Trademark

ELITE:

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.

ELITE: 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.

ELITE: 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.

ELITE:

• 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.

ELITE: 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.

ELITE: 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.

ELITE: 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

ELITE:

• 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.

ELITE: 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.

ELITE: 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,… 

ELITE: 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.

ELITE:

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”.

ELITE: 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.

ELITE Law Firm: Procedures for registration of trademark protection at the National Office of Intellectual Property of Vietnam (NOIP) according to regulations need to go through several steps, including filing application, formal examination, publishing in the Official Gazette, substantive examination, notifying issue a decision on grant of a protected title, pay the granting fee if granted and the NOIP issues a Certificate of Trademark Registration for a trademark registration application that meets the protection requirements. Accordingly, the total time to register a trademark in Vietnam is within 13 months.

However, this term may be extended because the application is denied in form or substance (not fundamentally different from the trademarks being protected) or due to overcrowding of applications.  In our experience, to shorten the time for trademark registration at the NOIP, customers should conduct a thorough search and assess the protectability of the trademarks before applying for registration, and application dossiers need to be completed under the prescribed form.

ELITE Law Firm: Currently, the provisions on trademark protection of Vietnam IP law as well as the guiding documents do not have specific provisions on the scope of protection of black and white and color trademarks.

When registering for color trademark protection, the trademark will be protected by both the content and the color of the trademark. The owner can only use the trademark in the form of the registered color, if the color is not correct, it will violate the regulations on the use of the trademark. Trademarks registered for protection in the form of black and white are only protected for images and text, but not for colors. However, the practice of trademark protection in Vietnam allows a trademark registered in black and white to be used in different colors, as long as the text and image contents of the trademark are preserved and do not infringe the rights of a registered trademark.

ELITE LAW FIRM: Under current regulations, the trademark owner can modify a trademark application, however, such modification must not expand the scope of protection of the trademark. In case the trademark owner wants to add a new class of goods/services to your registered trademark application, he/she needs to proceed with the filing of another trademark application for the new class of goods/services with the same procedure as with the already filed trademark application.

According to regulations, the validity duration of a Trademark Registration Certificate (TRC) issued by the National Office of Intellectual Property (NOIP) is 10 years from the filing date and renewable for unlimited times, each time of 10 years.

ELITE LAW FIRM: The fee payment process is divided into the following stages:

1. Fees for filing trademark registration:

• Filing fee: 150,000 VND (~ 6 $)

2. Fees for examination of trademark registration:

• Search fee for content: 180,000VND/01 class of goods/services (~7%)
• Search fee for the 7th goods/services onwards: 30,000VND /01 goods/service (~1$)
• Content examination fee: 550,000VND/01 class of goods/services (~22$)
• Content examination fee for the 7th goods/service onwards: 120,000 VND/01 goods/service. (~5$)
• Fee for examination of priority claim: 600,000 VND/application/per request. (~25$)

3. Fees for publication and registration of trademark information:

• Application publication fee: 120,000VND (~5$)

4. Fee for granting a certificate

• The fee for publication of the decision on granting a protective certificate: is 120,000VND. (~5$)

5. Fees for using protection titles and granting trademark registration certificates

• Fee for using the protective certificate: for a trademark for each class of goods/services for 10 years, it is 700,000VND. (~29$)
• Fee for granting a certificate of trademark registration: 120,000VND (~5$) (for the first class of goods/services, from the second class of goods/services onwards: 100,000VND/class). (~4$)
• In addition, the fee for carrying out procedures for international registration of trademarks of Vietnamese origin (excluding fees payable to the International Office) is 2,000,000 VND. (~82$)

ELITE LAW FIRM: A slogan is a short sentence containing a message that describes the nature of goods/services or conveys the values ​​​​that the brand brings to customers. Currently, the Vietnam Intellectual Property Law as well as other guiding documents do not have specific provisions on the protection of slogans.

