There are two possible scenarios for an unregistered trademark: Firstly, the trademark is registered for protection first by someone else, the business is unable to their trademark for commercial purposes, and their inherent benefits are no longer guaranteed. Secondly, identification signs are made too similar and duplicated to the point of confusion to exploit the product’s identity and consumer confidence in the quality of the products previously built by the business.
The best solution is that businesses register for trademark protection and develop standards for the quality of their products and services. What should businesses do to maintain trademark protection in the best way?
1. The process of trademark protection registration with Apolat Legal
Trademark protection is using legal measures to protect products from acts of profiteering on product quality, business reputation, and acts of unfair competition. The registration of trademark protection gives businesses the exclusive right to use the trademark. In other words, businesses are legally guaranteed all rights related to the process of using and implementing the brand.
According to Article 72 of the Intellectual Property Law in 2005, a trademark is protected if it meets the following conditions:
- A visible sign in the form of letters, words, drawings, and/or images, including holograms or a combination of such elements, represented by one or more colors.
- The ability to distinguish goods and services of the trademark owner from those of other subjects.
1.1. Registration documents include:
– Sample of the trademark and the list of goods and services bearing the trademark.
– Regulations on the use of collective trademarks and regulations on the use of certified trademarks.
1.2. The process of registering for trademark protection:
Step 1: Carrying out trademark clearance search (optional)
Step 2: Filing the trademark application
Step 3: Following up the process of examining trademark application (formality examination and substantive examination)
Step 4: Responding to office actions from NOIP or oppositions from third parties
Step 5: Receiving trademark certificate
Step 6: Using the registered trademark and carrying out trademark watch regularly
Step 7: Renewing the trademark registration validity every ten years
2. Apolat Legal’s advice for businesses who need to register for trademark protection
To protect their trademark (brand), businesses should consider the following points:
Try to avoid: trademarks that describe goods and services. For example: these can be trademark’s names containing words that describe the product such as: delicious, beautiful, interesting, etc., and trademarks coinciding with places’ names. Case in point, it can be a trademark coinciding with geographical indications such as Ben Thanh Market, Phu Quoc…
Trademark’s colors: According to the Intellectual Property Law in Vietnam, there is no specific regulation on colors for trademarks. When registering a black-and-white trademark, during use, the owner can use the trademark in all basic colors: blue, red, white, black, orange, yellow, blue, purple… as long as the content of the trademark remains unchanged in the form as registered. When registering a colored trademark, the trademark is protected in both content and colors. Colored trademark protection will be against competitive behavior that use trademark combinations of similar colors.
Search is needed before trademark registration: Before filing a trademark registration application, businesses must carry out an accurate trademark search to avoid the trademark is identical or similar to other trademarks previously registered. The search also helps businesses save time and costs and reduce risks
The ‘First to file’ and ‘First to use’ rules:
According to the principle of ‘first to file’, the law only protects intellectual property rights for a single subject who is the earliest applicant, not the creator. As for the principle of ‘first to use’, when considering two or more applications of the same trademark, the basis for trademark protection will belong to the first owner to use the trademark, not the first filing for protection. In fact, both of these principles are used in parallel in many countries to limit each other’s advantages and disadvantages. Businesses need to understand these principles to give the best solutions for their trademark protection.
Register for trademark protection as soon as possible: It is not difficult to list Vietnamese businesses whose trademarks have been stolen in the international market. Registering trademark protection early allows the law to protect your rights and limit unnecessary disputes and lawsuits and saving time, costs, and resources for businesses. Although the ‘first to file’ principle has many limitations, it is still considered the most important principle, having the most complete legal basis for accepting the intellectual property rights protection in the legal system of most countries in the world.
Follow ups the registration procedure both before and after: The process of considering and approving trademark protection registration is quite complicated. The waiting time is quite long, and the application is not always accepted. Businesses must meet the criteria for both form and content to be granted a trademark protection certificate. Therefore, follow ups the registration procedure both before and after is necessary. Businesses need to develop appropriate solutions to prevent the worst scenarios.
Using the trademark: Businesses must use that mark continuously after registering trademark protection and having a trademark certificate. If the trademark is not used continuously for five years or more, trademark ownership is invalidated.
Choose a reputable law firm: Businesses can file a trademark protection application by themselves, but finding a reputable trademark registration law firm will help them optimize the registration process and save time, money, and resources. Law firm will offer the most comprehensive solution when having legal issues need to change.
3. Notable clients
Apolat Legal has gained great trust after successful trademark registrations for large enterprises such as Long Thanh, Kem Nghia, Sakos, Citigym, Tuk Tuk,… Every cooperation opportunity is an experience and valuable lesson for the development foundation of Apolat Legal. We are always ready to listen and answer our clients’ questions about trademarks and trademark registration.
APOLAT LEGAL VIETNAM LAW FIRM
Hotline: (+84) 911 357 447
Address: Floor 5, 99-101 Nguyen Dinh Chieu, Vo Thi Sau Ward, District 3, Ho Chi Minh City, Viet Nam
Work hours: Monday – Friday; 8:15 – 17:15