Q&A: Registering trademark in Vietnam (Part 2)

ARTICLES

Q&A: Registering trademark in Vietnam (Part 2)

1. How long for the process of mark registration in Vietnam?

The processing of mark registration in Vietnam shall be conducted within the timelines mentioned below:

  • Formal examination: An application for registration of industrial property shall have its form examined within one (01) month from the filing date. The purpose of this stage is to examine compliance with regulations related to the form of the registration application then evaluate whether this application is valid or not.

  • Publication of application: An application for the mark registration shall be published within two (02) months as from the date such application is accepted as being valid. Subsequently, these applications shall be published in the Official Gazette of Industrial Property.

  • Substantive examination: nine (09) months from the date of publication of the application with the purpose of evaluating of the eligibility for grant of protection titles for subject matter stated in such applications under protection conditions and for determination of the respective scope of protection.

2. How long is the trademark protection period in Vietnam?

A certificate of registered mark 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.

3. What are the rights of trademark owner?

In accordance with Clause 1 Article 123 Law on Intellectual Property, rights of owners of marks includes:

  • To use or authorize others to use industrial property objects according to the provisions of Law on Intellectual Property.

Use of a mark means the performance of the following acts:

(a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;

(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

(c) Importing goods or services bearing the protected mark. 

  • To prevent others from using industrial property objects according to the provisions of Article 125 of this Law;

  • To dispose of industrial property objects according to the provisions of Chapter X of this Law.

4. What is considered an infringed of the trademark rights of the other?

The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

 (a) Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;

 (b) Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (c) Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (d) Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well-known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owner.

5. What can a trademark owner do if his or her trademark has been infringed?

An intellectual property right holder shall have the right to apply the following measures to protect the intellectual property rights of such holder:

 (a) To apply technological measures to prevent acts of infringement of its intellectual property rights;

 (b) To request any organization or individual who commits an act of infringement of the intellectual property rights of the holder to terminate such act, make a public apology or rectification, and pay damages;

 (c) To request the competent State body to deal with acts of infringement of its intellectual property rights in accordance with the provisions of this Law and other relevant laws;

 (d) To initiate a lawsuit at a court or a claim at an arbitration centre to protect the legitimate rights and interests of the holder.

6. Can the trademark be terminated or cancelled after registration?

The validity of a protection title shall be terminated in the following cases:

  • The owner fails to pay the stipulated validity maintenance or extension fee;
  • The owner declares relinquishment of the industrial property rights;
  • The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;
  • The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
  • The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;
  • The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;

A protection title shall be entirely invalidated in the following cases:

(a) The applicant for registration has neither had nor been assigned the right to register the invention, industrial design, layout design or mark;

(b) The industrial property object failed to satisfy the protection conditions at the time the protection title was granted.

A protection title shall be partly invalidated as to the part which failed to satisfy the protection conditions.

 

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.