date of the decision; or
  • Bringing a lawsuit to the competent administrative court within one year from the receipt date or the aware date of the decision.

Step 2: In case the statutory period for first instance appeal is over and no decision is issued by the IPVN, or the appellant does not agree with the IPVN’s decision on settlement of the first instance appeal, the appellant may proceed with:

  • Filing a second instance appeal to the IPVN’s supervising authority, the Ministry of Science and Technology (MOST), within 30 days either from the ending of the statutory period for the first instance appeal if no decision has been issued, or from the receipt date or the aware date of the decision on the first appeal; or
  • Bringing a lawsuit to the competent administrative court within one year either from the ending of the statutory period for settling the first instance appeal if no decision has been issued, or from the receipt date or the aware date of the decision on settlement of the first instance appeal.

Step 3: In case the statutory period for the second instance appeal is over and no decision is issued by the MOST, or the appellant does not agree with the MOST's decision on settlement of the second instance appeal, the appellant can bring a lawsuit against the MOST’s decision to the competent administrative court within one year either from the ending of the statutory period for settling the second instance appeal if no decision has been issued, or from the receiving date or the aware date of the decision on settlement of the second instance appeal.

In practice, said periods for settling the appeal or the lawsuit are much prolonged.

Question 16: What are trademark rights? What are exemptions from trademark infringement?

Under Article 124 of the IP Law, the use of a trademark comprises the following acts:

  1. Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;
  2. Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;
  3. Importing goods or services bearing the protected mark.

Under Article 125 of the IP Law, some exemptions are provided:

  • The circulation, importation, exploitation of products which were lawfully put on the market including overseas markets;
  • Using marks identical with or similar to protected geographical indications where such marks have acquired the protection in an honest manner before the date of filing applications for registration of such geographical indications;
  • Using in an honest manner people’s names, descriptive marks of type, quantity, quality, utility, value, geographical origin and other properties of goods or services.
Question 17: What actions are needed to renew the rights?

In Vietnam, the validity term of a trademark registration in Vietnam is ten years from the date of filing and can be renewed each time for ten years unlimitedly. A request for trademark renewal is required to be submitted to IP Vietnam within 6 months prior to the expiry date of the trademark registration. A six-month grace period is available with a surcharge of 10% of the renewal fee for each month late.

In case a renewal is made by an IP agent, the required document is a POA. The IPVN requires an original POA (notarization is not required) or a copy of a general POA already filed and Original Certificate of Trademark Registrations in case your client wish to record the new term of protection on the original certificate of registrations.

Question 2: What are the requirements for recordals of change, assignment and license on a granted trademark?

These recordal of change and assignment may be requested with the IPVN to take effect.

  • For a change, under Article 97 of the IP Law, a trademark owner may request the IPVN to record a change. It is required to submit a notarized Declaration of Change or certificated copy of legal document evidencing the change.
  • An assignment takes effect only if it is already recorded at the IPVN, under Article 140 of the IP Law, the assignment must contain the following main contents:
  • Full names and addresses of the assignor and of the assignee;
  • The protection particulars of the trademark(s) to be assigned;
  • Assignment price; and
  • Rights and obligations of the assignor and the assignee.

 

The Recordal of Trademark License is not compulsory by law.

In the past, it was necessary to record such sub-license on the Trademark Register against third parties. However, following the ratification of the CPTPP, various of Vietnam’s legal instruments have been amended in order to become harmonized and compliant with international regimes, including the one regarding the License Agreement.

Article 148.3 of our Vietnam IP Law now stipulated that "A contract for use of an industrial property object provided for in Clause 2 of this Article shall only be effective towards a third party upon registration with the state administration authority of industrial property rights, except for trademark license agreement".

This is to say it is not compulsory to record the document in Vietnam Registry to make it fully effective.

However, if possible, it is our recommendation to proceed with an official recordal which will facilitate future enforcement actions, and reduce the burden of proof as well as the relevant unnecessary cost and time in those situations.

Question 19: What is the termination of the validity of a granted trademark?

Under Article 95 of the IP Law, the validity of a trademark registration shall be terminated in the following cases:

  1. Renewal is not proceeded: The validity of the trademark will terminate on the renewal due date. Nevertheless, a six-month grace period is available;
  2. The trademark owner declares the abandonment of the trademark: The validity will be terminated from the filing date of the declaration
  3. The trademark owner no longer exists: A third party may request the IPVN to terminate the validity;
  4. The mark has not been used by its owner or his/her licensee without justifiable reasons for 5 consecutive years prior to a request for termination of validity, except where the use is commenced or resumed at least 3 months before the request for termination;
  5. The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulation on use of collective marks
  6. The owner of a certificate of registered certification mark violates the regulation on use of certification marks or fails to supervise or ineffectively supervises the implementation of such regulation;
  7. The use of the protected mark for goods and services by the mark owner or a person permitted by the mark owner causes users to misunderstand the nature, quality or geographical origin of such goods or services;
  8. The protected mark has become a common name of the goods or service registered for the mark.
Question 20: What are the grounds for the invalidation of a trademark registration?

A trademark could be invalidated at any time during its protection term. The grounds for the invalidation, under Article 96 of the IP Law, are:

  • The applicant did not have the right to file the trademark application;
  • The trademark did not meet the requirements of registrability at the time of granting;
  • The application is filed in bad faith.
Question 21: Is it possible to amend the trademark or list of goods/ services after the filing?

Yes, the owner of a trademark may narrow the scope of trademark rights. In this case, the corresponding industrial property registration application shall be substantively re-examined and the requester shall pay the fee for substantive examination.

Question 22: Is a post-grant opposition available?

A post-grant opposition is not permitted in Vietnam. Instead, in addition to the invalidation procedure, if a third party can prove that their rights and interests are directly affected by the decision to grant a certificate, the party may file an appeal against that decision. The time limit for filing the appeal will be 90 days from the date of awareness of the decision. Nevertheless, such decisions are not published, even are not sent to the trademark owners, and therefore, the action is considered to be not effective in practice.

Question 23: What are the available remedies for dealing with a trademark infringement?

Under Article 199 of the IP Law, the available remedies for dealing with a trademark infringement are civil, administrative or criminal ones, depending on the nature and seriousness of the infringement.

Question 24: What are the available remedies for dealing with a trademark infringement?

No, Vietnam does not organize a separate and professional court system for handling IP matters in general and trademark infringements in particular. The court of jurisdiction over trademark infringement shall be the administrative tribunal or civil tribunal in the People’s Court of the city or province where the administrative organization or defendant involved is located, respectively.