Guide on Trademark Matters in Vietnam

in IP Practice, Our Practice, Trademark in Vietnam, Vietnam

Contributed by: Nguyen Vu Quan, KENFOX IP & Law Office, Vietnam

Wanhuida Intellectual Property, China

For INTA Guideline

I. General

1. What is the relevant trademark authority and legislation in Vietnam?

The relevant trademark authority in Vietnam is the Intellectual Property Office of Vietnam (IP VIETNAM), previously known as the National Office of Intellectual Property (NOIP).

Trademark legislation Vietnam is primarily governed by the following legal framework:

Intellectual Property Law (2005, amended in 2009, 2019, 2022 and 2025): This serves as the fundamental legal framework for all aspects of IP rights in Vietnam, including trademarks.
Civil Code (2015): This provides general principles on civil liability and remedies, which can be applicable in trademark disputes, particularly concerning damages and compensation.
Civil Procedure Code (2015): This sets out the procedural rules for initiating and conducting civil lawsuits, including those related to trademark infringement.
Penal Code (2015, amended in 2017): This sets out criminal liability for several IP-related crimes, including trademark counterfeiting.
Criminal Procedure Code (2015): This provides the basic principles and procedure for criminal cases.
Relevant Decrees, Circulars and Joint Circulars: These provide detailed guidance and implementation regulations for the above laws. Notable examples include (i) Decree No. 65/2023/ND-CP detailing and guiding the implementation of several articles of the Intellectual Property Law, (ii) Circular No. 23/2023/TT-BKHCN providing detailed guidance on the IP Law and implements measures from Decree 65/2023/ND-CP, particularly focusing on procedures for establishing and protecting industrial property rights, (iii) Decree No. 99/2013/ND-CP on the sanctioning of administrative violations in the field of industrial property, revised under Decree No. 46/2024/NĐ-CP, (iv) Circular No. 11/2015/TT-BKHCN providing detailed instructions on how to handle administrative violations related to intellectual property rights in Vietnam, specifying the procedures for imposing sanctions and addressing various violations outlined in Decree No. 99/2013/ND-CP.
In addition to the above, other laws and regulations might come into play depending on the specific nature of the trademark dispute. These can include laws on customs, e-commerce, advertising, competition, and consumer protection.

2. Is it a first-to-file system or first-to-use system in Vietnam?

Vietnam operates under a first-to-file system for trademark. This means that the first person or entity to file a valid application for a trademark will be granted the rights, regardless of whether someone else used it earlier but didn’t file an application.

While Vietnam primarily operates on a first-to-file basis for trademarks, it also recognizes priority rights based on earlier filings in other countries, provided those countries are part of relevant international treaties or agreements on intellectual property that Vietnam has joined. In order to claim priority rights, the same trademark application as filed in the country of origin must be filed with IP VIETNAM within six months of the earlier filing date.

3. Is it OK to use an “unregistered” mark in Vietnam?

The use of an “unregistered” mark is generally permissible in Vietnam. However, it is important to note that such use carries substantial risks and limitations.

First, an unregistered mark doesn’t offer exclusive rights. This opens the door for others to use identical or similar marks, potentially causing confusion among consumers.

Moreover, legal options for addressing infringement of an “unregistered” mark are restricted compared to a “registered” mark. You may have to resort to unfair competition laws, which can be challenging to prove and enforce.

Additionally, there’s the risk that someone else might register the same or a similar mark, leaving you vulnerable to infringement claims or forced to cease using your mark. Building brand recognition and goodwill is also harder without the legal presumption of ownership and exclusivity that a registered mark provides.

There is an exception for well-known marks. If your unregistered mark enjoys widespread recognition in Vietnam, you might find some protection under unfair competition laws. However, demonstrating this level of recognition can be demanding and requires substantial evidence of extensive use.

4. What is the timeframe for obtaining registration in Vietnam?

The timeframe for obtaining trademark registration in Vietnam typically ranges from 12 to 18 months, but it can vary depending on several factors, including the complexity of the application, any objections raised during the examination process, and IP VIETNAM’s overall workload.

The general timeline for a trademark application in Vietnam is as follows:

Formality examination: 1 month from the filing date.
Publication: 2 months.
Substantive examination: 9-12 months (can be longer if there are office actions or complexities).
Grant of Trademark Registration Certificate: 2-3 months from the date of payment of the granting fee.

5. What are the advantages of registering a trademark in Vietnam?

The registration of a trademark in Vietnam confers upon the owner the exclusive right to use the mark in relation to the goods or services for which it is registered. Such registration affords the owner legal recourse to prevent the unauthorized use of confusingly similar marks by third parties. Furthermore, registration serves to establish clear legal ownership of the mark, thereby facilitating the enforcement of the owner’s rights against potential infringers.

II. Registrable Trademarks

1. What can be registered as a trademark in Vietnam?

In Vietnam, a diverse array of signs can qualify for trademark registration, provided they meet three essential criteria.

First, the trademark must be visible, encompassing various forms like letters, words, drawings, images, holograms, or even a combination of these, and can be presented in one or more colors. Additionally, sound marks capable of graphical representation are also eligible for registration.

