Trademark Registration Service in Vietnam

Trademark Registration Service in Vietnam

OUR INTELLECTUAL PROPERTY SERVICE IN VIETNAM

A trademark is a tool used to differentiate goods and services from each other. Under the intellectual property law of Vietnam, a trademark is a special recognizable sign that can be words, image, letters, figures, 3D logo, sound.

Vietnam is a “first-to-file” jurisdiction, meaning that it is necessary to register a trademark in order to obtain proprietary rights over it. Vietnam is also a member state of the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. Trademarks must be registered via the Vietnam National Office of Intellectual Property (NOIP).

The applicant shall indicate on the application the class of goods and describe the goods with which the mark is used. Based on the prescribed schedule of classes of goods, the applicant can apply the same trademark for goods in different classes within the same application.

Apolat Legal offers a wide range of intellectual property services in Vietnam for both local and international clients. As well as special intellectual property protection services for foreign clients in Vietnam.

NOTE: In Vietnam registered trademarks are valid for a period of ten (10) years from the registration date. It will then be renewed for subsequent ten-year periods indefinitely.

trademark

What kinds of trademark can be registered?

A word or a combination of words, letters, and numerals can perfectly constitute a trademark. But trademarks may also consist of drawings, symbols, three-dimensional features such as the shape and packaging of goods, non-visible signs such as sounds used as distinguishing features – the possibilities are almost limitless.

Who can register a trademark in Vietnam?

Both domestic and foreign Individuals and Companies are entitled to register trademarks in Vietnam.

Vietnamese individuals, organizations, and companies

  • Directly file a trademark registration application at the National Office of Intellectual Property;
  • Through intellectual property agents such as Apolat Legal Law Firm, apply for trademark registration at the National Office of Intellectual Property.

Foreign individuals, organizations, and companies

  • According to the Vietnam intellectual property laws, trademark registration applications can only be filed through an Intellectual Property agent (such as Apolat Legal Law Firm), which submits trademark registration applications at the National Office of Intellectual Property.

Registering and protecting trademark in Vietnam with 7 steps

STEP 1: Carrying out trademark clearance search (optional)

The step of trademark clearance search in Vietnam is optional but necessary to identify if your potential trademark is registerable or to check if there is any other identical or similar trademark registered or filed in Vietnam National Office of Intellectual Property (NOIP). You can carry out the trademark clearance search by your self via online portal of NOIP (insufficient data published) or assign a qualified intellectual property agent to do so (in depth search). Apolat Legal will provide the written report of comprehensive trademark clearance search for our clients who engage in our trademark registration services. When receiving the trademark clearance search result, you will decide to file your trademark application in Vietnam immediately or amend your trademark before going ahead.

STEP 2: Filing the trademark application

After an in-depth trademark clearance search and the trademark is assessed as being able to register, Apolat Legal will represent you to file a trademark registration application at the Vietnam National Office of Intellectual Property. You only need to sign the authorization letter, Apolat Legal will prepare all remaining documents.

STEP 3: Following up the process of examining trademark application (formality examination and substantive examination)

Typically, the process of trademark registration consists of the following steps:

  • Formality examination (01 month)
  • Application publication (02 months)
  • Substantive examination (09 – 12 months)
  • Grating the certificate (1-2 months).

In fact, the total time for process of trademark application examination may be much longer.

STEP 4: Responding to office actions from NOIP or oppositions from third parties

During the process of examining the trademark application, NOIP can issue notices requesting applicant to respond or clarify. If the applicant fails to respond to office actions timely, the trademark application will be rejected. The time limit for responding to an office action regarding a formality examination is two months, with a possible extension of two further months. The time limit for responding to an office action regarding a substantive examination if three months, with a possible extension of the same period. If you engage in trademark registration services at Apolat Legal, we will respond to the above mentioned office actions on your behalf.

Moreover, under the current laws of Vietnam, any organization or individual shall have the right to oppose a trademark application before NOIP. An opposition by third party shall be considered an information source during the process of examining applications for trademark registration. Upon receiving the opposition, NOIP will notify such opposition to the applicant and fix a time limit of one month for the applicant to provide its opinion and clarification.

