To assist you in registering your trademark affordably and swiftly for your branded products/services, Elite Law Firm is excited to share the secrets of a successful trademark registration in Vietnam as follows
Do I need to register a trademark before selling my products bearing the trademark on the market?
ELITE: According to Vietnamese laws, organizations and individuals are not required to register for trademark protection before using or selling products bearing the mark on the market. Therefore, you do not need to register a trademark before putting the product on the market. Trademark registration is your right.
If trademark registration is not required prior to the sale of my products bearing the trademark, why do I need to apply for trademark protection?
ELITE: Registration of a trademark is not required before selling your products bearing the trademark on the market. In our opinion, this is true but it is not enough for you to have a successful business because when you register and own the exclusive rights to your trademark/brand, you/your company will have the outstanding business advantages as follows:
♦ Firstly, registering a trademark gives you the exclusive right to own and exclusively use the trademark/brand attached to your products/services in the market. Only you/your company have the right to use and attach this trademark/brand on your products/services in accordance with applicable laws.
♦ Second, the exclusive ownership of a trademark is a solid and unique legal basis for you to handle counterfeit goods as soon as they appear on the market. This is especially important in the context of counterfeit goods and brand imitations that are appearing rampant on e-commerce platforms today.
♦ Third, trademark registration is also a legal basis that allows you to exploit and commercialize the value of your trademark/brand, in particular, you can collect fees from franchising or signing a Trademark License Agreement to a third party to attach/use your trademark with specific conditions on product/service quality, process sales, customer care set by yourself. In addition, when you no longer want to own and use a trademark, you can also sell or transfer that trademark to another person/company.
♦ Fourth, trademark registration also creates a legal basis for building a solid market for your products/services in Vietnam as well as developing markets around the world right after you register. successful brand in that country. In our opinion, when you have/own a trademark/brand, you have a market.
♦ Fifth, when you own the exclusive rights to a well-known and reputable brand/brand, your company can compete by value, but not by price. When you have the exclusive right to own the trademark/brand and build a solid market, you can completely sell your products/services at a higher price than other competitors and your products/services bearing the trademark is still selling well, Apple’s iPhone or Luis Vuiton bags or Channel perfume etc are some prime examples of this advantage.
♦ Sixth, owning a successful brand/trademark is a guarantee card for the successful development of your business in the future. “A product can be quickly outdated; a successful brand is timeless” as the famous American writer Stephen King said. A company often has many lines of products and services with many different brands/trademarks. Therefore, when you hold a successful product trademark, it is the surest, most solid guarantee for the success of your company’s next product trademark based on the guiding principle of success leading to another success. The success of the Apple Watch following the success of Apple’s iPhone is the clearest proof of this advantage.
What difficulties do you often face when registering a trademark in Vietnam?
ELITE: From decades of our experience as an IP Agent Representative assisting businesses in trademark registration in Vietnam, we see that during the protection registration process, your trademark application may often face typical difficulties as follows:
Your trademark application was refused protection
Under current trademark regulations of Vietnam, your trademark application may be refused protection for the following typical reasons:
a) Your trademark is identical or confusingly similar to another one’s previously registered trademark(s)
As of August 17, 2023, there have been 458,628 National Trademark Registration Certificates issued by the Vietnam Intellectual Property Office (VNIPO). In 2022 alone, 56,050 trademark applications were filed with the VNIPO. With this huge number of trademark registrations, the chances of your trademark being identical or confusingly similar to someone else’s trademark is not low.
b) Your mark includes exclusions, is not protected as a trademark, or fails to function as a trademark because they are indistinctive signs (inability to distinguish itself).
This is one of the most common reasons for the refusal of a trademark application because in addition to cause (a) above, unfortunately, there are more than 20 other rejection reasons where your trademark could fall into, for example:
– Signs identical with or confusingly similar to the images of National Flags, National Emblems, National Anthems of Vietnam and other countries;
– Simple shapes and geometric figures, numbers, letters or scripts in uncommon languages;
– A sign indicating the time, place, production method, type, quantity, quality, properties, ingredients, intended utility, value or other characteristics that are descriptive of goods or services or signs that significantly add value to the goods;
– A sign indicating the geographical origin of goods or services, unless such sign has been widely used and recognized as a mark before the filing date; …
Trademark registration takes a long time
In fact, the time for trademark registration may be longer than regulations (currently (Jul.2023), total registration time is about 18-24 months from the filing date) due to the overload of applications at the VNIPO.
Expensive costs due to the refusal of the trademark application (did not obtain a trademark registration)
When your trademark application is refused protection, you will have to re-design your trademark and restart proceeding with the registration procedure. Of course, this will incur additional registration costs and you will also have to wait another 18-24 months to get a certificate of trademark registration if your trademark meets the requirements for protection.
We always understand and feel these difficulties and will support and accompany you to overcome these obstacles based on our expertise and more than 20 years of experience in this field.
What are the best solutions or secrets to successful trademark registration in Vietnam?
ELITE: From our experience, we would like to share some useful and simple secrets to help you register your trademark successfully, quickly while saving cost, time as below:
1. Design your brand to be unique, not in the cases that are not protected as trademarks;
2. In-depth search with experts to check for similar and identical trademarks before filing a registration application.
3. Choose an IP Representative Agent (IP Law Firm) who is reputable and experienced in authorizing the filing of applications and monitoring the status of your trademark application.
What should you do when your trademark application is refused protection?
ELITE: No, you still have a chance. We believe that your trademark still has a chance to be protected when your application is rejected by the VNIPO for the following reasons:
The VNIPO may be not 100% accurate
When your trademark application is refused protection, it is not entirely hopeless because it is not certain that the decisions and assessments of the VNIPO’s experts are 100% accurate. Therefore, when the VNIPO makes a decision to refuse protection of the trademark, you still have the opportunity to continue the registration procedure by filing an appeal or objection as to the refusal decision if you find that there are legal grounds to believe that VNIPO’s decision does not have/not enough legal basis.
The cited trademark registration(s) may have expired protection
The cited trademark registration(s) are trademarks used by the VNIPO as a basis to refuse to grant protection Certificates to your trademark application(s) in the process of trademark examination. In practice, there is still the possibility that the cited trademarks have expired but are still used by the VNIPO to refuse to protect your trademark applications.
Your trademark may be an exception
Your trademark may fall in exceptions such as: well-known trademark, widely used trademark, trademark illegally appropriated by a third party for pre-registration (application based on bad-faith basis or has no right to file trademark)… so it can still be protected and registered.
To avoid unnecessary difficulties when registering a trademark, and quickly complete the trademark registration procedure to conduct successful business, you should choose an experienced and reputable IP Representative Agent/Patent Law Firm to assist you in registering your trademark successfully, quickly and cost-effectively.
With a Team having qualified expertise and more than 20 years of experience in the field of intellectual property protection based on our six Core Values, including: Integrity, Empathy, Responsibility, Carefulness, Determination and Learning, We (ELITE Law Firm) are committed to accompany you and will support you to register for trademark protection successfully, quickly and economically. Contact us now!
RESOLVING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY
PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY
FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY