The process of trademark registration in Vietnam in 2021

The process of trademark registration in Vietnam in 2021 includes 5 steps. Step 1: Formality examination which takes place in 1 month. Step 2: Publication of valid application. Step 3: Submit an objection/ opposition proceeding. Step 4: Substantive examination and Step 5: Grand a trademark registration certificate or issue a notice of refusal

Trademark commonly referred as brand or logo which are becoming more important in enterprise business activity especially when the punishment is strengthened and more strictly regulated. Therefore, registering a trademark is essential step that neither an individual nor enterprise should skip.

Who is entitle to register a trademark in Viet Nam?

According to the intellectual property law of 2021, the applicant of trademark application could be:

Vietnamese citizens with full legal capacity
Enterprises, household business, and foreign invested companies with office located in Vietnam or has presence in Viet Nam.
Foreigner (in such case the application must be submitted by an Industrial Property Agent).
State agencies (for registering certification marks, collective marks, common marks)
Organization, Association (For registering certification marks, collective marks).

The process of trademark registration in Vietnam

A trademark application will be filed to National Office of Intellectual Property (NOIP). On receiving the dossier, NOIP will conduct some examinations according to a 5-step process: Step 1: Formality examination which takes place in 1 month. Step 2: Publication of valid application. Step 3: Submit an objection/ opposition proceeding. Step 4: Substantive examination and Step 5: Grand a trademark registration certificate or issue a notice of refusal

Step 1: Formality examination

Time limit: 01 month from the date of registration at NOIP

The application has to satisfy the following requirements:

Formal conditions
Number of documents comply with the regulations of law
Size of trademark.
Not a prohibited trademark
Not an indistinguishable sign
Classification of product and service correctly
The information of applicant, power of attorney, and documents of priority

Step 2: Publication

Publication date: after the date of acceptance of valid application, NOIP will published the application on the Intellectual Property Gazette.

Information in the announcement: Name and address of applicant, application number, application date, trademark sample, product and service classification.

Announcement page: Intellectual Property Gazette

Step 3: Opposition

Time limit: This stage begins from the date of publication to the date of receipt of substantive examination result.

Procedure: After the application is published in the industrial property Official Gazette. Any third party is entitle to request NOIP not to issue a trademark registration certificate for such application.

Grounds of refusal are:

The applicant does not entitle to register.
The registration mark is identical with or confusingly similar to marks which have been filed or being granted a certificate.

Step 4: Substantive examination

Time limit: 18 – 20 months from the filing date.

Procedures: The specialists of NOIP will search and evaluate reference marks using all data from sources listed in IP law to see whether the trademark is possible for protection? When the application satisfy all conditions, NOIP shall issue a trademark registration certification. Otherwise, the Department will issue a notification of substantive examination result of the application (Denial of protection), the owner of the application has the right to respond to this notification.

Step 5: Trademark registration

Time limit: 01 – 03 months from the end of Step 4

Procedures:

If the application meets all requirements, the applicant will have to pay fee of granting protection and receive the trademark registration certificate (which is valid for 10 years).
If the application fail to satisfy the conditions of protection, NOIP shall issue a notification of refusal in which clearly states the ground of refusal and the applicant has 03 months to reply.
Therefore, if there is no objection, the trademark will be granted protection after 5 mentioned steps with a period of 18-20 months.

Required documents of trademark registration in Vietnam

Legal basis: Point 37 of Circular No. 01/2007 / TT-BKHCN amended and supplemented by Clause 31, Article 1 of Circular No. 16/2016 / TT-BKHCN.

A trademark registration documents includes:

Trademark application (02 copies)
Therein, the description of trademark must clearly indicate the type of mark whether is a collective mark, a certification mark or an ordinary mark.
Describe all the colors of the mark (for the color mark or the black-and-white mark)
Information of the applicant (name and address)
Full name and detail address of the applicant: the number of accommodation, of civil group, hamlet, ward, district and town
Permanent address is recommended other than temporary address
Classification of product and service.
- Vietnam apply Nice classification to classify goods, products and services into 45 groups.
- The applicant is required to clarify the goods, products into specific groups in order to define the scope of protection. In case the classification is inaccurate or not specific enough, the application may be rejected.
Payment of fee and charges confirmation
Evidence of right to register.
- In some case, an applicant has to provide documents to prove his priority right. For example, the agent register the trademark of the product owner; the distribution company register trademark of the manufacture company; registration of subsidiary for the trademark of mother company, etc.
Documents for priority claim
- For the application filed under the Paris convention, applicant can submit the application in Viet Nam with a request for priority right within 6 months from the date of first filing application in other member country of Paris convention.

Trademark in Vietnam – FAQ

Who can file a trademark application in Vietnam?

– Vietnamese citizens and citizens of other countries (Except for the cases which is prohibited in Vietnamese law or international treaties).
– Vietnamese enterprises or foreign enterprises (regardless of their presence in Vietnam).
– State agencies; People’s Committee; Department of Science and Technology; Cooperative; Associations; Craft village … register for collective mark or certification mark.

Why should conduct a search before registering?

– Pre-registration search is to review and check available of upcoming registration.
– This search is not compulsory in the trademark registration process. However, the search will eliminate some risk before registering, thereby save your time and money.

How much does it cost to register a trademark?

The cost of registering trademark in Vietnam depends on the number of product/service groups and the quantity of goods / services in the group. The fee for registering a trademark fluctuates from 100$