What are the registrable sign and/or mark for Trademark registration in Vietnam?

Visible signs and indicators in the form of letter(s), word(s), picture(s), figure(s), including three-dimensional figures or a combination thereof, being represented in one or more colors.

What are the non registrable sign and/or mark for Trademark registration in Vietnam?

The common appellation of goods and/or services, belonging to any language, which is widely and commonly used;  

Signs that have the character of describing the time, place, production processing,  kind, quality, quantity, nature, component, purpose, value and  origin of the goods and/or services;  

Signs that cause misunderstanding with respect to the origin,  function, utility,  quality and value of the goods and/or services ;

Signs that are identical or similar to the seal of quality, the seal of inspection, the seal of warranty of Vietnam and foreign countries, as well as those of  international organizations; 

Signs, appellations, drawing and emblems that are identical or confusingly similar to the national flag, national emblem, portraits of national heroes, prominent and  famous people, geographical  denominations and the name of by the concerned competent authority or person;

Signs those are contrary to the law, public order or social morality.

Has Vietnam performed the recognition of well-known marks?

According to the Vietnamese current intellectual property law, the provisions on the recognition of well-known marks are stipulated, however, these do not still run in practice.

Did Vietnam adopt first to file principle?

First-to-File Principle: Vietnam adopts the first-to-file principle.

Can priority be claimed for trademark in Vietnam?

Priority in accordance with the Paris Convention (PC) can be claimed based on an earlier application filed in a foreign country - PC member of or an officially recognized international exhibition held in Vietnam or in a foreign country - PC member.

Priority can be also claimed according to bilateral agreements or based on the reciprocity principle. To secure the priority right, the application must be filed within 6 months from the filing date of the first application filed abroad or the date of the exhibition as above mentioned.

In these cases, the protection will be given to the applicant who can prove that his trademark has been well-known or been widely used and recognized.

Who can apply for Trademark registration in Vietnam?

Natural or legal persons or other entities legally engaged in production and/or services.

As for collective marks, an applicant is the natural or legal person representing the collective of such natural or legal persons who abide by a common regime for the use of collective mark.

What is the REQUIRED INFORMATION for Trademark registration in Vietnam?

Full name, address and nationality of the applicant.

Description of the trademark: meaning, colors claimed, translation or transliteration of characters into English if the mark contains foreign characters.

List of goods/services to be covered by the trademark and if possible, the class(es) of the respective goods/services according to the International Classification.

If a priority is claimed: statement of country, application number and filing date of the original foreign application from which the priority is claimed.

What are the REQUIRED Documents for Trademark registration in Vietnam?

-    Notarized Power of Attorney from the applicant. General Power of Attorney is acceptable for filing various trademarks in the name of the same applicant(s) (Fax copy accepted at filing, original required within three (03) months).

-    Twenty (20) prints of the mark, maximum size 8cm x 8cm, minimum size l.5cm x l.5cm.

-    Three (03) additional representations in black and white, if the mark is in color.

-    Rules on use of mark and list of companies as members in case the applied mark is a collective one.

-    Certified true copy of the first filed application or Certificate issued by the competent authorities of the exhibition, where priority is claimed. (This documents can be filed within 3 month from the filing date.).

-    A document certifying origin, award, medal if the mark contains such elements.

-    Letter of Consent from the competent authority if the mark contains symbols or names, which are confusingly identical with or similar to the image of State flags, State emblems, Vietnamese or foreign organizations, national leaders or heroes, distinguished persons, geographic names.

What are the REQUIRED Documents for Trademark Renewal in Vietnam?

  A Power of Attorney from the Owner of Trademark Registration Certificate duly certified by a Notary Public.

-    The original Trademark Registration Certificate.

What are the REQUIRED Documents for amendment of Trademark Registration in Vietnam?

-    A Power of Attorney from the Owner of  Trademark Registration Certificate duly certified by a Notary Public;

-    The original Trademark Registration Certificate.

-    Certificate or Declaration of Change of Name and/or Address of trademark owners

What are the REQUIRED Documents for assignment/licensing of Trademark?

-    A Power of Attorney from the Owner of Trademark Registration Certificate duly certified by a Notary Public.

-    The original Trademark Registration Certificate.

-    Two original or certified copies of Assignment/Licensing Agreement duly executed by both parties with the signatures verified by Notary Public.

Where to file Trademark Applications in Vietnam?

Trademark applications can be filed with the NOIP's Office in Hanoi or its representative offices in Ho Chi Minh and Danang Cities (the NOIP's Offices).