Second, the trademark must possess distinctiveness, meaning it has the capacity to set apart one business’s products or services from those offered by others. This distinctiveness ensures consumers can easily identify and associate the mark with a specific source.

Lastly, the sign must not fall under any of 07 prohibited categories specified in Article 73 of the Law on Intellectual Property. These prohibitions encompass signs that are deceptive (i.e., falsely represent the origin, quality, or characteristics of goods or services), lack distinctiveness, conflict with public order or morality, or infringe on prior rights (copyright, trade name, industrial design, etc.).

2. Are there any special rules for non-traditional trademarks such as 3D trademarks, sound trademarks, color trademarks, GI trademarks, etc. in Vietnam?

Yes, Vietnam has special rules for several types of non-traditional trademarks under Circular No. 23/2023/TT-BKHCN.

3D trademarks: The shape of a product can be registered as a trademark if it meets the general requirements for trademarks and is not solely dictated by the product’s technical function. The shape must also be distinct and not necessary to obtain a technical result.
Sound trademarks: While the law allows for the registration of audible signs that can be graphically represented, there’s no specific guidance on sound trademarks. The graphical representation requirement might pose challenges for registering pure sound marks.
Color trademarks: Single colors alone are generally not registrable unless combined with word or figurative elements to create a distinctive whole.
Geographical Indication (GI): GIs have a separate registration process and specific requirements. The GI must indicate the geographical origin of a product, and the product’s quality, reputation, or other characteristics must be essentially attributable to its geographical origin. The applicant must also provide evidence of the link between the product and its geographical origin.
Collective marks and Certification marks: These marks have specific requirements regarding the applicant’s eligibility and the regulations governing their use. Collective marks are used by members of a collective organization, while certification marks certify specific characteristics of goods or services.

III. Searching

1. Should the pre-filing search be mandatory in Vietnam?

While pre-filing search is not currently mandatory in Vietnam, it is highly recommended for several reasons:

Increases the likelihood of successful registration: A pre-filing search can identify any existing trademarks that are similar or identical to the one you intend to register. This allows you to modify your mark or choose a different one before investing time and resources in the application process, reducing the risk of rejection.
Avoids potential conflicts and legal disputes: A search can help you identify potential conflicts with prior rights, allowing you to avoid legal disputes and costly rebranding later on.
Provides valuable market insights: A pre-filing search can help you understand the competitive landscape in your industry and identify any potential challenges or opportunities.

2. What are the website portals for the national office and the online trademark search of official registers in Vietnam?

The official website for the Intellectual Property Office of Vietnam (IP VIETNAM) is ipvietnam.gov.vn. This website provides access to resources, guidelines, and the online search tool for official registers, which helps in conducting preliminary trademark searches.

For conducting online trademark searches, you can use the following portals:

WIPO Publish: http://wipopublish.ipvietnam.gov.vn/wopublish-search/public/home?1&lang=en
IP Platform: https://ipplatform.gov.vn/

IV. Filling Requirements

1. Who can own a trademark in Vietnam?

The right to register a trademark in Vietnam generally belongs to the party that is first to file the application. However, there are specific provisions that outline who can be an applicant and own a trademark under Circular No. 23/2023/TT-BKHCN. The following entities are eligible to own a trademark in Vietnam:

Organizations and individuals engaged in the production of goods or provision of services: This includes manufacturers, service providers, and traders who use the mark on their goods or services or intend to use it in the future.
Traders of goods produced by manufacturers who do not use the mark: In this case, the trader can register the mark with the manufacturer’s agreement.
Organizations with functions of controlling and certifying features of goods or services: These organizations can register certification marks to indicate that the goods or services meet specific standards or characteristics.
Collective organizations: These organizations can register collective marks to distinguish the goods or services of their members from those of non-members.
Co-owners: Two or more organizations or individuals can jointly own a mark.
Individuals or organizations inheriting or taking over the right to register a mark: This includes cases of inheritance, merger, acquisition, or assignment of the right.

The eligibility criteria ensure that the party registering the trademark has a legitimate interest in using and protecting the mark in relation to their goods or services.

2. Are joint applicants permitted in Vietnam?

Yes, joint applicants are permitted for trademark applications in Vietnam. Upon successful registration, these applicants are recognized as co-owners of the trademark, sharing both the rights and responsibilities associated with the registered mark.

3. Is the actual use or intent to use required for trademark application in Vietnam?

In Vietnam, actual use or intent to use is not a requirement for filing a trademark application. The applicant does not need to provide proof of the trademark’s use or declare an intent to use the trademark at the time of filing. This allows businesses and individuals to secure trademark rights based on their future plans for the trademark without the immediate need to demonstrate its use in commerce.

However, it is critical to note that once a trademark is registered, the owner must use the trademark in commerce. Failure to do so within five years from the registration date may result in cancellation of the trademark on grounds of non-use. This provision ensures that trademark registrations are not speculative and that registered marks maintain their active and relevant status in the marketplace.

4. What information and documents are requested for filing purposes in Vietnam?

To file a trademark application in Vietnam, the following are required:

A representation of the trademark.
A list of goods/services to which the trademark applies.
A priority claim, if applicable.
A Power of Attorney (PoA), which must be signed but does not require notarization or legalization.

5. Is representation mandatory for the foreign applicant in Vietnam?

For foreign entities without a presence in Vietnam: Foreign entities are required to file trademark applications through their lawful representatives in Vietnam, and these representatives must be industrial property representation service organizations. This means that foreign applicants who do not have a physical presence in Vietnam cannot file trademark applications directly and must engage the services of a licensed industrial property representation service organization.

For foreign entities with a presence in Vietnam: Foreign entities possessing a physical or legal presence in Vietnam may file trademark applications directly or through their duly authorized representatives within Vietnam. Such “lawful representatives” include legal representatives, authorized individuals, or industrial property representation service organizations.

6. If so, who are the qualified representatives in Vietnam?

Qualified representatives for foreign applicants without a business presence in Vietnam are industrial property representation service organizations licensed by IP VIETNAM to provide professional services related to trademark registration and protection on behalf of the applicants.

V. Priority

1. Is it possible to claim priority in Vietnam, and if yes, how?

Yes, it is possible to claim priority for a trademark application in Vietnam.

Conditions for claiming priority: To claim priority, first, you need an earlier trademark application for the same mark filed in a Paris Convention or WTO member country. Second, the Vietnamese application must be filed within six months of the earlier application’s filing date. Lastly, the mark and goods/services in the Vietnamese application must match or fall within the scope of the earlier one.

How to claim priority: Start by filing your trademark application with IP VIETNAM within the six-month window. In the application, explicitly state that you’re claiming priority and provide details of the earlier application: its filing date, the country it was filed in, and its application number. Finally, within three months of filing in Vietnam, submit a certified copy of the earlier application and a Vietnamese translation.

VI. Examination

1. What will be examined for a trademark application? (such as formalities, absolute grounds, relative grounds, etc.) in Vietnam?

The examination process for a trademark application in Vietnam involves a comprehensive review that includes the following aspects:

[i] Formality examination: The application is checked for compliance with procedural and documentary requirements. This includes verifying the completeness of the application, the accuracy of the information provided, and the payment of necessary fees.

[ii] Substantive examination: This stage focuses on assessing the trademark’s registrability based on both absolute and relative grounds.

Absolute Grounds: The mark is evaluated for its inherent qualities, such as its distinctiveness, descriptiveness, and compliance with public order and morality. The examination ensures that the mark is capable of distinguishing the applicant’s goods or services and does not conflict with societal values or public interests.
Relative Grounds: The mark is compared against existing trademarks and other protected signs to ensure there is no likelihood of confusion. This includes checking for identical or similar marks that are already registered or pending registration for identical or similar goods or services. The examination also considers well-known marks and geographical indications to prevent any potential conflict or dilution.

[iii] First-to-file principle: In cases where multiple applications are filed for identical or confusingly similar marks, the principle of first-to-file is applied. The mark that is first to be filed or claims an earlier priority date will generally be granted registration, provided it meets all other requirements.

2. Are “coexistence agreements” acceptable in Vietnam?

Yes, coexistence agreements are generally permissible concerning trademarks in Vietnam; however, specific factors and legal considerations must be carefully evaluated to ensure compliance and protect the parties’ rights effectively.

Legal Basis:

No explicit provision: While Vietnam’s IP Law does not explicitly address coexistence agreements, it does not prohibit them either.
Underlying principles: The acceptance of coexistence agreements aligns with the broader principle of freedom of contract in Vietnamese law. Additionally, the practice is consistent with the recognition of “letters of consent” in trademark examination procedures, which essentially function as a limited form of coexistence agreement. In late 2020, IP VIETNAM issued a guide on the matter, Letters of Consents are only acceptable under two specific conditions:

(i) The cited mark and the pending mark are not identical as well as the list of good/services bearing those marks are not identical; and

(ii) The pending mark is relatively distinguishable from the cited mark.

Further, IP VIETNAM does not take into account the relationship between a parent company and its subsidiaries as a significant factor in the decision to accept a LoC for the registration of a later-filed trademark.

A Trademark Coexistence Agreement is a legally binding contract between two parties, typically businesses, that have similar or potentially conflicting trademarks. These agreements outline the terms and conditions under which both parties can use their respective trademarks without infringing on each other’s rights.

Practical considerations:

Not a guarantee: Coexistence agreements are not legally binding on IP VIETNAM. They may be considered during the examination process but do not guarantee that a potentially conflicting mark will be registered.
Limited scope: The effectiveness of a coexistence agreement is primarily between the parties involved. It does not prevent third parties from raising objections or oppositions based on potential confusion.
Clarity and specificity: To be effective, a coexistence agreement should be clear and specific, outlining the scope of use, geographic limitations, and any other relevant terms that differentiate the marks and minimize the likelihood of confusion.

3. Does Vietnam have a “disclaimer” practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive)?

Yes, Vietnam does have a disclaimer practice in trademark registration. Under Vietnamese trademark law, if a trademark contains an element that is not distinctive or is descriptive, the applicant may be required to disclaim any exclusive right to that element, even without an explicit disclaimer from the applicant. The decision to require a disclaimer is at the discretion of IP VIETNAM’s examiner. If a disclaimer is required, the applicant will be notified and given an opportunity to respond.

