Global Trademark GO - Vietnam - Introduction to Vietnam Trademark Application

In 2005, Vietnam promulgated its first Intellectual Property Law (LAW ON INTELLECTUAL PROPERTY), which was revised twice in 2009 and 2019. The current trademark law is the latest revised Intellectual Property Law in 2019. Vietnam joined the Madrid Agreement on March 8, 1949, and the Madrid Protocol on July 11, 2006. Any unique device, brand, title, ticket, name, signature, words, letters, numbers, or various combinations of the above can be registered as a word trademark, graphic trademark, three-dimensional trademark, hologram trademark, color combination trademark, etc. And protected as a trademark in Vietnam. Vietnam’s review of the distinctiveness of three-dimensional trademarks is very strict, especially when the three-dimensional trademark is related to the specified characteristics of the goods or their packaging. If a three-dimensional trademark is only a characteristic of the designated goods, it cannot be registered unless it has acquired distinctiveness through long-term and large-scale use. Vietnam trademark applications accept applications for multiple categories with one mark.

On January 1, 2023, a number of important amendments to the trademark part of the Vietnam Intellectual Property Law will come into effect. The main content involves:

1. Formal recognition of sound trademark protection;
2. Modify the criteria for determining trademark reputation;
3. Shorten the time window for expiry of prior trademarks (from 5 years to 3 years);
4. An application for cancellation of an earlier registration can be made by requesting a suspension of examination of the trademark application;
5. For the first time, "bad faith" can be used as a basis for objections, invalidity proceedings and rejections;
6. An objection application can be submitted to a trademark application within 5 months of trademark announcement;
7. Clarify the meaning of “other signs” that cannot be protected as trademarks (for example, since registration of sound trademarks is allowed, the registrability of the national anthem and the national anthem is excluded);
8. Add reasons for trademark termination or invalidation (for example, the registered trademark becomes the common name of the registered product or service);
9. Increased appeals process;
10. Increase the effective date of international registrations under the Madrid System.

Some of the provisions in these amendments are innovative, while others are consistent with current regulations in most countries around the world and deserve special attention.

1. Trademark authority

• Vietnam Trademark Office, English: INTELLECTUAL PROPERTY OFFICE OF VIET NAM (IP VIETNAM)
• Website: Trang chủ - CỤC SỞ HỮU TRÍ TUỆ (ipvietnam.gov.vn)
• Trademark Search: IP Viet Nam

2. How to apply for trademark registration

• paper submission

3. Trademark registration application language

• Vietnamese

4. Documents required for trademark registration application

• Trademark application
• Official fee payment certificate
• Trademark pattern
• A description of the characteristics of the trademark (usually prepared by a trademark attorney)
• power of attorney
• An original copy of the priority document in Vietnamese must be submitted within 1 month of filing the application

5. Vietnam trademark registration application process

• Trademark application goes through the stages of application submission, formal review, announcement, substantive review, payment, and certificate issuance. Among them, if you are dissatisfied with the decision to reject the case, you can file a review with the Appeal Board, and if you are dissatisfied with the review decision, you can file a lawsuit with an ordinary court. Substantive examination examines the registrability of a trademark and potential conflicts with other trademarks. Substantive examination is usually completed 9 months after the application is published.

6. Documents required for trademark change

• Original registration certificate
• Letter of attorney (a letter of attorney signed by both the transferor and the transferee)
• Change Statement/Transfer Agreement (each page of the transfer agreement needs to be signed by both the transferor and the transferee, and the transfer agreement needs to be notarized, which usually takes 5 days)
• Original registration certificate
• Transfer official fees (Special reminder: The official will not regularly verify whether the information of the trademark owner is accurate, so there will be no fines or punitive measures for failure to register changes in time, and it will not affect subsequent trademark transfers. However, it is still recommended Update the applicant’s name and address through the official website in a timely manner)

7. Use of Trademarks and Cancellation of Trademarks

• If a trademark has not been used continuously within five years from the date of registration, anyone may request to cancel the trademark on the grounds that the trademark has not been used.
• When providing evidence of use in the face of trademark revocation, all kinds of evidence that can prove the trademark is used in business are acceptable, such as products, product packaging, store display photos; business activity-related documents, invoices, news or media advertisements, contracts, etc. , the evidence should be able to reflect the time, place and goods when the trademark was used. The original evidence does not need to be notarized or certified. However, if a copy is provided, it must be submitted in the form of an affidavit and notarized. In addition, if the withdrawal proceeds to court proceedings, the affidavit must be authenticated. The Vietnamese embassy certification time generally takes 9 days.

8. Trademark objections

• From the time the trademark is announced to the end of the trademark substantive examination procedure, anyone can file an opposition request against the trademark and submit evidence.

9. Authorization, validity period and trademark renewal

• If there is no objection or rejection, a trademark registration certificate will be issued, and the registration fee should be paid within 3 months after the registration decision. The trademark is valid for 10 years from the date of application and can be renewed for 10 years each time with no limit on the number of times. In order to renew a trademark, the trademark owner must submit a renewal application and pay the renewal fee within 6 months before expiration. Renewal is possible within 6 months of expiration for an additional fee.

10. Average time for trademark authorization

• If the trademark registration process goes smoothly, the average trademark authorization time is 18-20 months.

11. Other matters needing attention

• If Vietnam trademark registration covers more than 6 products in a category, the fee will increase.
• The Vietnam Intellectual Property Law revised in 2009 does not stipulate what behavior is considered as "bad faith" in registering a trademark in Vietnam. Therefore, the interpretation of "bad faith"/dishonesty as a reason for canceling a lawsuit depends on the State Intellectual Property Office of Vietnam on a case-by-case basis. understanding.