Trademark

1What is an appeal against a Decision on refusal of granting a Trademark Registration Certificate for a trademark application?

ELITE: An appeal against a Decision on 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 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.

If you have questions or require consultant about Trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

2What is the purpose of filing an appeal against a Decision on refusal of granting a Trademark Registration Certificate for a trademark application?

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 in accordance with 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.

If you have questions or require consultant about Trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

3How long is the statute of limitation for filing a first-time Appeal against a Decision on refusal of granting a trademark registration certificate for a trademark registration application at the National Office of Intellectual Property of Vietnam?

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.

If you have questions or require consultant about Trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

4What documents are required to file an appeal against the Decision on refusal of granting a trademark registration certificate for a trademark registration application at the NOIP?

ELITE: Required documents of an appeal against a Decision on refusal of granting a TRC are as followings: i) An Appeal Application (under the Form);

ii) An official letter explaining legal reasons/grounds for the Appeal enclosed with the Appeal Application and evidence or supporting documents (if any);

iii) A copy of the NOIP's Decision on refusal of granting a TRC;

iv) An original Power of Attorney signed by the Appellant (in case the Appeal is filed through an IP Representative/Agent);

v) A copy of fee payment for the Appeal.

If you have questions or require consultant about Trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

5How long does it take to resolve a first-time Appeal against a Decision on refusal of granting a trademark registration certificate for a trademark registration application at the NOIP?

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.

If you have questions or require consultant about Trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

6What should the Appellant do if he/she disagrees with the results of the NOIP's first-time appeal resolving/settlement as to the refusal Decision?

ELITE: According to regulations, if the Appellant does not agree with the first-time Appeal resolving Decision of the NOIP or beyond the prescribed time limit, the Appeal has not been resolved yet, the Appellant has the right to file second-time Appeal to the Minister of Science and Technology (Head of direct superior of the NOIP) or initiate an administrative lawsuit case at the Court in accordance with the Law on Administrative Procedures. In case the complainant disagrees with the second-time Appeal settlement Decision of the Minister of Science and Technology, or the prescribed time limit expires but the Appeal has not been yet resolved, the Appellant has the right to initiate an administrative lawsuit case at the Court in accordance with the Law on Administrative Procedures.

If you have questions or require consultant about Trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

7What to notice when designing a trademark?

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:

Trademarks may not consist solely of colors and must not be combined with textual or figurative signs.

Trademarks must not collect too many letters or words, making it impossible for customers to recognize and remember

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.

Trademarks must not be geometric shapes such as circles, ellipses, triangles, quadrilaterals... or simple drawings or marks that are drawings, images only used as backgrounds or lines to decorate products , packaging products.

Trademarks must not be drawings or images that are too complicated or complicated for consumers to perceive and remember.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

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ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi

8What to do when discovered your trademark has been infringed?

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 in a timely manner. 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 on the basis of 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.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY

ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi

9How to registered a slogan as a trademark?

ELITE LAW FIRM: 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. For 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.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY

ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi

10How much does it cost to register a trademark in Vietnam

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: 120,000VND/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$)
In addition, the fee for carrying out procedures for international registration of trademarks of Vietnamese origin (excluding fees payable to the International Office) is 2,000,000 VND. (~82$)

11How long is a Trademark Registration Certificate in Vietnam valid for?

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..

Please notice that, it is necessary to file an application to extend the validity of the TRC within 6 months at the NOIP before the expiration of the TRC.

The Law also allowed the owner of a TRC to file and renew it late within 6 months from the expiration date, provided that a fee for such late filing is paid.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY

ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi

12How to add a class of goods/services to a registered trademark application?

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.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY

ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi

13Which state agency has the function of assessing industrial property in Vietnam?

ELITE:

Currently, the Institute of Intellectual Property Science under the Ministry of Science and Technology - the only public non-business unit in Vietnam - has the conditions to conduct industrial property assessment.

Address: 39 Tran Hung Dao Str., Hoan Kiem Dist., Hanoi, Vietnam

If you have questions or require consultant about Industrial Design in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

14How to assigning industrial property rights (ownership rights transfer) in Vietnam?

ELITE: According to the provisions of the Law on Intellectual Property (IP) of Vietnam, the owner of an industrial design patent has the right to use, let others use, prohibit others from using, assign and lease the right to use (Licensing) for his or her IP license (Article 123 of the Vietnam Intellectual Property Law).

Customers please note that, according to the provisions of the Vietnam IP Law, the industrial design patent assignment contract must be made in writing and registered at the NOIP to have legal effect.

A contract for the transfer of a Business Registration Certificate should contain the following main contents:

- Full name and address of assignor and assignee.

- Transfer basis.

- Transfer price.

- Rights and obligations of the assignor and assignee.

Regarding the procedure for registering an Industrial Design Transfer Contract at the NOIP, customers need to prepare a normal dossier set, including:

- 02 declarations for registration of transfer contracts (form);

- 01 original transfer contract with signatures and seals of the parties;

- 01 original valid industrial design patent;

- Proof of payment of fees and charges.

- 01 Power of Attorney (if submitted through an industrial property representative such as ELITE Law Firm).

The time limit for completing the procedures for registration and recognition of industrial design transfer contracts at NOIP is 02 months according to regulations. However, this time limit may be extended because the dossiers are not valid according to regulations or due to the overload of applications at the NOIP.

If you have questions or require consultant about Patent in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

ELITE LAW FIRM – Hotline: (+84) 988.746.527 | Email: info@lawfirmelite.com/vi

15Should you register a black and white trademark or a color trademark?

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 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 does not infringe the rights to a registered trademark.

If the trademark owner both wants to protect the trademark in color and wants to use multiple color schemes for the trademark, he/she should register both of the above options. If the owner wants to save costs in the process of trademark protection or choose between registering a color or black and white trademark, it is better to prioritize registering a trademark in black and white.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY

ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi

16How long does it take to register a trademark in Vietnam?

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, publish 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 an trademark registration application that meets the protection requirements. Accordingly, the total time to register a trademark in Vietnam is within 13 months.

However, in fact, 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, in order to shorten the time for trademark registration at the NOIP, customers should conduct a thorough search and assess the protectability of the trademarks before submitting the application for registration and application dossiers need to be completed in accordance with the prescribed form.

If you have questions or require consultant on how to register a trademark in Vietnam, please do not hesitate to contact us at the information below, we gladly to help solving your problems:

SETTLING INTELLECTUAL PROPERTY RIGHTS DISPUTES QUICKLY AND EFFECTIVELY

PROTECTION OF INTELLECTUAL PROPERTY RIGHTS SECURELY

FOR DOING BUSINESS STRONGLY, DEVELOPING SUCCESSFULLY

ELITE LAW FIRM – 255 Hoang Van Thai Str., Thanh Xuan Dist., Hanoi, Vietnam

Tel: 0243 7373 051 | Hotline/Whatapps: 0988 746 527 | Email: info@lawfirmelite.com/vi