This means that while the applicant can still register the trademark as a whole, they cannot claim exclusive rights to the non-distinctive or descriptive part of the mark. The objective of this practice is to prevent the applicant from monopolizing words or symbols that may be required for use by others in the normal course of trade.

It’s important to note that even if an applicant does not explicitly disclaim any elements in their application, IP VIETNAM reserves the right to incorporate a disclaimer within the registration certificate if deemed appropriate.

VII. Refusal

1. What are the “absolute” grounds for refusal of registration in Vietnam?

“Absolute” grounds for refusal pertain to inherent characteristics of the mark that render it ineligible for trademark protection. These grounds are primarily enumerated in Article 73 of the IP Law. The following categories encapsulate the absolute grounds for refusal in Vietnam:

(i) Signs causing confusion with state symbols or official insignia

Marks identical or confusingly similar to the national flag, emblem, or anthem of Vietnam or other countries, or the Internationale song.
Marks identical or confusingly similar to emblems, flags, names, or abbreviations of Vietnamese or international state bodies, political organizations, or social organizations, without the requisite authorization.

(ii) Signs causing confusion with personal or cultural identities

Marks identical or confusingly similar to the real name, nickname, pen name, or image of Vietnamese or foreign leaders, heroes, or public figures.
Marks identical or confusingly similar to the name or image of a character or particular image from a well-known work, likely to mislead consumers regarding the origin of the goods or services.

(iii) Signs causing confusion or deception

Marks identical or confusingly similar to international certification seals, check seals, or warranty seals, unless registered as certification marks by the respective organizations.
Marks that are likely to mislead, confuse, or deceive consumers regarding the origin, features, quality, or other characteristics of the goods or services.

(iv) Signs lacking distinctiveness or functionality

Marks that consist exclusively of the inherent shape of the goods or are necessary due to the technical features of the goods.
Marks containing copies of copyrighted works, unless permitted by the copyright owner.

2. What are the “relative” grounds for refusal of registration in Vietnam?

In Vietnam, the relative grounds for refusal of trademark registration are primarily outlined in Article 74 of the IP Law. These grounds pertain to the relationship between the applied-for mark and other existing marks or signs, focusing on the potential for confusion or conflict. The relative grounds for refusal can be summarized as follows:

(i) Identical or confusingly similar to a “prior” mark:

This includes cases where the applied-for mark is identical or similar to a previously registered or applied-for mark for identical or similar goods or services that it could cause confusion among consumers.

(ii) Identical or confusingly similar to a “well-known” mark:

Even if the goods or services are not similar, a mark that is identical or similar to a well-known mark can be refused if its use could cause confusion or harm the reputation of the well-known mark.

(iii) Identical or similar to a “trade name”:

If the applied-for mark is identical or similar to a trade name already in use, and its use could cause confusion about the business entity, it can be refused.

(iv) Identical or similar to a protected geographical indication:

If the mark is identical or similar to a protected geographical indication and could mislead consumers about the origin of the goods, it can be refused.

(v) Identical or insignificantly different from a “protected industrial design”:

If the mark identical or insignificantly different from a registered industrial design, it can be refused.

(vi) Identical or confusingly similar to a “protected plant variety name”:

If the mark is used for the same or similar plant varieties or their products and is identical or similar to a protected plant variety name, it can be refused.

(vii) Identical or confusingly similar to “names” and “images” protected by copyright:

If the mark is identical or confusingly similar to names and images protected by copyright and widely known before the filing date, without the copyright owner’s permission, it can be refused.

3. What is the route of “appeal” for trademark applications in Vietnam?

If a trademark application is refused, applicants have various options to challenge such refusal via filing a response, an appeal or an administrative lawsuit. The appeal process for denied trademark applications in Vietnam involves multiple stages and authorities.

(i) First-time appeal (Internal appeal):

Upon receiving a notification of intended refusal from IP VIETNAM, applicants have 3 months to submit a response objecting to the refusal. If the response is unsuccessful, IP VIETNAM will issue a formal refusal Decision.

Applicants can file an internal appeal with IP Vietnam within 90 days of receiving the refusal decision. IP Vietnam has 30 days (extendable to 45 days for complex cases) to settle the appeal.

(ii) Second-time appeal (External appeal):

If the internal appeal is unsuccessful, applicants can appeal to the Ministry of Science and Technology (MOST), the supervising body of IP Vietnam. This must be done within 30 days from the expiration of the first-time appeal deadline or from receiving the first-time appeal decision. MOST has 45 days (extendable to 60 days for complex cases) to settle the appeal.

(iii) Initiating a lawsuit:

At any stage of the appeal process, applicants can choose to bypass the internal and external appeal procedures and directly file an administrative lawsuit against IP VIETNAM or MOST’s decision. Applicants have 1 year from the date of awareness or receipt of the relevant decision to initiate a lawsuit.

