CURRENT STATUS OF TRADEMARK INFRINGEMENT AND SOME NOTES ON PROCEDURE OF TRADEMARK REGISTRATION IN VIETNAM
In the current era of economic integration along with the explosion of technology, increasing in number of individuals and organizations are paying more attention to the issue of trademark protection against intellectual property infringement in Vietnam.
According to Vietnamese law, this registration is necessary to prove and protect the rights of trademark and copyright owners in the event of actual disputes.
Dai Ha Thanh Law Firm would like to provide the current status of trademark infringement as well as some notes on the registration procedure of trademark in Vietnam.
1. The current status of trademark infringement in Vietnam
In the context of economic integration and global competition, the protection of intellectual property rights becomes especially vital and a significant concern in international economic relations. In fact, the situation of intellectual property infringement in Vietnam is still quite common and increasingly complicated, requiring stronger and more effective solutions.
About trademarks in particular, at present, the appearance of counterfeit products of prestigious brands, infringing industrial property rights is increasingly diverse in types and sophisticated in form. A series of products of unknown origin are labeled with famous brands. For example, in July 2020, the General Department of Market Management in collaboration with the Mobile Police Command and Department A05, the Ministry of Public Security attacked a "huge" contraband warehouse of more than 10,000m2 in Lao Cai. The items at this warehouse are all shoes, eyeglasses, watches, consumer goods, cosmetics... smuggled or counterfeited with world famous brands. Meanwhile, consumers' awareness is not really complete, so distinguishing real goods from fake goods is becoming difficult for consumers. Moreover, the method of production, import, marketing, sale and purchase of infringing goods on industrial property has become increasingly sophisticated and organized by inter-provincial, inter-regional and international organizations. The alarming situation of counterfeiting of consumer goods in Vietnam has greatly affected the economy and consumers' health related to many fields such as cosmetics, alcohol, pharmaceuticals, etc.
2. Procedure of trademark registration in Vietnam
2.1. Who can register trademark in Vietnam?
According to the provision of the Intellectual Property Law 2005, subject eligible for trademark registration include individuals, organizations. Which includes:
- Vietnamese individuals, organizations, and enterprises;
- Foreign individuals and organizations.
2.2. How to register a trademark in Vietnam?
Vietnamese individual, organizations:
- Directly file a trademark registration application at National Office of Intellectual Property;
- Through intellectual property representative companies such as DHT Law Firm, apply for trademark registration at the National Office of Intellectual Property.
Foreign individuals, organizations:
- Trademark registration applications can only be filed through Intellectual Property representative companies such as DHT Law Firm, which submits trademark registration applications at the National Office of Intellectual Property.
2.3. Trademark registration procedures in Vietnam
Stage 1: Filing an application
Applicants can choose to submit a paper application or an online application through the National Office of Intellectual Property's online public service portal. If choosing to file a paper application, you can file it at the National Office of Intellectual Property (NOIP) in Hanoi or two representative offices in Ho Chi Minh City and Danang City.
Dossier of application:
- 02 Trademark registration declarations, typed according to form No. 04-NH Appendix A of Circular 01/2007/TT-BKHCN
[The trademark description: the mark sample must be described to clarify the elements. the trademark's constituent elements and the overall meaning of the mark, if any; if the mark contains words or phrases belonging to figurative language, those words and phrases must be transcribed. If a trademark contains words or phrases in a foreign language, it must be translated into Vietnamese. If the mark contains numerals other than Arabic or Roman numerals, it must be translated into Arabic numerals; The list of goods/services in the declaration must be grouped in accordance with the international classification of goods and services (Nice classification – 11th edition, 2020 - WIPO]
- 05 attached trademark samples (the attached mark sample must be identical to the mark affixed on the registration application form, both in size and color. Part of the mark is not larger than 80mm and not less than 8mm, the mark as a whole must be presented in a mark template with dimensions of 80mm x 80mm. If color protection is required, all trademark samples on the sheet declaration and enclosed must be presented in the correct colors to be protected);
- Proof of payment of fees and charges.
In case the trademark application is a collective mark or a certification mark, in addition to the minimum documents mentioned above, the registration application needs to include the following additional documents:
- Regulations on the use of collective marks or certification marks;
- An explanation of the characteristic (or specific) nature and quality of the product bearing the mark (if the registered mark is a collective mark used for products with particular characteristics or is a certification mark). the quality of the product or a mark that certifies the geographical origin of the local specialty);
- Map of the geographical area (if the registered mark is a mark certifying the geographical origin of the product, or the mark contains a place name or a sign indicating the geographical origin of a local specialty).
- Document of the People's Committee of the province or municipality allowing the use of a place name or other sign indicating the geographical origin of the local specialty for trademark registration (if the registered mark is a collective, certification mark containing a place name or other sign indicating the geographical origin of a local specialty).
Stage 2: Formal examination
The time limit for formal examination of the application is 01 (one) month from the date of filing the application. In case the Company actively requests to make amendments and supplements to the application or respond to the notice of the National Office of Intellectual Property, the time limit is extended by 10 (ten) days.
Stage 3: Valid announcement
All validly accepted applications will be published by the National Office of Intellectual Property in the Industrial Property Official Gazette. The applicant pays the application publication fee.
Time limit for publication is 02 (two) months from the date of accepting valid applications.
Stage 4: Substantive examination
Time limit for substantive examination: at least 09 (nine) months from the date of application publication.
However, according to the experience of DHT Law Firm, the normal for trademark registration substantive examination will last about 12-18 months from the date of acceptance a valid application.