Normally, slogans are often descriptive of goods/services, so they will not be protected separately and exclusively in trademarks. However, not all slogans are not protected. Slogans that are signs that can distinguish the goods/services of the owner and other individuals and organizations in the same or similar fields, as well as satisfy other protection conditions according to the provisions of trademark regulations can be fully protected as a trademark.

ELITE LAW FIRM: When detecting that another organization or individual is illegally using their trademark or a mark similar to their own, the owner should have a solution to deal with it on time. There are many different ways for trademark owners to protect their rights and interests when the intellectual property rights of trademarks are infringed.

• Request to stop infringing acts: The trademark owner sends a written notice to the subject showing signs of infringement. In the document, it is necessary to show full information based on arising, title, scope, and term of protection. In particular, there should be content that sets a reasonable time limit for the infringer to stop his/her acts.
• Request a competent state agency to settle: The trademark owner requests the competent agency to take administrative handling measures against organizations and individuals that are infringing upon their trademark. The owner must file a claim and must have documents and proofs attached.
• Filing a suit in court or arbitration: The trademark owner will also submit the claim and documents and evidence proving the infringement to the court or arbitration.

ELITE LAW FIRM: To increase the possibility of your trademark being granted a protection title in Vietnam, you need to pay attention to the following issues:

5. Trademarks may not consist solely of colors and must not be combined with textual or figurative signs.
6. Trademarks must not collect too many letters or words, making it impossible for customers to recognize and remember
7. The design of the mark must not be identical or similar to one of the objects within the scope of protection of the industrial property rights of others.
8. Trademarks must not be geometric shapes such as circles, ellipses, triangles, quadrilaterals... or simple drawings or marks that are drawings or images only used as backgrounds or lines to decorate products or packaging products.
9. Trademarks must not be drawings or images that are too complicated or complicated for consumers to perceive and remember.

ELITE: According to regulations (Art. 28 and Art. 37 of the Law on Appeal in 2011), the time limit for resolving the first-time Appeal against the Decision on refusal to grant a TRC  for a trademark application at NOIP must not exceed 30 days from the acceptance date of the Appeal; for complicated cases, the time limit for resolving/settlement may be prolonged, but must not exceed 45 days from the acceptance date. The time limit for resolving a second-time Appeal must not exceed 45 days from the acceptance date of the Appeal; for complicated cases, the time limit for resolving may be prolonged, but must not exceed 60 days from the acceptance date.

ELITE: Required documents of an appeal against a Decision on refusal of granting a TRC are as follows:

1. An Appeal Application (under the Form);
2. An official letter explaining legal reasons/grounds for the Appeal enclosed with the Appeal Application and evidence or supporting documents (if any);
3. A copy of the NOIP's Decision on refusal of granting a TRC;
4. An original Power of Attorney signed by the Appellant (in case the Appeal is filed through an IP Representative/Agent);
5. A copy of the fee payment for the Appeal.

ELITE: According to regulations (Article 9 of Law on Complaints 2011), the statute of limitations for filing a first-time Appeal is 90 (ninety) days from the date that the Appellant receives a Decision on refusal of granting a TRC from the NOIP.

ELITE: The purpose of filing an appeal against the Decision on refusal of granting a Trademark Registration Certificate for a trademark application is to protect the Applicant’s legitimate rights and interests under the laws and regulations, namely requesting the NOIP to reconsider and withdraw the previous refusal Decision and issue a fresh Decision to grant a TRC for the Appellant. 

ELITE: An appeal against a Decision on the refusal of granting a Trademark Registration Certificate (TRC) for a trademark registration application means that a trademark applicant having such a refusal Decision issued by the National Office of Intellectual Property of Vietnam (NOIP) requests the NOIP to reconsiders and withdraws such refusal Decision if there are sufficient legal grounds to prove that the said Decision is contrary to law provisions, directly infringing upon the applicant’s legitimate rights and interests.