VIII. Opposition

1. On what grounds can a trademark be opposed in Vietnam?

In Vietnam, a trademark application can be opposed on several grounds:

Identical or Confusingly Similar Trademarks: If the mark is identical or confusingly similar to an earlier registered trademark for the same or similar goods/services (Article 74.2e).
Well-Known Trademarks: Opposition can be based on the existence of a well-known mark, even if that mark is not registered, provided it was well-known before the filing of the opposed application (Article 74.2i).
Trade Name Conflicts: If a trademark is similar to a trade name that has been lawfully used in Vietnam, opposition is possible if such usage is likely to confuse consumers (Article 74.2k).
Geographical Indications (GIs): Marks that could mislead consumers about the geographical origin of goods, infringing on a protected GI, can be opposed (Articles 74.2l and 74.2m).
Industrial Design Infringement: Trademarks can be opposed if they feature signs that are identical or insignificantly different from protected industrial designs filed before the trademark application (Article 74.2n).
Plant Variety Names: If a trademark is identical or confusingly similar to the names of plant varieties already protected in Vietnam, it can be opposed (Article 74.2o).
Copyright Infringement: Opposition can occur if a trademark application contains copyrighted material without authorization from the copyright owner (Article 73.7 and 74.2p).

2. What is the procedure for opposition in Vietnam?

The trademark opposition procedure in Vietnam provides a mechanism for third parties to challenge trademark applications they believe should not be registered.

Filing an Opposition:

Any third party (“Opponent”) may file an opposition to the trademark application within 5 months (03 months – under the amended 2025 IP Law) from the date of publication in the Official Gazette.
The opposition must be filed with IP VIETNAM and must be in writing, stating the grounds for opposition and supported by relevant evidence and arguments.
The opposition can be based on absolute grounds (e.g., lack of distinctiveness) or relative grounds (e.g., conflict with earlier IP rights).

Notification to the Applicant:

Upon receiving an opposition notice accompanied by relevant evidence, IP VIETNAM will issue a notice (the first notice) notifying the applicant (“Opposed Party”) of the opposition. The Opposed Party is required to provide a response within two (02) months from the notification date.
Upon considering the Opposed Party’s response, if necessary, IP VIETNAM may continue to send another notice (the second notice) to the applicant (“Opponent”. This second notice indicates that the Opposed Party has responded to the opposition and allocates a further 02-month period for the Opponent to submit a counter-response

Handling Opposition on Relative Grounds:

In case where the opposition is based on the similarity or identicalness of the applied-for mark to the Opponent’s prior mark, IP VIETNAM will integrate the handling of the opposition with the substantive examination of the application. The Opponent will be informed of the result of this combined process through a report that includes both the result of the opposition handling and the substantive examination pertinent to the opposed application. No separate notice on handling the opposition will be sent by IP VIETNAM to the Opponent.

Facilitation of Dialogue for Clarification:

If IP VIETNAM finds it necessary to clarify the content of the opposition, or upon the request made by both Parties, the office will arrange an in-person dialogue or meeting between the parties for further clarification.

Final Decision and Notification:

IP VIETNAM will make its final decision on whether to grant or refuse the trademark registration based on the existing documents/evidence and/or the outcomes of the dialogue between parties. The Opponent will be notified of this final decision, which will include the result of the opposition handling along with the substantive examination report against the opposed trademark.

3. What is the route of appeal from a decision of opposition Vietnam?

If IP VIETNAM’s opposition decision is unfavorable, parties have several options to challenge it through an appeal process involving multiple stages:

First appeal (internal): An appeal must be filed with IP VIETNAM within 90 days of receiving the decision. IP VIETNAM has 30 days (extendable to 45 days for complex cases) to resolve the appeal.
Second appeal (external): If the first appeal is unsuccessful, a further appeal can be made to the Ministry of Science and Technology (MOST) within 30 days from the date of receipt of the decision. MOST has 45 days (extendable to 60 days for complex cases) to decide.
Lawsuit: At any stage, parties may bypass the appeal process and file an administrative lawsuit against the decision of IP VIETNAM or MOST. This must be done within 1 year from the date of receipt or awareness of the relevant decision.

IX. Assignment and License

1. How many different types of trademark assignments are there in Vietnam?

In Vietnam, there are two primary types of trademark assignments:

Full assignment: In a full assignment, the trademark owner transfers all rights, title, and interest in the trademark to another party. This includes the exclusive right to use, license, and enforce the trademark for all the goods and services for which it is registered. The new owner assumes full ownership and control of the trademark.
Partial assignment: In a partial assignment, the trademark owner transfers the rights to the trademark only for specific goods or services. The original owner retains rights to the trademark for the remaining goods, services not covered by the assignment.

Both types of assignments must be registered with IP VIETNAM to be legally effective and enforceable. The assignment must be documented in writing, and the agreement should specify the details of the transfer, including the scope of rights assigned.

2. How many different types of licenses are there in Vietnam?

In Vietnam, there are three distinct types of trademark licenses:

Exclusive License: The licensor grants the licensee the sole right to use the trademark within a defined scope and for a specific duration. The licensor cannot grant licenses to other parties during this period, and they can only use the trademark themselves if permitted by the licensee.
Non-exclusive License: The licensor retains the right to use the trademark and can grant licenses to multiple licensees.
Sub-license: This occurs when a licensee, with the licensor’s permission, grants another party (the sub-licensee) the right to use the trademark.