Stage 5: Grant/refuse to grant protection title
An application shall be refused for grant of a protection title if it falls into one of the cases specified in Clauses 1 and 2, Article 117 of the 2005 Law on Intellectual Property, specifically:
- There are grounds to assert that the object stated in the application does not fully satisfy the protection conditions;
- An application that meets the conditions for a protection title but is not an application with the priority date or earliest filing date;
- The application belongs to the same application with the priority date or the earliest filing date without the agreement of all the companies on the grant of a single application among those applications.
Time limit for grant of protection title: Within 10 (ten) days from the date on which the Company fully and timely pays the fees and charges, the NOIP shall carry out the procedures for granting a protection title in accordance with law.
Step 6: Registration and announcing the decision to grant a protection title
The time limit for the announcement is 02 (two) months from the date of issuance of the decision, after the Company has paid the prescribed publication fee.
It is also noted that organizations and individuals not permanently residing in Vietnam shall carry out the trademark registering process through legal representatives, which could be industrial property representative organizations licensed to operate by the National Office of Intellectual Property.
3. Some notes on procedure of trademark registration in Vietnam:
3.1. Time limit of trademark protection
Trademarks are protected for 10 years from the filling date (priority date). Individuals or organizations can renew their protection titles and there is no limit on the number of renewals. Thus, the trademark will be an asset throughout the operation and business process of the individuals or organizations.
3.2. Notes about color when registering a trademark
- According to the provisions of the intellectual property law of Vietnam, there are no specific provisions on the scope of protection of black-white and color trademarks, as well as registration of black-white marks or color trademarks the absolute rights on color for more owners. However, the practice of trademark protection in Vietnam allows a trademark registered in black-and-white that can be used in different color forms, as long as the text/image contents of the trademark are remained unchanged and do not infringe the rights to another person's registered black-and-white or color trademarks.
- Therefore, individuals and organizations carrying out trademark registration in Vietnam, who want to save costs in the process of trademark protection or choose between trademark registration color or black-white, it is preferable to register a trademark in the form of black - white.
3.3. Notes on registration of image marks (also known as logos), word marks, and positioning sentences (slogan) when registering trademarks
- Image marks (also known as logos)
It is possible to register for protection independently as a trademark or in combination with the text of the mark, the positioning sentence when registering the trademark.
- Word mark
When registering a trademark, the application owner can choose the form of the registered trademark word in the following forms:
- The first type of letter trademark form for registration.
- Merely composed of standard printed letters or numbers and only in simple black-white color. The owner of a standard font trademark has a fairly broad right to use the registered mark, that is, the right to use the mark in any font or color that he or she wants as long as it does not infringe the rights of other trademarks which have been granted protection. Such use will not prejudice the protected content of the mark.
- The limitation of this first type of trademark registration should be noted that when used arbitrarily like this, only the content of the mark is protected, while the font or presentation is unique as well as the color of the mark will not fall under the protection of the registered standard word mark and is granted a protection title.
- The second type of trademark registration
- Composed of letters, words, numbers that are stylized or illustrated or contain colors. A trademark registered in this form is still protected in terms of the core content of the mark which is the letter structure, pronunciation, and meaning of words (if any) like a standard printed mark. However, because the mark is also protected by an additional presentation (typeface or special presentation), its protection is further enhanced against the competitors' attempts to access the mark not only about the content but also about the expression of the mark.
- The limitation of this second type of trademark registration is that when registering a stylized word mark, the right to use the stylized word mark is restricted because the applicant can only use the mark exactly as the registered model without may not arbitrarily use the mark in other words forms or other ways.
3.4. Priority right that affects trademark application registration
Priority in trademark registration affects whether or not to grant protection titles to other entities’ trademark applications. According to the provisions of the Intellectual Property Law and relevant international treaties, from the date of filing the first application to the date of filing in Vietnam, another entity applies to the same subject in the first application. Then the first applicant's application is still considered to have the same filing date as the first filing date and is given priority protection. Because of that, no one dares to assure that a trademark that has been filed and searched for the status of trademark registration will be guaranteed to be granted a protection title.
3.5. Some notes when designing, choosing to register a trademark
- To improve the ability to be protected exclusively for their trademark, enterprises need to design a trademark that ensures uniqueness, reflects the distinctive features of their goods and services, and at the same time must be able to distinguish the mark of another entity.
- Trademarks can be a combination of text and images. In case the mark is just words, it should be stylized so that it can be granted a protection title when registered.
3.6. Some elements that are not granted a protection title (i.e., exclusion signs should not be used as trademark); including:
- Trademarks design as shapes, simple geometric figures, numerals, letters, words of uncommon languages (such as English, Japanese, Chinese and Latin translations)
- Trademarks design as indicators of the time, place, production method, type, quantity, quality, properties, ingredients, uses, values , or other descriptive properties of goods, services;
- Trademarks design as a description of the legal form and field of business;
- Trademarks design as signs indicating the geographical origin of goods or services.
Consultancy Service of Trademark Registration of DHT Law Firm
- Provide legal advice on procedures and conditions for Trademark Registration;
- Counseling on feasibility when registering Trademarks;
- Free preliminary look-up of the capability of Trademark Registration;
- Official intensive look-up for Trademark at the National Office of Intellectual Property – Independent cost;
- Representing customers for Trademark Registration and for throughout the process of Trademark Registration;
- Drafting documents/ dossiers for trademark registration;
- Filing and monitoring the process of registration, examination of applications at the National Office of Intellectual Property;
- Representing clients in the entire process of establishing rights and responding to official correspondence with the National Office of Intellectual Property on trademark registration;
- Exchanging and providing information to clients during the process of trademark protection registration.
Enterprises and individuals with demands to register a trademark, please contact DHT Law Firm for advice, detailed guidance on filing, how to classify trademarks, procedures related to Trademark Registration in Vietnam, or problems arising during the process of Trademark Registration.