Vietnamese individuals and entities may file trademark applications directly with the NOIP' offices. Foreign individuals permanently residing in Vietnam or foreign entities having legal presence in Vietnam or real and effective production and business establishments in the country may also file applications directly with the NOIP's offices.

Trademark applications of foreign individuals or entities other than above listed cases must be filed through licensed IP agents.

Did NOIP accept Multi-class Applications?

The International Classification of Goods and Services under the Nice Agreement (currently the eighth edition) is applied for classification of goods/services of trademark applications filed in Vietnam.

What are the trademark examine process in Vietnam?

All trademark applications will be examined as to form by the NOIP within 3 months from the filing date. A Notification of Acceptance providing official filing date, official filing number, and priority date if any will be issued by the NOIP if the application is found to satisfy the formality requirements. In case the application does not meet the formality requirements, the NOIP will issued a Notification of Refusal of Acceptance or Notice for   Amendment or Correction, as the case may be.

Upon acceptance as to form, the application will be examined as to substance within 9 months from the date of acceptance of the application as to form. During the substantive examination the NOIP shall consider if the claimed trademark possesses distinctiveness and falls into the signs excluded from trademark protection. Within this period, the applicant may request for amendments or minor change to the application, for example, to disclaim some elements of the mark or restrict the goods and/or services.

International trademark applications filed under the system of Madrid Agreement shall also be examined by the NOIP as to substance within 1 year from the date of extension of protection to Vietnam.

Where the trademark is found unregistrable, the NOIP will issue a Notification of Examination Result of Application notifying the applicant of the intended refusal of grant of the certificate and the grounds therefore, or of the shortcomings or amendments which should be cured or made. The applicant has 2 months to reply or make necessary amendments. If the applicant fails to reply or the response is not appropriate, the NOIP will officially issue a Notification of Refusal of Granting Certificate of Trademark Registration.

If the trademark is found registrable or the response to the office action, as the case may be, is satisfactory, the Certificate of Trademark Registration or Decision of Acceptance of Protection will be granted.

What is the term of protection?

A Certificate of Trademark Registration shall take effect from the granting date for a period of ten (10) years calculated from the filing date of the application and is renewable indefinitely for periods of ten years.

Are there any provisions for criminal enforcement and remedies?

Criminal enforcement and remedies are:

-    The owner of right shall be entitled to request a competent state authority to    deal with or else initiate proceedings at trial against any third party for having    infringed his industrial property right.

-    The owner shall have the right to request injunction and damages against the infringer.  Before taking action like that, the owner of right may notify the infringer and request him to stop infringement.

-    The owner of patent or design shall have the right to request the court’s assistance against any person who has not paid due compensation.

-    The owner itself of right can take action or authorize other person to do  these.

What kinds of remedies are available?

Injunction, delivery up, damages, seizure of infringing products,fines and imprisonment.

What kinds of sanctions are available?

Administrative, civil and criminal sanctions can be taken for punishing infringing act.

How to renew Certificate of Trademark Registration?

To renew Certificate of Trademark Registration the renewal request shall be filed with the NOIP within 6 months before the expiry date of the preceding validity term subject to payment of renewal fees.

Is there grace period for late renewal?

There is 6 - month garce period for late renewal, in this case a fine of 10 percent of the renewal fee for each month overdue shall be paid.

What is an opposition process before Vietnam NOIP ?

An opposition can be brought before the National Office of Intellectual Property (NOIP) against any published trademark application during the period of its substantive examination.

Within 5 years from the date of granting trademark registration certificate, a cancellation can be brought before the NOIP against it. There is no time limit for cancellation of the trademark registration in bad faith.

Does Vietnam Trademark Office have an official opposition for the pending trademark application?

Recently, the Trademark Office has just provided that all applications for trademark registration after being accepted as to the formalities shall be published in the Official Gazette of Industrial Property for the opposition actions by any third party. Upon considering the opposition, the Trademark Office may issue an official notice of the refusal of the registration.

What procedures of the registration for the trademark application are performed?

The application for trademark registration will undergo following steps:

Formality examination within 3 – 4 months from the filing date.

Publication of the trademark application data in the Official Gazette of Industrial Property, if being accepted as to the formalities for the official opposition actions submitted by any third party in the 9-month period of the substantive examination.   

substantive examination within 9 months from the date on which the application accepted as to the formalities to make a decision of refusal or grant of the protection, and simultaneously trademark registration data to be published in the Official Gazette of Industrial Property for appeal by any third party.