It is not permitted to license the use of unregistered trademarks in Vietnam. The parties can freely agree upon the terms of such an agreement, provided that its terms are not restricted by law and are not contrary to public morals. The term of a trademark licence agreement must not exceed the validity of the licensed trademarks. The licensing contract must not contain provisions that unreasonably restrict the rights of the licensee. A trademark license agreement is effective as agreed by the parties even without recordal at IP VIETNAM, as previously required. The use of the mark by a licensee can be considered as the use against non-use cancellation by third parties.

The licensee may join the trademark owner in infringement proceedings. The licensee is entitled to call upon the registered proprietor to institute proceedings for trademark infringement. If the registered proprietor refuses or neglects to do so the licensee may institute proceedings for infringement in his own name, depending on the agreement between the parties.

3. Are quality control clauses necessary in a trademark license in Vietnam?

Yes, quality control clauses are highly advisable, though not explicitly mandated under Article 144 of Vietnam’s IP Law, in a trademark license agreement in Vietnam. Failing to include quality control clauses in trademark licenses can weaken the trademark owner’s control over the use of the trademark and potentially jeopardize the trademark’s distinctiveness. Quality control clauses help ensure that the licensee’s products or services meet the standards set by the licensor, thereby preserving the value and reputation of the brand associated with the trademark.

To ensure the trademark’s value and protect the owner’s rights, it is best practice to include detailed quality control provisions in the license agreement, clearly outlining the standards the licensee must adhere to and the owner’s right to monitor compliance.

X. Registration

1. From which date do trademark rights commence in Vietnam?

In Vietnam, trademark rights commence from the date of grant of the protection title, which is the Certificate of Mark Registration. This is explicitly stated in Article 93.6 of the IP Law. A certificate of registered mark shall be valid from the grant date until the end of ten (10) years after the filing date and may be renewed for many consecutive terms, each of ten (10) years.

Therefore, the filing date itself does not mark the commencement of trademark rights. It’s the subsequent grant of the registration certificate that establishes the legal protection.

2. What is the term of a trademark in Vietnam?

The term of a trademark in Vietnam is 10 years from the filing date of the application. This means the protection granted to a registered trademark lasts for 10 years, starting from the day the application was submitted to IP VIETNAM.

After the initial 10-year period expires, the trademark owner has the option to renew the registration for additional 10-year periods, and this renewal can be done indefinitely.

It’s important to remember that a renewal request must be filed within a specific timeframe:

Ideally: 6 months before the expiration date of the current registration.
Grace period: Up to 6 months after the expiration date, but with a late renewal fee.

If the trademark is not renewed within the grace period, it will lapse and become available for others to register.

Although the trademark registration can be renewed indefinitely, it is important to note that the trademark must be used in commerce to maintain its validity. In Vietnam, a trademark can be vulnerable to cancellation if it is not used continuously for 5 consecutive years after registration, unless there are valid reasons for non-use.

3. How is a trademark renewed in Vietnam?

To renew a trademark, the owner must submit a renewal application to IP VIETNAM. The renewal application can be filed up to 6 months before expiration or within a 6-month grace period afterward, though late fees apply in the latter case. The application shall comprise, inter alia, a formal request for renewal, optionally accompanied by the original trademark registration certificate, and evidence of payment of the prescribed fee.

Upon review and approval, IP VIETNAM will not issue a trademark renewal certificate. If a trademark owner submits the original trademark registration certificate for renewal, IP VIETNAM will affix a renewal note directly thereto and return it to the trademark owner upon completion of the renewal.

It’s crucial to note that continued use of the trademark is essential, as non-use for 5 consecutive years can lead to cancellation.

XI. Revocation / Cancellation

1. What are the grounds for revocation of a trademark in Vietnam?

A trademark registration in Vietnam can be “revoked” or “cancelled” under 8 grounds as provided in Article 95 of the IP Law. Cancellation deals with issues that arise after the trademark has been granted. These often involve actions or inactions of the trademark owner, such as non-use (i.e., not used for five consecutive years without justification), failure to pay renewal fees, misleading use (e.g., the use of the mark causes confusion about the nature, quality, or origin of the goods or services), or changes in circumstances that affect the mark’s validity (e.g., the mark has become a common name for the goods or services it represents), failure to control collective or certification mark use, or cessation of business activities by the owner without a legal heir.

2. What is the procedure for revocation of a trademark Vietnam?

Any interested party can file a trademark cancellation request with IP VIETNAM. The request must clearly state the grounds for cancellation and provide supporting evidence. IP VIETNAM will examine the request and send its first Notification to the trademark owner for their counterstatement or response. IP VIETNAM may also seek additional arguments/documents from the parties if necessary. IP VIETNAM will issue a decision on whether to cancel a trademark registration or reject the cancellation request, confirming validity of the trademark registration based on the provided evidence and responses from both parties. The aggrieved party can appeal the decision within 90 days from the date of awareness or receipt of the Decision or file an administrative lawsuite against the Decision within 1 year from the date of awareness or receipt of the Decision.

It’s possible to request the revocation or cancellation of a trademark for only some of the goods or services it covers. Once a trademark is revoked or canceled, it loses its protection, and the owner can no longer prevent others from using it.

