A single or multi-class trademark application in Vietnam is better?
1. Differences between a multiple-class trademark application and a single-class trademark application
Each trademark application filed with the IP Office of Vietnam may request registration of a mark used for one or more than one goods or services (See Point 37.2, Circular No. 01/2007/TT-BKHCN, as revised). That being said, a trademark application can cover either 01 class or multiple classes of goods/services.
Hereunder are main differences between a multiple-class trademark application and a single-class trademark application in Vietnam.
| Criteria of comparison | A multi-class Trademark Application | A single-class Trademark Application |
|
Fees | Filing fee is slightly reduced as compared to a single-class Trademark Application in terms of both official and service fees given that the official + service fees paid in relation to the additional classes designated under the same application are indeed lower. | Filing fee is slightly higher than a multi-class application in terms of both official and service fees. |
| Registration fee (or fee for granting Trademark Registration Certificate) is slightly reduced as compared to a single-class Trademark Application in terms of both official and service fees. However, in the long run, fees related to recordal of name or address, license, merger, or assignment for multi-class applications would be lower as they would applicable per application/registration irrespective of the number of classes of goods/services in each application/registration. | Registration fee (or fee for granting Trademark Registration Certificate) is slightly higher than a multi-class Trademark Application in terms of both official and service fees. Fees for recordal of name or address, license, merger, or assignment for multi-class applications would be higher as they would be applicable per application/registration. | |
| Examination time | Examination on multi class trademark application is more time-consuming in comparison with the single one. Further, if the trademark application in Vietnam is refused for one class or face an opposition from a third party, the time for approving the remaining classes will be protracted. | Less time-consuming than a multi-class Trademark Application. Refusal of other classes may not affect the registration/protection of the mark in a single-class Trademark Application. |
| Additionally incurred Fee | In case a multi-class application should be divided to allow the classes of goods/services which are not refused to be registered, fees for division of trademark application will incur. | No such a division of trademark application in case a single-class Trademark Application is refused for protection. |
2. In what circumstances a multiple-class application can be divided in Vietnam? Is it possible to divide a trademark registration in Vietnam and only request for renewal of some classes of the trademark voluntarily?
In what circumstances a multiple-class application can be divided in Vietnam?
The applicant may divide, on his/her own initiative or upon the request of the IP Vietnam, his/her trademark application, i.e. division of one or several components of a mark or part of the list of goods and services in a trademark application to one or several new applications referred to as divisional applications. A divisional application must bear a new serial number and is entitled to the filing date or date(s) of priority (if any) of the parent application. Parent applications (after being divided) shall be further processed under normal procedures and applicants shall pay an amendment fee. (See Point 17.2, Circular No. 01/2007/TT-BKHCN, as revised).
A trademark applicant may choose to divide his/her trademark application for several reasons including, but not limited to, the following:
- If the goods/services of the parent application are in conflict with another trade mark application or registration, the applicant may decide to exclude the conflicting goods/services from the parent application so that the parent application can proceed to acceptance/registration; or
- Similarly, if only some of the goods/services of the parent application have faced refusal Notices, the applicant may decide to exclude the goods/services subject to refusal from the parent application, so that the parent application can proceed to acceptance; or
- If a clearly descriptive objection has been raised or maintained in relation to some of the goods or services of the application, the applicant may wish to divide out the impugned goods or services so that the parent application can proceed to registration.
- If an opposition is filed against an application, the applicant may divide out some of the goods or services to allow the parent application to proceed to registration.
Is it possible to divide a trademark registration in Vietnam and only request for renewal of some classes of the trademark voluntarily?
No procedures are laid down under the Vietnam IP Law and its by-law documents on dividing a Trademark Registration Certificate. Under the laws, only division of a pending application is feasible. We note, however, that amendment to a Trademark Registration Certificate in Vietnam is possible (See Article 97.3, Vietnam IP Law). It is further provided that the amendment may be made to (i) some details of the mark specimen stated in the Trademark Registration Certificate, provided that such amendment does not cause any substantial change thereto and (ii) one or several goods/services or classes of goods/services by excluding it/them from the list of goods/services specified in the Trademark Registration Certificate (See Point 20.1b, Circular No. 01/2007/TT-BKHCN, as revised).
The validity of a Trademark Registration Certificate may be extended many continuous times, for each period of ten years, wholly or partly list of goods, services. In a broader sense, renewal of some classes of the trademark voluntarily is accepted in Vietnam.
3. After a trademark registration, whether there is any difference in cost for recording name change, assignment, licensing of multi-class marks and single-class marks.
Fees related to recordal of name or address, license, merger, or assignment for multi-class applications would be lower as they would applicable per application/registration irrespective of the number of classes of goods/services in each application/registration.
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