All You Need to Know About Trademark Registration in Vietnam

To assist you in registering your trademark affordably and swiftly for your branded products/services, Elite Law Firm is excited to share the comprehensive guide to trademark registration in Vietnam as follows:

What is a trademark?

A trademark is a sign that distinguishes the goods and services of different organizations and individuals.

Signs used as trademarks must be visible signs in letters, words, images, drawings, or a combination of these elements expressed in one or more colors.

What is the trademark registration procedure?

Trademark registration is when the trademark owner carries out procedures to submit a trademark registration application at the Vietnam Intellectual Property Office (VNIPO) to record legal ownership of the trademark for owners throughout the territory of Vietnam.

Trademark registration becomes especially necessary in the context of fierce market competition. Registering a trademark will create a competitive advantage for businesses in the market while protecting products from trademark infringement and “stealing”.

Who can register a trademark?

According to Article 87 of Vietnam Intellectual Property Law in 2005 (Amended and supplemented in 2009, 2019, 2022), the following 05 organizations and individuals may register trademarks, including:

1. Organizations and individuals may register trademarks to be used for goods they produce or services they provide;
2. Organizations and individuals conducting lawful commercial activities may register trademarks for products they are marketing;
3. Lawfully established collective organizations may register collective trademarks;
4. Organizations with the function of controlling and certifying quality, properties, origin, or other criteria related to goods and services; 
5. Two or more organizations and individuals may jointly register a trademark to become its co-owners.

Why should you register trademarks?

Trademark registration is available 03 very important meaning for businesses as follows:

1. Trademarks are only recognized by law as legal ownership and protection based on registration at a competent authority. Registration created for businesses exclusive legal rights of ownership for trademarks throughout the territory of Vietnam. Holding exclusive ownership of a trademark means that the trademark owner has legal tools to prohibit copying and infringement by competitors. Therefore, businesses need to be aware of the importance of protecting their trademarks to protect their trademarks as soon as possible.
2. Trademark registration is an effective marketing tool to compete in the market. Products bearing a registered mark have a great advantage in competing with other products. The reason is that, when your products are brought to the registered mark, they will be more accessible to consumers because they have properties through the marks and can be distinguished from other goods/services.
3. Trademark registrations create a source of income for the owner. With a Certificate of registered mark in hand, the owner has full rights to use his trademark: franchise, use, license, transfer,… 

What are the conditions for trademark protection?

A trademark is protected if it meets the following conditions:

• Being a visible sign in the form of letters, words, drawings, images, including holograms or a combination thereof, represented in one or more colors
• Being capable of distinguishing goods or services of the trademark owner from those of other subjects.

Types of trademarks are protected by Vietnamese law

• Common mark: includes product trademarks and service trademarks, used to distinguish products and services of different individuals and organizations.
• Collective mark: a trademark used to distinguish the goods and services of members of the organization that owns that mark from the goods and services of organizations and individuals that are not members of that organization.
• A certification mark is a trademark that the trademark owner allows other organizations and individuals to use on the goods and services of that organization or individual to certify the properties of origin, raw materials, materials, and methods. production of goods, method of providing services, quality, accuracy, safety, or other characteristics of goods or services bearing the mark.

Which signs cannot be registered as trademarks?

The following signs are not protected as trademarks:

1. Signs identical with or confusingly similar to national flags or national emblems;
2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names, full names of state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations, Vietnamese social-professional organizations, and international organizations, unless permitted by such agencies or organizations;
3. Signs identical with or confusingly similar to real names, aliases, pseudonyms, images of leaders, national heroes, and famous personalities of Vietnam and foreign countries;
4. Signs identical with or confusingly similar to certification seals, check seals, and warranty seals of international organizations which require that their signs must not be used unless such seals are registered as certification marks by those organizations;
5. Signs which cause misleading or confusion or deceive consumers as to the origin, properties, intended utilities, quality, value, or other characteristics of goods and services

What is the procedure for registering a trademark?

Trademark registration procedures include the following steps:

• Step 1: Design and select the trademark you want to register

The first process in registering a trademark is to choose the trademark you want to protect. When designing and choosing a mark, customers need to note that the mark must ensure the following conditions:

1. Being a visible sign in the form of letters, words, drawings, images, including holograms or a combination thereof, represented in one or more colors
2. Being capable of distinguishing goods or services of the trademark owner from those of other subjects.

• Step 2: Preliminary assessment of the trademark’s registrability

After designing and selecting a trademark for registration, customers need to conduct a preliminary assessment of the possibility of trademark registration before submitting an official application for trademark registration.

ELITE is ready to assist in consulting and preliminary assessment of the possibility of trademark registration FREE OF CHARGE to customers if requested.

• Step 3: Search in the trademark register

Searching for the possibility of trademark registration is not mandatory but is necessary to evaluate the possibility of successfully registering the trademark to save time and costs for customers. If requested, ELITE is ready to assist customers in searching and evaluating trademark registration before filing.

• Step 4: File the trademark applications

After conducting the trademark search, the customer will proceed to file trademark applications to the competent authorities to receive the earliest priority date.

• Step 5: Trademark Examination Procedure

After filing a trademark application, the application will go through the following specific examination process:

• • Formality examination: 01 month
  • Publication of the application in the Industrial Property Official Gazette: Within 2 months from the date the application is accepted as formally valid
  • Substantive examination: no more than 06 months from the date of publication.

Note: In fact, the trademark registration time can last from 12-15 months due to the overload of applications at the VNIPO.