3. What is the route of appeal from a decision of trademark revocation or cancellation Vietnam?

IP VIETNAM’s decision to either revoke/cancel the trademark or reject the cancellation request is appeallable. The route of appeal from a decision of trademark revocation or cancellation in Vietnam involves a two-tiered administrative process, followed by the option to escalate to the courts.

The party disagreeing with the decision must first file an appeal with IP VIETNAM within 90 days of receiving the decision. IP VIETNAM has 30 days (extendable to 45 days for complex cases) to resolve the appeal.

If unsatisfied with the first-instance decision, the party can appeal to the Minister of Science and Technology (MOST) within 30 days of knowing or receiving the first decision. MOST has 45 days (extendable to 60 days for complex cases) to decide.

At any stage, parties may bypass the appeal process and file an administrative lawsuit against the decision of IP VIETNAM or MOST. This must be done within 1 year from the date of receipt or awareness of the relevant decision.

XII. Invalidation

1. What are the grounds for invalidity of a trademark in Vietnam?

A trademark registration in Vietnam can be invalidated under 4 grounds as provided in Article 96 of the IP Law. Invalidation deals with issues that existed at the time of registration. These are typically more fundamental problems, such as bad faith applications (e.g., the applicant registered the trademark with malicious intent), lack of registrability (e.g., the applicant didn’t have the right to register the mark), non-compliance (e.g., the mark doesn’t meet the conditions for protection (e.g., lack of distinctiveness, descriptiveness)), or failure to meet procedural requirements (e.g., improper amendment). An invalidated mark is treated as if it was never valid in the first place.

2. What is the procedure for invalidation of a trademark in Vietnam?

Any interested party can file a trademark invalidation request with IP VIETNAM. The request must clearly state the grounds for invalidation and provide supporting evidence. IP VIETNAM will examine the request and send its first Notification to the trademark owner for their counterstatement or response. IP VIETNAM may also seek additional arguments/documents from the parties if necessary. IP VIETNAM will issue a decision on whether to invalidate a trademark registration or reject the invalidation request, upholding validity of the trademark registration based on the provided evidence and responses from both parties. The aggrieved party can appeal the decision within 90 days from the date of awareness or receipt of the Decision or file an administrative lawsuite against the Decision within 1 year from the date of awareness or receipt of the Decision.

It’s possible to request the invalidation of a trademark for only some of the goods or services it covers. Once a trademark is invalidated, it is treated as if it was never registered.

3. What is the route of appeal from a decision of invalidity in Vietnam?

IP VIETNAM’s decision to either invalidate the trademark or reject the invalidation request is appeallable. The route of appeal from a decision of trademark invalidation in Vietnam involves a two-tiered administrative process, followed by the option to escalate to the courts.

If unsatisfied with the first-instance decision, the party can appeal to the Minister of Science and Technology (MOST) within 30 days of knowing or receiving the first decision. MOST has 45 days (extendable to 60 days for complex cases) to decide.

XIII. Trademark Enforcement

1. What are the approaches to enforce a trademark against an infringer (administrative, civil, and criminal) in Vietnam?

Trademark enforcement in Vietnam can be pursued through administrative, civil, or criminal actions:

Administrative Measures: In Vietnam, administrative actions are commonly used to handle trademark infringements. These measures involve government agencies such as the Market Surveillance Agency, the Inspectorates of the Ministry of Science and Technology, and the police. Administrative remedies can include warnings, fines, confiscation of counterfeit goods, suspension of business activities, and destruction or forced export of infringing goods. These measures are often quicker and less costly compared to court proceedings and are suitable for clear-cut cases of infringement where immediate action is needed.
Civil Remedies: Civil litigation is another option for enforcing trademark rights. It involves filing a lawsuit in a Vietnamese court to seek remedies such as termination of the infringing act, compensation for damages, public apologies, and the destruction or alteration of infringing goods. Civil proceedings are generally used when the trademark owner seeks damages or other remedies that administrative actions cannot provide. The courts involved in civil cases include the People’s Courts at the district and provincial levels, and the Supreme People’s Court for appeals.
Criminal Prosecution: Criminal enforcement is applicable when the infringement constitutes a crime under Vietnamese law. For example, repeated or severe infringements, particularly those involving counterfeiting or significant economic harm, can lead to criminal charges. Penalties under criminal law may include substantial fines and imprisonment. The application of criminal measures typically involves cases where administrative or civil remedies are insufficient to address the severity of the infringement.

2. Are “preliminary” or “permanent” injunctions available in Vietnam, and if so, on what basis in each case?

Yes, both preliminary (temporary) and permanent injunctions are available in Vietnam to protect industrial property rights.

Preliminary injunctions

Availability: As per Article 206 of the IP Law, a rights holder can request the court to apply for a preliminary injunction during or after initiating a lawsuit.
Basis: The request is granted if: (i) There’s a risk of irreparable damage to the IP rights; (ii) There’s a risk of evidence being lost or destroyed unless protected in time.
Procedure: The court can decide on the injunction before hearing the other party, emphasizing the urgency of the situation.

