I. Trademark and the condition for a protected trademark
1. Trademark
“Trademark” is the term widely used in the market economy, associated with the production and trading of goods and services. But now, many business owners do not know what a trademark is. They are not aware of the value of the trademark to their businesses, so they are indifferent to registering protection for this type of intellectual property.
Most countries on the world provide the trademark definition in their Intellectual Property Law. In Vietnam, the trademark definition is regulated in Clause 16 Article 4 the Intellectual Property Law: “Trademark means any sign used to distinguish goods or services of different organizations or individuals.”
2. The condition for a protected trademark
Under Vietnamese law, a trademark shall be eligible for protection when it satisfies the following conditions:
– Firstly, it is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors.
– Secondly, it is capable of distinguishing goods or services of the mark owner from those of other subjects.
A trademark is considered to be capable of distinguishing if it is made up of one or several easily recognizable, easily memorized elements or made from many factors combined into a easily recognizable, easily memorized and it does not belonging in the cases which are considered to be incapable of distinguishing.
The law of Vietnam lists many cases of trademarks that are deemed to be indistinctive such as simple shapes and geometric figures, numerals, letters or scripts of uncommon languages; 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; signs indicating the geographical origin of goods or services; signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable; signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services…
– Thirdly, signs ineligible for protection as marks such as signs identical with or confusingly similar to national flags or national emblems; signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations; signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries…
II. Registration procedure for trademarks
1. The application for registration of trademark
The application for registration of the trademark includes:
- 02 applications for registration of trademark;
- 05 mark specimens that satisfy the following requirements: a mark specimen must be clearly presented with the dimensions of each element of the mark ranging between 8 mm and 80 mm, and the entire mark must be presented within a mark model of 80 mm x 80 mm in size in the written declaration; For a mark involving colors, the mark specimen must be presented with the colors sought to be protected.
- Fee and charge receipts.
2 Methods of filing application
The applicant may choose paper filing or online filing through the Intellectual Property Office of Vietnam’s (IPVN’s) online public service portal.
a) Paper filing
The applicant may submit an application for a trademark directly or via postal service to one of the IPVN’s application receiving places, specifically as follows:
- Head office of IPVN, address: 386 Nguyen Trai, Thanh Xuan District, Hanoi city.
- Representative Office of IPVN in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh city.
- Representative Office of IPVN in Da Nang City, address: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang city.
b) Online filing
Conditions for online filing: Applicants need to have a digital certificate, a digital signature and a registed account which is approved by the IPVN on the Online Application Receiving System.
The applicant needs to complete the steps of filing a trademark application form on the IPVN’s Online Application Receiving System. After that, a confirmation of online submission will be sent to the applicant.
3. Time limit for processing trademark registration applications
From the date on which the registration application is received by the IPVN, the registration application of a trademark shall be examined in the following order:
- A trademark registration application shall have its formality examination within 01 month from the filing date.
- Publication of trademark registration applications: A trademark registration application shall be published within 02 months after it is accepted as a valid application;
- An industrial property registration application shall be substantively examined within 09 months from the date of application publication.
4. Validity of protection titles
A certificate of registered trademark shall be valid from the grant date until the end of ten (10) years after the filing date and may be renewed for many consecutive terms, each of ten (10) years.
Legal basis:
- The Intellectual Property Law 2005, amended and supplemented in 2009 and 2019;
- The Decree No. 103/ 2006/ND-CF of September 22, 2006, detailing and guiding the implementation of a number of articles of the Law on Intellectual Property regarding industrial property;
- Circular No. 01/2007/TT-BKHCN;
- The Circular No. 01/2007/TT-BKHCN dated February 14, 2007 providing guidelines for the Government’s Decree no. 103/2006/ND-CP dated September 22, 2006;
- The Circular No. 16/2016/ TT-BKHCN date June 30, 2016.
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