STEP 5: Receiving trademark certificate

After the process of substantive examination (9-12 months, could be longer due to the large volume of applications handled by NOIP at that time) from the publishing date, NOIP shall issue the Notification of substantive examination results. Accordingly, there are following scenario:

  • a notice on its intended refusal to grant a trademark registration, clearly stating the reason(s) for refusal and setting a time limit of 2 months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements. (the applicant may request prolongation of the above time limit), if the signs claimed in the application fails to satisfy the protection conditions;
  • a notice on its intended grant of a trademark registration and request the applicant to pay the fee, if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit above.

Within 01-02 months after applicant pays fully and on time the fees, the NOIP shall carry out the procedures for granting the Trademark Registration Certificate.

STEP 6: Using the registered trademark and carrying out trademark watch regularly

From our experience, successfully registration is only the first step in the effective use and protection of a trademark. In order to ensure that valuable trademarks are fully protected and enforced, third-party trademark applications also need to be monitored against potentially infringing marks. Trademark watch means you proactively monitor the market and trademark database to identify the identical or similar marks or trademark application to take proper actions timely. Apolat Legal watching service provides you with the opportunity to take action against competing trademarks well before they are registered. A solution is filling an opposition. Filing a successful opposition against a new trademark application will prevent it from reaching registration. It should be noted that there are strict deadlines to file an opposition following publication, you need to be alerted as soon as possible.

STEP 7: Renewing the trademark registration validity every ten years

Term of protection of a trademark registration certificate is 10 years, calculated from the filing date. Renewal may be conducted within six months prior to the expiry date of the trademark registration certificate.

Trademark Examination Procedure by NOIP

The whole procedure from filing to registration is shown in the flow chart below. (Source: NOIP)

Trademark Examination Procedure
Trademark Examination Procedure

For an application for international mark’s registration designating Vietnam, the NOIP shall conduct the substantive examination of the application according to the procedures applicable to mark registration application filed directly with the NOIP. Within 12 months after the International Bureau issues the notice, the NOIP shall make a conclusion on protectability of the mark.

FREQUENTLY ASKED QUESTIONS RELATED TO TRADEMARK SERVICES IN VIETNAM

  • What is a Trademark?

A trademark is a tool used to differentiate goods and services from each other. Under the intellectual property law of Vietnam, a trademark is a special recognizable sign that can be words, image, letters, figures, 3D logo, sound.

  • What’s the benefit of register a Trademark?

Benefits include notice to the public of the registrant’s claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration. A qualified intellectual property service provider in Vietnam is key to operate confidently.

  • Why register trademark timely?

Vietnam is a first-to-file country meaning that, all else being equal, whoever applies for a trademark first, will obtain the registration. Therefore, if you can’t manage to do business without your existing brand, registering your trademark in Vietnam is highly recommended. In addition, having your trademark registered first will certainly avoid legal disputes in the future.

  • How long is the trademark protection valid?

In Vietnam, registered trademarks are valid for a period of ten (10) years from the registration date. It will then be renewed for subsequent ten-year periods indefinitely.

  • Who can register Trademark?

Both Individuals and Companies are entitled to register trademarks in Vietnam. Contact our intellectual property experts now on what documents are required for trademark registration in Vietnam.

  • Time limit for processing trademark registration applications

From the date on which the registration application is received by the NOIP, 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.

Total time for processing trademark application is 12 months. However, in practice, due to the volume of applications handled by NOIP, the total time may be from 18 months to 22 months.

  • What is the classification of goods and services of trademarks?

The classification of trademarks is based on the Nice Classification of Trademarks, which is applied worldwide. The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks.  A new edition is published every five years and, since 2013, a new version of each edition is published annually. According to the Nice Classification, there are 45 classes. In Vietnam, the fee for trademark registration is calculated based on the class of goods and services that are needed to register for a trademark.

  • Why should you register trademark with Apolat Legal?

Apolat Legal is a qualified intellectual property agent officially certified by NOIP. In Vietnam, only a qualified intellectual property agent is allowed to represent a client to carry out procedures at NOIP. Besides, at Apolat Legal, we provide flexible service packages with reasonable fee subject to client’s decision, no extra fee and no hidden fee. Furthermore, we also offer our clients a 10-year protection package with minimum cost.

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