Trademark Examination Process and Common Grounds for Trademark Refusal in Vietnam

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Applicants who are aware of the trademark examination process in Vietnam will be more likely to submit complete and accurate applications from the outset, minimizing the risk of receiving official notifications of deficiencies and the associated delays. This knowledge also enables effective responses to challenges and ultimately increases the chances of successful and cost-efficient trademark registration in Vietnam.

With 15 years of practical experience in handling complicated IP related matters in Vietnam, KENFOX IP & Law Office provides comprehensive details to explain the Trademark Examination Process and Common Grounds for Trademark Refusal in Vietnam.

1. Trademark Examination Process in Vietnam

The trademark examination process in Vietnam mainly involved (i) formality examination, (ii) publication, (iii) substantive examination, and (iv) Decision on registration or refusal of the trademark application.

1.1. Formality Examination

Once the application is filed, the Intellectual Property Office of Vietnam (IPVN) conducts a formality examination within one month from the filing date. During this stage, the IPVN checks if the application meets the formal requirements, such as:

• Completeness of the application documents.

• Proper classification of goods and services.

• Payment of fees.

If any deficiencies are found, the IPVN will issue an official notification requesting the applicant to rectify them within 02 months, extendable by another 02 months. Failure to address these issues can lead to the rejection of the application.

1.2. Publication of the Application

If the application passes the formality examination, it will be published in the Industrial Property Official Gazette within 02 months from the date of acceptance of the valid application. This publication allows third parties to file oppositions against the trademark application with 05 months from the publication if they believe it infringes upon their existing rights. 

1.3. Substantive Examination

Following the publication period, the IPVN proceeds with the substantive examination. This stage typically takes around nine months but can be longer depending on the complexity of the case and the workload of the responsible examiner. During the substantive examination, the IPVN assesses whether the trademark meets the substantive requirements for registration, including:

• Distinctiveness: The trademark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.  

• Non-conflict with prior rights: The trademark should not be identical or confusingly similar to earlier trademarks registered or applied for in Vietnam for identical or similar goods or services.  

• Compliance with prohibited signs: The trademark should not contain signs that are prohibited by law (e.g., national flags, state emblems, deceptive signs, signs contrary to social morality).  

1.4. Decision on Registration or Refusal:

Based on the substantive examination, the IPVN will issue a decision on whether to grant or refuse the trademark registration.  

• Decision to Grant Registration: If the trademark meets all the requirements, the IPVN will issue a decision to grant registration. The applicant will then be required to pay the registration and publication fees with 03 months. Once these fees are paid, the trademark will be officially registered in the National Register of Trademarks, and a trademark registration certificate will be issued. The protection period for a trademark in Vietnam is 10 years from the filing date and is renewable for successive 10-year periods.  

• Decision of Refusal: If the IPVN finds grounds for refusal, it will issue an official Notification stating the reasons for the refusal. The applicant has the right to file a response within 03 months from the Notification. If the response fails, the IPVN will issue a formal Refusal Decision. In such scenario, the applicant is entitled to file an appeal against this decision within 90 days from the date of receipt or awareness thereof. If the appeal fails, the applicant is entitled to file another appeal against the IPVN to the Ministry of Science & Technology or file a lawsuite thereagainst.

2. Common Grounds for Trademark Refusal in Vietnam

Trademark applications in Vietnam can be refused on absolute grounds or relative grounds.

• Absolute grounds relate to the inherent characteristics of the trademark itself (g., lack of distinctiveness, descriptiveness, generic, contrary to public policy).

• Relative grounds primarily relate to the potential conflict of the applied-for trademark with prior rights held by other parties. These grounds focus on the relationship between the new trademark application and existing trademarks or other intellectual property rights.

These grounds are detailed in Articles 73 and 74 of Vietnam’s IP Law. Article 90 outlines the “first-to-file” principle, which is crucial in resolving conflicts.

2.1. Absolute Grounds for Refusal (Article 73):

Article 73 of Vietnam’s IP Law lists signs that are ineligible for protection as marks, and therefore, applications containing these signs will be refused registration. These are:

(i) Signs identical or confusingly similar to national symbols (Article 73.1 & 73.2):

• National Flags, Emblems, Anthems: Signs identical or confusingly similar to national flags, national emblems, and national anthems of Vietnam and other countries, and the International (L’Internationale).

