NEWEST REGULATIONS ON THE ORDER AND PROCEDURES FOR IMPLEMENTATION OF TRADEMARK REGISTRATION
Registering an exclusive trademark is one of the necessary procedures to protect the reputation of an enterprise in the process of production and business. Especially with the current global integration economy, Vietnamese enterprises not only compete in the domestic market, but also have to assert their product brands all over the world. Through this article, Dai Ha Thanh Law Firm will provide you with the latest regulations on the order and procedures for trademark registration.
I. General concept
1. Trademark and classifications of trademark
In Clause 16 Article 4 of the Intellectual Property Law 2005, the concept of a trademark is specifically prescribed as follows:
“Trademark means any sign used to distinguish goods or services of different organizations or individuals.”
Accordingly, a trademark is a distinctive sign of a product manufacturer, helping to distinguish the products of companies. Trademark plays a key role in the marketing strategy of the business, contributing to the image and reputation of the business and product with customers. A trademark must be registered for ownership rights granted by the Intellectual Property Office of Viet Nam.
In Vietnam, trademark is divided into the following types:
- Collective trademark means a trademark used to distinguish goods or services of members of an organization which is the owner of such trademark from trademark of non-members of such organization (Clause 17 Article 4 of the Intellectual Property Law)
- Certification trademark means a trademark which is authorized by its owner to be used by another organization or individual on the latter's goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such trademark (Clause 18 Article 4 of the Intellectual Property Law)
- Integrated trademark means identical or similar trademark registered by the same subject and intended for use on products or services which are of the same, similar or interrelated type (Clause 19 Article 4 of the Intellectual Property Law)
- Well-known trademark means a mark widely known by the relevant sections of the public throughout the territory of Vietnam (Point c Clause 1 Article 1 of the Intellectual Property Law 2005, amended and supplemented in 2022)
2. Conditions for trademark to be protected exclusively
A trademark shall be eligible for protection when it satisfies the following conditions as prescribed in Article 72 of the Intellectual Property Law 2005, amended and supplemented in 2022:
- It is a visible sign in the form of letters, words, drawings, images, holograms, or a combination thereof, represented in one or more colors or sound trademark that can be graphically presented.
- It is capable of distinguishing goods or services of the trademark owner from those of other subjects.
Therefore, compared with the previous regulations, the Intellectual Property Law 2005, amended and supplemented in 2022 has added a protected trademark which is sound represented in graphic form.
II. Dossier and procedures for trademark registration in Vietnam
Trademark protection is very important and is a necessary measure to help the owner have the exclusive rights to use the trademark throughout the territory of Vietnam through administrative procedures carried out by the trademark owner or by a person/organization authorized by the trademark owner.
1. Dossier for carrying out trademark registration procedures
a. For general trademark application
Pursuant to Clause 1 Article 100 of Consolidation Documents 07 VBHN/VPQH Intellectual Property Law 2005 and Clause 32 Article 1 of the Intellectual Property Law 2005, amended and supplemented in 2022 stipulates that an industrial property registration application includes the following documents:
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b. For registration of collective trademark, certification trademark
In order for the service of trademark registration to be carried out, in addition to the documents specified above, the application is also required to have the following documents:
(a) Regulations on the use of collective trademark/certification trademark;
(b) A description of the characteristic (or distinctive) nature and quality of the product bearing the trademark (if the registered trademark is a collective trademark used for a product of particular nature or is a certification trademark of product quality or geographical origin);
(c) Map of the geographical area (if the registered trademark is a trademark certifying the geographical origin of a product, or a collective trademark, certification trademark containing a place name or other sign indicating a geographical origin of local specialties);
(d) The people's committees of provinces and municipalities directly under the central government allow the registration of a trademark in accordance with regulations (if the registered trademark is a collective trademark, the certification trademark includes place names or other geographical indications that only refer to local specialties).
2. Process and procedures for trademark registration
Step 1: Submit the application at the Intellectual Property Office of Viet Nam and pay the registration fees
Individuals and organizations can apply for trademark registration through the following forms:
- Apply directly at the headquarters of the Intellectual Property Office of Vietnam or the Representative Office of the Intellectual Property Office of Vietnam in Ho Chi Minh City, or Da Nang City.
- Individuals and organizations can apply through the postal system to the headquarters of the Intellectual Property Office of Vietnam or the Representative Office of the Intellectual Property Office of Vietnam.
- Individuals and organizations can apply for trademark registration online: The applicant needs to have a digital certificate and digital signature, register an account on the Online Application Receiving System and be approved by the Intellectual Property Office of Vietnam to perform industrial property rights registration transactions.
According to Point đ Clause 2 Article 109 of the Intellectual Property Law 2005, amended and supplemented in 2022, when submitting a registration application, the applicant must fully pay the registration fees to the Intellectual Property Office of Vietnam.
Step 2: Formal examination of the trademark application
The duration for formality examination: 01-02 months from the date of filing the application for trademark registration.
Note: Formal examination is the first stage in the process of the trademark protection registration, when the application is confirmed as valid by the Intellectual Property Office of Vietnam in this stage, the Intellectual Property Office of Vietnam will issue a decision to accept the valid application and send it to the applicant or the person authorized by the applicant to register.
In case the application contains errors, the Intellectual Property Office of Vietnam will issue a notice of its intention to refuse the application and request the applicant or authorized person to correct or supplement the missing information within 01 month from the date of notification. After the above time, the application will be rejected and the customer will have to re-apply, and incur additional costs.
