1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Vietnam. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is strongly advisable. As discussed below, the legal benefits of registration may not be available unless the mark is registered.
3. What is registrable?
Any device, figurative element, word, letter, design, or their combinations presented in one or more colors, which is distinctive, not deceptive, and not identical or confusingly similar to a prior mark in respect of similar goods or services, may be registered as a trademark or service mark. A sign, such as a single letter, numeral, or simple geometric shape, while not inherently distinctive, may be registered as a trademark or service mark upon a showing of evidence of wide use.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
Universal usage of domain name under .vn is encouraged. Domain names having direct involvement in business in Vietnam are given priority. Selection of domain name is at discretion of registrants in compliance with existing laws, and in conformity with legal regulations on intellectual properties and provisions of the Regulation. Registration of a domain name shall be made on the principles of equality, regardless of whether the registrant is an individual or organization and on a first-come, first-served basis. A domain name shall only be allocated once a registrant supplies full information on the DNS server or targeted domain name it points to. A registrant must explain the correlation between a registered domain name and his business and is liable for the accuracy of information provided to Vietnam Internet Network Information Center.
6. Should a trademark be searched before filing?
A search is not compulsory but highly recommended. The result of the search is available in roughly one month. By performing a prefiling search, the applicant can save the cost of filing an application if searching results show that the mark has been registered by someone else.
7. How do I file?
An individual, legal entity or other subject lawfully engaged in production activities in Vietnam may file an application, directly or through an Industrial Property Representative service organization. A foreign individual or legal entity that does not have a legal representative or actual production or business facilities in Vietnam, can apply only through an Industrial Property Representative service organization.
8. What information must be provided before filing?
Before filing, an applicant must provide 15 specimens of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered. A Vietnamese trademark attorney, duly appointed under a power of attorney, may sign the application form. Priority information also should be provided if priority is being claimed (see response to question 11).
9. Is local registration the only option, or are there international alternatives?
International registrations are also available (see Guide on the Madrid Agreement and Protocol).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is not compulsory. It is possible to file one application for a mark that is used in various classes of goods and/or services.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Vietnam application, the filing date of the home application can be claimed as the filing date in Vietnam. An international registration can be based on a Vietnam registration (see Guide on the Madrid Agreement and Protocol).
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A registered trademark should be used but there is no requirement to file evidence of use periodically or upon renewal. A registered trademark that has not been used for a period of five consecutive years before an allegation of nonuse is vulnerable to cancellation upon application by an aggrieved party.
13. Is using a variation of the trademark allowable?
Provided that the difference in the mark is not substantial and does not affect the identity of the mark, no problem should arise. For a registration to be maintained and renewed, the mark in use must retain the essential character of the registered mark. Use in a modified form is acceptable, provided that the modification does not change the nature of the trademark or materially alter the character of the mark.
14. Is there any advantage to using a trademark before filing an application?
Vietnam has a first-to-file system, and therefore use of the trademark is not a condition for filing an application. However, in the event of a priority conflict between applications filed at the same time, registration will be granted to the applicant who proves the most extensive use.
15. For an application to be valid, are there any particular requirements that must be met?
No. Please see response to question 8.
16. What information is first published about an application/ registration and when is it published?
In the second month after being examined as to form, a legitimate application is first published in the Official Gazette of Industrial Property. Information about registration is published in the second month after registration and generally includes the filing date; priority date; granting date; expiration date; name and address of the owner of the mark; goods/services specification; registration number; application number; disclaimer (if any); and IP agent (if any).
17. What kind of examination (if any) will a new application undergo?
There are two kinds of examination, namely, examination with respect to form (examination of formality) and examination with respect to substance (substantive examination). The first kind of examination is conducted to determine if the application meets the requirements as to form. As to the substantive examination, the mark is examined to determine whether it complies with local rules as to distinctiveness, deceptiveness, and likelihood of confusion. This process takes about 12 months (three months for examination of formality and nine months for substantive examination).
18. What response to official objections is required?
When the Registrar finds that the trademark in question does not meet all the requirements as to substance, the applicant will receive a notice from the Registrar stating the reasons why the trademark cannot be registered. The response time to this notification is two months. If the applicant fails to respond within this two-month period or the Registrar does not accept the response of the applicant, an official refusal will be issued. The response time to this refusal is three months and extendable for two, additional three-month periods. Depending upon the nature of the objection, it may be necessary to submit evidence of use, consent of the proprietor of cited earlier marks, or restrict the specification of goods/services.
19. How long is the registration process?
For successful applications, the registration process takes approximately 12 months.
20. What rights does an application confer?
The application can be cited against a subsequent conflicting application, and can be used to oppose subsequent applications upon registration. Rights begin on the legitimate application date.
21. What is the legal effect of a registration?
The registration entitles the registrant to file infringement suits against unauthorized third-party users, oppose subsequent applications, and cancel subsequent registrations. It also enables the registrant to obtain an injunction against unauthorized use and to seize the goods.
22. Can an application be opposed or cancelled by third parties?
Before registration, any interested party shall have an opportunity to oppose the registration of a trademark after the trademark has been published in the Industrial Property Gazette. At any time during the term of the registration, any interested party may petition for cancellation of the registration on the ground that it was obtained fraudulently or contrary to law.
23. Can an application or registration be assigned?
Yes. A trademark, whether registered or unregistered, may be transferred or assigned. A pending application can be assigned, but it is not possible to record the assignment until the trademark is registered. A registration may be transferred.
24. Must an assignment include goodwill?
There is no such provision in the law that requires an assignment to include goodwill. In practice, no transfer of goodwill is required in order for an assignment of a trademark to be effective.
25. Does an assignment have to be recorded?
Yes. An assignment of a registered trademark must be registered to be legally effective.
26. Can an application or registration be licensed?
Only registrations can be licensed. The owner may license a registered trademark to a third party. The owner or registered owner should, however, exercise control over the quality of the products made and sold by the licensee. The license may cover all or some of the goods/services, may be exclusive or nonexclusive, and may be limited as to territory or duration.
27. Does a license have to be recorded?
Yes.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Vietnam.
29. How long does a registration last?
The term of registration is ten years from the valid application date, and is renewable for periods of ten years each.
30. What is required to renew a registration?
An original registration certificate, authorization of the trademark attorney, and payment of the renewal fee are required. The registration will not be reclassified on renewal.
31. Is it necessary to indicate a trademark registration on goods or services?
No. The marking 揜egistered Trademark?is optional. A registered trademark must be affixed to goods intended for export, goods directly affecting public health, and other goods of economic and social significance as determined by government regulation. The trademark itself need not carry any marking.
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
No. |
