After the Department of Intellectual Property (“NOIP”) receives the trademark application, the application will go through 02 stages of examination, namely the formality examination and the substantive examination. According to the provisions of Section 13.8 of Circular 01/2007/TT-BKHCN, the term for the formality examination is 01 month from the date of application. In case the application has errors, the applicant must amend the inappropriate content(s) according to the instructions of the NOIP. The term for amending and supplementing the error(s) in the application is usually 02 months from the date the NOIP signs the letter of response on the results of the formal examination. In some cases where the number of applications is large, the term for the NOIP to respond to the results of the normal formality examination will be extended. If the trademark application has formal errors that result in the rejection of the application, it will take longer for the applicant to move the trademark application to the substantive examination stage.
Some common errors that lead to the possibility of rejection of the formality examination when filing a trademark application will be mentioned in this article so that the applicant can pay more attention during the preparation process before applying, specifically:
1. Incomplete trademark description
The trademark description consists of two parts, namely the color and description.
For the color part (if there is a requirement for color protection), the applicant will list the corresponding color(s) of the trademark. If the trademark has more than 01 color and that color is not the same color group, the applicant only needs to list the correct color in the trademark. In the opposite case, a trademark has more than 01 color and the same color group, such as blue and turquoise, the owner needs to specify the specific color type. In addition, it is inevitable that the applicant misses one or several colors in the sample of trademark. Therefore, the applicant should pay attention to listing the color(s) of the trademark in completion and in accordance with the type of color shown in the sample of trademark.
As for the description: when describing a trademark, the applicant should focus on describing the outstanding identifying signs of the trademark. However, there are also many cases where the trademark has a small detail(s) but the applicant does not show it in the description, which also leads to the possibility of rejection of the formal examination. At the same time, the colors mentioned in the description should be consistent with the colors mentioned in subsection (i).
Particularly for trademarks with foreign language letters, the applicant needs to translate the Vietnamese meaning if the text is a meaningful word. In case the text is a hieroglyphic word, the applicant needs to transcribe and translate it into the Vietnamese meaning.
2. Grouping goods/services that are not in accordance with the Nice Agreement in force at the time of application
According to regulations, the applicant must group goods/services according to the International Classification of Goods and Services under the Nice Agreement. The Nice Agreement has many different versions and the version currently in place is Version 11-2022. Normally, prior to the change of the Nigerian Version, the NOIP will notify the official application of the certain Version for the applicant to pay attention in the preparation stage of the application.
In addition to improperly applying the Nice Agreement at the time of application, the applicant should note that, when describing goods/services, it must be ensured that the goods/services are appropriate and within the scope of the corresponding registered classes of goods/services.
3. Documents sent with the application be incomplete or inappropriate
Typically, the document submitted with the application consists of (i) the minimum required documents and (ii) other documents.
(i) The minimum required documents:
The applicant needs to prepare 02 registration declarations according to the sample. These 02 declarations must ensure that the content is uniform and the same.
The applicant submits a minimum of 05 samples of trademark. For the samples of trademark submitted with the registration declaration, the size, color and clarity of the label form must be consistent with the sample of trademark shown on page 01 of the declaration. In case the trademark submitted is not clear, uneven color with the trademark form on page 01 of the declaration, the application has high possibility of being finalized as rejected in the formal examination.
(ii) Other documents:
In case the applicant applies through an industrial property agent, the applicant needs to sign a power of attorney to submit it together with the document mentioned in subsection (i). Usually, the power of attorney form will be prepared according to the form and sent to the applicant for signature. If the applicant is an individual, just sign and write down the full name. In case the applicant is an organization, the legal representative of the applicant needs to sign, write down the full name, the title of the signer and stamp.
In some cases at the time of application, for objective reasons that the applicant cannot submit the original power of attorney, the applicant has the right to submit the scanned power of attorney. However, the applicant should note that the deadline for submitting the original power of attorney within 01 month from the date of application. In case the applicant does not submit supplements within the above-mentioned term, the trademark registration application will be finalized as rejected in the formality examination by the NOIP.
4. Other cases
In addition to some of the common cases that results in rejection in the formality examination, the application is also likely to be rejected if:
The declaration is not used in the form prescribed by law. The trademark registration declaration form is being applied according to Appendix A – Form No. 04-NH attached to Circular 04/2007/TT-BKHCN.
The mark’s sample is not responsive in size, presentation. According to the regulations, the sample of mark must be clearly presented with the size of each element in the trademark not greater than 80mm and not less than 8mm, the combination of trademark must be presented in the sample of trademark with dimensions of 80mm x 80mm printed on the declaration.
The contents of the declaration are not typed, or the declaration is erased…
The declaration does not contain sufficient information about the applicant, the representative, does not have the signature and/or seal of the applicant or representative.
This article is for general information only and is not a substitute for legal advice. Apolat Legal is a Vietnamese law firm with experience and capacity to advise on matters related to IP. Please click here to learn more about our services and contact our lawyers in Vietnam for advice via email email@example.com.