Step 3: Publicizing the trademark registration application
According to the new provisions in Clause 1a Article 110 of the Intellectual Property Law 2005, amended and supplemented in 2022, the trademark registration application has not yet been approved by the Intellectual Property Office of Viet Nam shall be made public immediately upon receipt.
For a valid trademark registration application, the time limit for publishing the application in the Industrial Property Official Gazette is 02 months from the date the application is accepted as a valid application.
Step 4: Substantive examination of the trademark registration application
Duration for substantive examination of the trademark: no more than 09 months from the date of application publication.
Note: Pausing the examination of a trademark registration application process is a new regulation first added to Clause 3 Article 117 of the Intellectual Property Law 2005, amended and supplemented in 2022. Accordingly, the examination of a trademark registration application process will be paused if it falls into one of the following three cases:
- Firstly, the applicant submits a request to suspend the examination of a trademark registration application process and requests for invalidation of the reference trademark because the trademark applied for registration is considered similar to the compared trademark according to Point e Clause 2 Article 74;
- Secondly, the applicant submits a request to suspend the examination of a trademark registration application and request the termination of the compared trademark's validity because the applied trademark is considered to be similar to the compared trademark but has expired for less than 03 years according to Point h Clause 2 Article 74;
- Thirdly, the petitioner filed a lawsuit related to the right to register an industrial property object or a trademark registered with malicious intent.
However, this is still a closed regulation, because the suspension of the examination of a trademark registration application added in Clause 3 Article 117 of the Intellectual Property Law 2005, amended and supplemented in 2022 is limited to only 03 cases, while in reality there are still many situations in which an examination needs to be paused.
Step 5: Issue a decision to grant/refuse to grant protection titles
After the end of the examination of a trademark registration application process, the Intellectual Property Office of Vietnam shall issue a notice of the examination of a trademark registration application results, stating its intention to issue protection titles in whole or in part for those which meet the protection conditions, and determining the deadline for the applicant to submit fees or having any objections to the above results or to refuse to grant protection titles together with setting a time limit for the applicant to object to the intended refusal for the trademark registration application in the case of refusal to grant protection titles as prescribed in Clause 1 Article 117.
Note: Clause 1 Article 117 of the Intellectual Property Law 2005, amended and supplemented in 2022 has added a new case, whereby a trademark registration application is refused to grant protection titles if there is a basis to asserts that the applicant has no right to register an industrial property object or register a trademark with malicious intent.
It can be seen that, compared with the previous regulations, the Intellectual Property Law 2005, amended and supplemented in 2022 has more recognition of the announcement of the intention to grant protection titles and the setting of a time limit for the applicant to pay fees or charges or make objections to the substantive examination results.
After the above fixed time limit, the Intellectual Property Office of Vietnam shall issue a decision to grant protection titles and record in the National Register of Industrial Property if the applicant pays fees or charges or decides to refuse to grant protection titles if the applicant has no objection or an unwarranted objection to the intended refusal.
Step 6: Pay the fees for granting a trademark registration certificate
After receiving the notice of intention to grant a trademark, the applicant pays the trademark licensing fees.
The Intellectual Property Office shall grant and publicize the Certificate of trademark registration to the owner within 01-02 months from the date of payment of the fees for granting the Certificate of trademark registration.
III. Benefits of trademark registration
Registering a trademark will bring the following benefits to the owner:
- Help consumers identify goods and services
Trademark is a factor to stimulate customers' behavior to consume products and use services. The trademark is well promoted and built, the consumption of products and goods is also increased. Therefore, the first benefit of trademark registration is to help consumers identify goods and services, and to build customers' trust.
- Avoid unnecessary disputes
Through trademark protection, businesses will know if the trademark that they are using is identical or confusingly similar to a trademark owned by another enterprise based on the results of search and preliminary evaluation on the possibility of trademark protection or the results of the examination of the trademark registration application by the Intellectual Property Office of Vietnam. From there, businesses will avoid infringing on the trademark ownership rights which is being protected.
- Show respect for other businesses
The successful registration of trademark protection indirectly shows that your trademark is not duplicated or infringed with any other brand's trademark in the same business product field. From here, you can freely promote your trademark to have a large and stable revenue stream.
- Trademark registration is to protect your own brand
The commercial market is complicated, risky, and does not allow any business or company to be reckless and in fact there have been many cases of losing the brand that the owner tried hard to build a reputation.
Once successfully registered, the trademark is protected under the law, preventing any infringement and receiving appropriate compensation in the event of trademark theft.
Registering a trademark also helps in building customers’ trust in your products/services, enhances reputation, and indirectly increases business revenue. In addition, trademark registration also brings other benefits, such as exclusive use of the trademark, transfer and assign the trademark to others or require the competent authority to provide protection when legitimate rights and interests are infringed upon.
IV. Common mistakes when registering for trademark protection
Here are some common mistakes when registering for exclusive trademark protection that businesses need to avoid:
- Do not do a trademark search before submitting the application for registration;
- Failing to register for priority right;
- Confusion between brand and trademark;
- Use ideas of famous brands;
- Registration dossiers and documents are missing or incorrect;
- Carrying out procedures improperly according to regulations;
With just one very basic mistake, businesses will also be denied trademark protection titles. Many owners do not know how to deal with returned dossiers. Therefore, enterprises should comply to the prescribed procedures to perform and complete the procedures in the most correct way.
Conclusion
Above is the entire overview of Dai Ha Thanh Law Firm on the latest regulations in the trademark registration process. If you have any questions or problems, please contact us for professional legal advice.
