PADEMARK - Patent Attorneys/Trademark Attorneys in Vietnam

A trademark is a sign used to distinguish the goods or services of different entities or individuals. A registrable mark must be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colours, and capable of distinguishing goods or services of the trademark owner from goods or services of others. Slogans are registrable as trade marks in Vietnam provided they are distinctive either inherently or upon proof of acquired distinctiveness.

Collective mark is a mark used to distinguish goods or services of members of an organization that is the owner of such a mark from goods or services of non-member entities or individuals.

Certification mark is a mark that is authorized by the owner to other organizations or individuals for use on their goods or services in order to certify characteristics with respect to origin, materials, method or mode of goods manufacture, or service provision, quality, accuracy, safety or other definable characteristics of the goods or services bearing that mark.

Associated marks are the marks registered by the same owner, identical with or similar to each other and are used for identical or similar or related goods and services.

Well-known mark is a mark that has become widely known by the consumers throughout the territory of Vietnam.

Well‑Known Trademarks

The recent development with respect to the Vietnam trademark regulations provides a new approach to the concept of well-known trademark and new regime of protection therefor in Vietnam. Specifically, the rights over a well-known trademark are no longer subject to any registration for recognition with the competent authority as previously required.  Instead, the rights over a well-known trademark are automatically established through the use of the mark in commerce that makes the mark become widely known by the consumers throughout the territory of Vietnam.

Criteria for consideration the well-known status of a mark:

§             Number of the relevant consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;

§             Territorial extent of circulation of the goods or services bearing the mark;

§             Turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;

§             Duration of continuous use of the mark;

§             Widespread goodwill of the goods or services bearing the mark;

§             Number of countries in which the mark has been protected;

§             Number of countries in which the mark has been recognized as well known;

§             Value of the mark in assignment, licensing, investment capital contribution.

Signs not registrable as a mark

§             Signs identical with or confusingly similar to the national flags, national emblems of Vietnam or any foreign countries;

§             Signs identical with or confusingly similar to symbols, flags, armorial bearings, abbreviations or full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless authorized by these agencies or organizations;

§             Signs identical with or confusingly similar to real names, aliases, pen names or images of leaders, national heroes or famous persons of Vietnam or any foreign countries;

§             Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations having noticed and requested for repression of use of such seals, except for the very seals registered as certification marks in the name of the very organizations;

§             Signs liable to mislead, confuse or deceive consumers as to the origin, nature, intended purposes, quality, value or other characteristics of the goods or services.

First-to-File Principle

The "first‑to‑file" principle is also adopted for trademark protection in Vietnam. Therefore, if there are two or more trademark applications for registration of the identical or confusingly similar trademarks, for the identical or similar goods and/or services, the registration shall be granted to the application having the earliest priority date or the earliest filing date. Since the first party to file an application with the National Office of Intellectual Property of Vietnam (“NOIP”) is deemed to have priority over the others, it is important that the trademark owners should register their trademarks in Vietnam as soon as possible.

Examination Process

Vietnam trademark application shall automatically be examined by the NOIP with respect to formalities. The NOIP shall conduct the formality check within one (01) month from the filing date. The applications shall be published in the IP Gazette within two (02) months from the date of acceptance. The published application shall be substantively examined within six (06) months from the date of publication.

Term of Registration

The validity term of trademark registration is 10 years counted from the filing date. The term is renewable for an unlimited number of ten-year terms.