Frequent Asked Questions related to Trademark
- What is a trademark? What kind of marks are areregistrable in Vietnam?
Under Vietnam trademark law, “trademarks are symbols which are used to distinguish goods/services of the same kinds of different manufacturing and commercial establishments. A trademark may be in the form of words, images, or a combination of these elements and is manifested in one or more colors.” Trademarks include service marks, associated marks and collective marks.
Registrable marks must be distinctive. Indistinctive marks include, but not limited to:
i) simple geometrical shapes, numerical figures, alphabetical letters, letters that cannot pronounced as a word or letter of foreign languages that are not commonly used;
ii) marks which indicate time, place, origin, quality, nature, purpose, etc. of the goods/services in question.
However, it is possible to secure registration of an inherently indistinctive mark by proving it has become distinctive of the applicant’s goods/services through use in commerce (i.e. secondary meaning)
- Is trademark search necessary before filing? How long does it take and how much does it cost for such a search?
To lower the possibility of potential rejection or a risk of opposition, a trademark search before filing is highly recommended. The estimate of costs for conducting a similar trademark search is USD170.00 per class. A search report can be delivered within five (5) working days after instructed.
- What is required for filing a trademark application in Vietnam?
For filing a trademark application in Vietnam, the following information and documentation are required:
- A Power of Attorney;
- Full name and address of the applicant;
- 8 identical representations of the trademark, if not a word mark;
- List of goods/services covered by the mark and its corresponding international class(es), if known.;
- A certified true copy of the basis application if claiming convention priority.
More detail can be found here.
- What is the estimate of costs for filing a trademark application in Vietnam?
The costs for filing a trademark application in Vietnam depend on the number of classes of goods and/or services (according to Nice Classification), number of items of goods/services in each class, and content that needs to be translated into Vietnamese. To get a free quote, please fill out this form.
- How long does it take to get a registration of a straightforward trademark application?
An undisputed registration process usually takes 12 to 15 months involving three stages: formal examination (3 months); substantive examination (9 to 12 months); and issuance of a registration certificate (1 month). However, in practice examination process usually take much longer, especially the substantive examination process.
- Is a multi-class trademark application accepted in Vietnam?
Yes, it is possible to file an application for one trademark covering more than one class of goods and/or services with payment of an additional fee for each additional class.
- How are goods/services classified in Vietnam?
Although not a contracting party of the Nice Agreement, Vietnam adopts and follows the International Classification of Goods and Services. The specification of designated goods/services should include those upon which the applicant has used the mark or has the intention to use the mark. The goods/services may be described by broad generic descriptions. Applications can be filed for a large variety of goods/services or even for all goods in a class. It is, however, noted that a general description such as “all goods or services included in class….” is inapplicable.
- Is it possible to amend the trademark itself and the designated goods/services under the pending application?
Yes. The applicant may amend the trademark itself and/or the designated goods/services under the pending application, provided that such amendments will not change the nature of the mark as filed and/or not broaden the scope of protection of the designated goods/services.
- Can marks with no distinctive characteristics get protection?
As stipulated by law, marks which do not possess distinctive characteristics, such as simple shapes and geometrical shapes, numerical figures, alphabetical letters, letters which cannot be pronounced as a word, or letters of foreign languages which are not commonly used shall not be protected. However, such marks shall be eligible for registration if they have been widely used and recognized.
- Can a trademark which is considered confusingly similar to or identical with another trademark whose validity has expired or been suspended/cancelled be registered?
A trademark which is considered confusingly similar to or identical with another trademark whose validity has expired or been suspended/cancelled shall be considered for protection only, at the time of filing the new trademark application, 5 years from the expiry date/cancellation date of the cited trademark has passed. However, this provision shall not apply to the mark of which the validity is cancelled on the non-use basis.
- How are well-known trademarks protected in Vietnam?
As a contracting party of the Paris Convention, Vietnam is obligated to give special protection to well-known trademarks. A well-known trademark is a mark that has been continuously used for prestigious products/services so that it becomes widely known. Rights under a well-known trademark are established based on a decision on the recognition of a trademark as well-known to be issued by the Intellectual Property Office of Vietnam upon the owner’s request.
- Is it possible to prevent others from using marks identical to or similar with a trademark in a pending application?
No. In Vietnam, trademark rights to a trademark are established on the basis of certificates of registration of trademark issued by the Trademark Office. When a trademark application is still pending, the validity of the trademark has not yet started and therefore the owner has no right to prevent others from using the identical or similar marks.
- What is the term of a trademark registration and how can it be renewed?
The legal protection of a registered trademark begins from registration date. A registration is valid for 10 years calculating from the accepted filing date of the application and can be renewed for subsequent 10 years term, ad infinitum.
A request for renewal must be filed within six (6) months prior to its expiration date. Late payment of renewal fees is available within a six months grace period with surcharge of 10% of maintenance fee (maintenance fee is VND100.000 per class of goods/services (for trademark), per independent claim (for patent), or per embodiment (for design)) for each month overdue.
Fore more details, please click here.
- Can the trademark itself and the designated goods be amended after granted?
The registered trademark itself can not be amended, but the designated goods/services can be narrowed.
- Is proof of use required for obtaining trademark registration?
Proof of use is not required at the time of filing nor at the time of renewal. A grace period of five (5) years for excusing non-use is provided.
- Is there any possibility to file a cancellation action against a registered mark based on non-use?
A trademark registration is vulnerable to expungement if the mark is not used by the owner without legitimate reasons within five (5) consecutive years before a request for non-use cancellation is made to the Trademark Office by any third party. The burden of proof of use is on the trademark owner.
- Should the specific royalty amount be indicated in the license agreement?
A specific royalty amount must be indicated in the trademark license agreement. In practice, the parties concerned may agree on the actual royalty amount separately, whatever royalty amount indicated in the agreement shall be recorded in the decision on registration of trademark license agreement issued by the Trademark Office upon registration of the license.
- Is a trademark license required to be registered at the Trademark Office?
Recordal of license agreement with the Intellectual Property Office of Vietnam is not compulsory. However, to be enforceable with third parties, it must be recorded with the IP Vietnam.