Trademark

Definition

A trademark is a sign used to distinguish the goods and services of different organizations or individuals.

A trademark is protected if it meets the following conditions:

1. It is a visible sign in the form of letters, words, drawings, images, three-dimensional shapes, or a combination of these elements, presented in one or more colors, or an audible sign expressed in graphic form;
2. It is capable of distinguishing the goods or services of the trademark owner from those of others.

Information/Documents Required for Trademark Registration Application

• Name and address of the applicant.
• A sample of the trademark.
• A list of goods/services associated with the trademark according to the 11th Edition of the Nice Classification.
• A signed original Power of Attorney.
• A certified copy of the priority document, if applicable.

Trademark Registration Process in Vietnam

1. Formality Examination (1 month from the filing date): All trademark applications will be examined by the Intellectual Property Office of Vietnam for compliance with the formal requirements. If the application meets the requirements, the office will issue a notice of acceptance. Otherwise, the application will be rejected or asked to be amended.

2. Publication of the Application (2 months from acceptance): Within 2 months from the notice of acceptance, the application will be published in the Industrial Property Gazette for third-party opposition.

3. Substantive Examination (9 months from publication): The purpose of the substantive examination is to assess whether the trademark meets the requirements for protection. This includes checking whether the trademark could cause confusion with any already registered or pending trademarks.

4. Notice of Intent to Grant a Registration Certificate and Fee Payment Request: If the application meets the requirements, the office will notify the applicant of its intent to grant the registration certificate and request payment of the registration fee within 3 months.

5. Issuance of Registration Certificate (1 month from payment): After the applicant has made full and timely payment of the fees, the Intellectual Property Office will proceed with issuing the trademark registration certificate within 15 days.

In practice, the total time for trademark registration can range from 18 to 24 months from the filing date at the Intellectual Property Office.

First-to-File Principle

The "First-to-File" principle is applied in Vietnam, meaning that if two or more entities file for the same trademark for the same goods or services, only the earliest filer will be granted the protection.

If two applications are filed on the same day, the Intellectual Property Office will ask the parties to reach an agreement on which one will be granted protection. If no agreement is reached, all applications will be rejected.

Protection Term and Renewal

The trademark registration certificate is valid from the issuance date for 10 years from the application filing date and can be renewed indefinitely for subsequent 10-year periods.

To renew, the certificate holder must file a renewal request and pay the renewal fee to the Intellectual Property Office within 6 months before the expiration of the certificate. The renewal request can be submitted later, up to 6 months after the expiration, with an additional 10% late fee for each month delayed.

Rights and Obligations of Trademark Certificate Holders

The certificate holder has the right to (i) exclusive use of the trademark, including the right to transfer its use to others via licensing agreements or transfer of ownership through assignment contracts or inheritance; (ii) demand cessation of infringing activities and compensation for damages caused by such infringements.

The holder must continuously use the trademark for at least 5 consecutive years. Failure to do so may result in a third party requesting the cancellation of the trademark registration.

Our Services

• Trademark search, consultation, and evaluation of the possibility of registration and use.
• Drafting and filing trademark applications with the Intellectual Property Office.
• Monitoring the status of trademark applications.
• Responding to office actions/rejections during the examination process.
• Filing oppositions, complaints, cancellation, and invalidation requests for trademark registrations.
• Negotiating, drafting contracts, and recording trademark licensing, assignment, or franchising agreements.
• Recording amendments to trademark information.
• Trademark renewal services.
• Managing trademark portfolios.