• Emblems of State/Political/Social Organizations: Signs identical or confusingly similar to emblems, flags, armorial bearings, abbreviated or full names of Vietnamese State bodies, political, socio-political, socio-political-professional, social, socio-professional organizations, or international organizations, unless permitted by those bodies or organizations.

(ii) Signs identical or confusingly similar to names/images of leaders (Article 73.3): Signs identical or confusingly similar to real names, aliases, pseudonyms, or images of leaders, national heroes, or famous personalities of Vietnam or foreign countries.

(iii) Signs identical or confusingly similar to certification seals (Article 73.4): Signs identical or confusingly similar to certification seals, check seals, or warranty seals of international organizations that require their signs not to be used, unless registered as certification marks by those organizations.

(iv) Signs that are misleading or deceptive (Article 73.5): Signs that cause misunderstanding, confusion, or deceive consumers regarding the origin, properties, use, quality, value, or other characteristics of goods or services.

(v) Signs lacking distinctiveness due to inherent nature (Article 73.6 & implied by Article 74):

• Original shapes dictated by function (Article 73.6): Signs that are original shapes of goods or come into compulsory existence due to the technical properties of goods. This is often linked to lack of inherent distinctiveness under Article 74.

• Simple shapes, figures, letters, numerals, common signs (Article 74.2.a & 74.2.b):

• • • Simple shapes and geometric figures, numerals, letters, or scripts of uncommon languages unless widely used and recognized as a mark before filing.

• • • Conventional signs or symbols, pictures, or common names in any language for goods/services, common shapes of goods/parts, common packaging shapes widely recognized before filing.

• Descriptive signs (Article 74.2.c): Signs indicating time, place, method of manufacturing, category, quantity, quality, properties, ingredients, intended utility, value, or other descriptive characteristics, or signs making goods considerably more valuable, unless they become distinctive through use before filing.

• Signs describing business legal status (Article 74.2.d): Signs describing the legal status and business sector of business entities.

• Geographically descriptive signs (Article 74.2.đ): Signs indicating geographical origin, unless widely used and recognized as a mark before filing, or registered as collective/certification marks.

(vi) Signs containing copyrighted works (Article 73.7): Signs containing copies of works, unless permitted by copyright

2.2. Relative Grounds for Refusal (Article 74.2.e, g, h, i, k, l, n, o, p – based on conflict with prior rights):

Article 74.2 details signs deemed indistinctive because of conflicts with prior existing rights. These lead to refusal due to likelihood of confusion or unfair advantage.

(i) Conflict with prior registered trademarks and applications (Article 74.2.e & Article 90): Identical or confusingly similar marks for identical or similar goods/services: Signs identical or confusingly similar to marks of other organizations/individuals already protected for identical or similar goods/services. This is assessed based on:

• Applications with earlier filing/priority dates (Article 74.2.e & Article 90): Crucially, Vietnam operates on the first-to-file principle (Article 90). The application with the earliest valid filing or priority date generally prevails, assuming it meets all other registrability criteria. Later applications for identical or confusingly similar marks for similar goods/services will be refused.

• Treaty-based applications: Includes applications filed under treaties to which Vietnam is a party.

• Marks with terminated or invalidated registrations (Article 74.2.e & 74.2.h): Marks identical/similar to registrations that have been terminated (except for certain reasons) for no more than 3 years are also grounds for refusal.

(ii) Conflict with prior widely used and recognized marks (Article 74.2.g): Signs identical or confusingly similar to another person’s mark that has been widely used and recognized for similar/identical goods/services before the filing date (or priority date). This acknowledges unregistered but well-established marks.

(iii) Conflict with well-known marks (Article 74.2.i): Signs identical or similar to marks recognized as well-known marks before the filing date, even for:

• Identical or similar goods/services: If likely to affect the distinctiveness of the well-known mark or aim to take advantage of its reputation.

• Dissimilar goods/services: If use is likely to affect distinctiveness or take advantage of reputation. This offers broader protection for well-known marks against dilution and free-riding.

(iv) Conflict with prior trade names (Article 74.2.k): Signs identical or similar to another person’s trade name currently in use, if it may cause consumer confusion as to the origin of goods/services.

(v) Conflict with protected geographical indications (GIs) (Article 74.2.l & 74.2.m):

• Generally: Signs identical or similar to a protected geographical indication if use may mislead consumers as to geographical origin.

• Specifically for Wines/Spirits: Signs identical to, containing, translated, or transcribed from protected GIs for wines/spirits if registered for wines/spirits not originating from that geographical area.