Trademark

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.