• Step 6: The National Office of Intellectual Property issues a decision to grant/refuse to grant an application
  • – During the trademark application examination procedure at step 5, in case the registered trademark does not meet the protection requirements, the National Office of Intellectual Property issues a decision to refuse to grant a Certificate of registered mark;
  • – In case the registered trademark meets the protection requirements, and the applicant pays fees in full and on time, the National Office of Intellectual Property shall issue a decision to grant a certificate of the registered mark and record it in the Register. National registration of trademarks and publication in the Industrial Property Official Gazette.
• Step 7: Monitoring the validity status of the certificate of registered marks

ELITE monitors the validity of the certificate of registered marks and notifies the deadline for extending the validity of the Certificate to the Client. According to regulations, a trademark patent is valid from the date of grant until the end of 10 years from the date of application and can be renewed many times in a row, each time for ten years. Please note that for the trademark patents to be valid, within 6 months before the expiration date, the owner must submit a request for renewal to the VNIPO.

What does a trademark registration dossier include?

The trademark registration dossier includes:

1. 02 Declaration for registration which are typed according to form No. 04-NH Appendix A (describing the trademark sample and list of goods and services bearing the trademark);
2. 05 identical mark specimens (no larger than 80mm and no smaller than 8mm, the entire trademark must be presented in a trademark template measuring 80mm x 80mm printed on the declaration);
3. Power of attorney from the Application Owner to the IP Representative Organization (according to form) if submitted through a representative;
4. Documents requesting priority rights (if any);
5. Receipt of application fee payment.

Where to file the trademark applications

• Filing directly to VNIPO:

1. Hanoi: No. 386 Nguyen Trai, Thanh Xuan Trung, Thanh Xuan District, Hanoi;  Phone: 024 3858 3069
2. Ho Chi Minh: 8A/1 Nguyen Canh Chan, Nguyen Cu Trinh Ward, District 1, Ho Chi Minh City; Phone: (08) 3920 8483 – 3920 8485 
3. Da Nang: 26 Nguyen Chi Thanh, Hai Chau District, Da Nang City (Phone: 0511.3889955 – Phone: (0511) 3889955)

• Online filing through the VNIPO’s online portal:

Applicants need to have a digital certificate, a digital signature, and a registered account in the Online Application Receiving System accepted by the VNIPO to perform industrial property rights registration transactions.

How long is the validity term of the trademark registration certificate in Vietnam?

A certificate of trademark is valid from the date of grant until the end of 10 years from the date of application and can be renewed many times in a row, each time for ten years. Please note that for the certificate of marks to be valid, within 6 months before the expiration date, the owner must submit a request for renewal to the VNIPO.

An application for an extension of the Trademark Registration Certificate can be submitted later than the deadline specified above but must not exceed 06 months from the date the protection certificate expires and the trademark owner must pay a renewal fee. deadline plus a 10% renewal fee for each month late.

What is the cost of trademark registration

Trademark registration costs, including:

1. Official fees paid to the VNIPO;
2. Attorney fees.

In this section, we will inform you of the fee to be paid to the registration competent authority according to item (i) above. For the service fee service in service (ii), we will advise you in detail when you use our service.

1. Application filing fee: 150,000 VND;
2. Substantive examination fee: 550,000 VND/01 subject;
3. Application publication fee: 120,000 VND;
4. Formality examination search fee: 180,000 VND/01 subject;
5. Examination of request for priority rights fee (if any): 600,000 VND/01 priority application.

Principle of priority date when registering a trademark in Vietnam

In cases where many different applicants submit identical or indistinguishable trademark applications, the application with a priority date or first filing date will be accepted for protection.

In case there are multiple applications from different application owners filed for the same subject with the same priority date, only one application will be accepted for protection according to the agreement between these application owners. If the application owners cannot agree, the subject will be refused a protection certificate.

In case the first application has been filed in Vietnam or in countries that are members of the Paris Convention on Industrial Property or the Madrid System for trademark protection, the applicant has the right to claim priority rights for the subject matter that has been filed in the first application within the given period. This means that during the period from the date of filing the first application to the date of applying in Vietnam if another entity applies to the same subject in the first application, your application is still considered to have the same filing application date the same as the first filing date and has priority for protection.

Our professional service for Trademark registration and enforcement in Vietnam

ELITE LAW FIRM with its Team of Lawyers and Associates with in-depth knowledge in the field of IP, is ready to support clients in consulting and evaluating the ability to protect industrial design applications in Vietnam, Laos, Cambodia, and other countries in the world. We have more than 20 years of experience in registration, protecting, and dealing with infringement of intellectual property rights in Vietnam. We are proud and happy to assist a lot of the world’s leading prestigious Brands, including Fortune 500 companies, such as LG Corp., LG Electronics, LG Household & Healthcare Ltd., Thefaceshop, The Wonderful Company, Accor Group, Smilegate, M&K Holdings, Tokyo Life, Toplist, and more…

Our process for advising on the registration of your industrial designs consists of the following steps

01. Please let us know your industrial design registration requirements and purposes so that we can understand and advise you on the best solution;

02. We will advise on fees, procedures and conduct a search, evaluate your industrial design protection ability, and check the validity of the dossier before submitting the application for registration;

03. When your design is capable of protection, we will prepare the application file for registration of the design quickly and accurately according to the customer’s request;

04. During the application examination process, we will regularly monitor and update the application status for clients to correct arising errors (if any);

05. Keep confidential information of applications and clients, we use our smart software CONSHACLO (® TM) to handle and manage applications;

06. During the application processing, we always keep in touch, and exchange information to best meet the wishes of clients.