Types of injunctions: Possible injunctions include: (a) Retention; (b) Seizure;(c) Sealing; prohibiting any alteration of the original state; prohibiting any movement; and (d) Prohibiting transfer of ownership.
Obligations of the petitioner for preliminary injunctions:

– Plaintiff’s obligation: The plaintiff may be required to provide security when applying for provisional emergency measures that could potentially harm the defendant. This is to ensure that the defendant can be compensated if the measures are later found to be unwarranted. The forms of security can include guarantees, cash deposits, or other valuable assets as determined by the court [Article 136 Civil Procedure Code – CPC]. In IP cases, the plaintiff must deposit a bond in the form of money (20% of the goods’ value or at least VND 20 million if valuation is impossible) or a bank/credit institution-issued guarantee [Article 208 IP Law].

– Defendant’s obligation: Defendants are generally not required to provide security. However, when filing a counterclaim, they assume a procedural position similar to a plaintiff concerning that claim. This means they may also be required to provide security if their counterclaim necessitates provisional emergency measures or if other circumstances exist where a plaintiff would typically be required to provide security [Article 72 and 146 CPC].

Cancellation: The court can cancel the injunction if it’s proven to be baseless, and may order the applicant to compensate the affected party.

Permanent Injunctions

Availability: Permanent injunctions are part of the civil remedies available to address intellectual property rights infringements, as mentioned in Article 202.
Basis: The court can issue a permanent injunction if it finds that the defendant has indeed infringed the plaintiff’s intellectual property rights.
Procedure: The injunction is typically granted as part of the final judgment in a civil lawsuit.

In essence, preliminary injunctions offer immediate protection during legal proceedings, while permanent injunctions provide long-term relief once infringement has been established.

3. What is the average time for each enforcement approach in Vietnam?

The time required for each trademark enforcement approach in Vietnam varies depending on the method used:

Administrative Enforcement: This is typically the fastest route. The process usually takes several weeks to a few months, depending on the complexity of the case and the workload of the enforcement agencies involved. Administrative actions are often preferred for clear-cut cases of infringement that require swift action, such as seizing counterfeit goods or stopping unauthorized sales.
Civil Enforcement: Civil litigation is more time-consuming than administrative actions. A case can take from six months to several years, depending on the case’s complexity, the court’s schedule, and whether any appeals are filed. Civil cases require gathering substantial evidence and often involve more detailed legal proceedings.
Criminal Enforcement: Criminal cases can also take a considerable amount of time, especially if they involve severe infringements or organized crime. The duration of criminal proceedings can vary widely, from several months to over a year, depending on the nature of the case and the legal procedures involved.

4. What grounds of defense can be raised against a trademark infringement claim in Vietnam?

In Vietnam, several defenses can be raised against a trademark infringement claim:

Invalidity of the trademark: The defendant may argue that the plaintiff’s trademark is invalid or should be revoked. This can be based on the mark failing to meet protection criteria, such as being non-distinctive, descriptive, deceptive, or conflicting with prior rights (e.g., a prior registered trademark, well-known mark, trade name, geographical indication, plant variety name, or copyrighted work). Other grounds include bad faith registration, non-use, flaws in the registration process, or violations of public order or morality.
Non-Infringement: The defendant may contend that their use of the mark does not create a likelihood of confusion among consumers regarding the origin of the goods or services. This defense often involves comparing the marks, the goods or services, and the marketing channels used by both parties.
Other Defenses:

– Fair use: The defendant’s use of the mark falls under fair use, such as using a person’s name or descriptive terms in an honest manner.

– Prior use: The defendant used the mark before the plaintiff’s registration and holds a prior use right, possibly in the form of a trade name.

– Exhaustion of rights: The plaintiff’s trademark rights have been exhausted, as the goods bearing the mark were marketed with the plaintiff’s consent and can be freely circulated.

– Statute of limitations: The defendant can argue that the plaintiff’s claim is time-barred if filed beyond the statutory limitation period.

5. What remedies are available for trademark infringement in Vietnam?

The remedies available to a trademark owner for infringement in Vietnam vary depending on the legal avenue pursued. The available remedies under the administrative, civil, and criminal avenues are as follows:

Administrative remedies: Authorities may order the forcible removal or destruction of infringing elements, including trademarks on products or packaging. The infringing goods and related materials may also be destroyed. Infringers can face business suspensions for up to three months, fines up to 500 million VND for organizations (250 million VND for individuals), and the remittance of illicit earnings. Additionally, infringers may be required to change infringing enterprise names or domain names.
Civil remedies: Trademark owners can seek court-ordered injunctions to halt infringing activities. Courts may also mandate public apologies and corrections of misinformation. Damages may be awarded based on actual losses, infringer profits, or a reasonable licensing fee, with a maximum of 500 million VND (Increased to VND 1 billion (approx. USD 38,000) when actual damages are undeterminable – under Vietnam’s 2025 amended IP Law) if damages cannot be precisely determined. The court may also order the destruction of infringing goods and materials or implement other remedies, such as asset seizure, to ensure payment.
Criminal remedies: In cases of severe infringement, particularly involving large-scale counterfeiting or significant public harm, criminal charges may lead to imprisonment. Criminal fines may also be imposed, varying according to the offense’s severity.

6. Are costs recoverable from the losing party, and if so, how are they determined and what proportion of the costs can usually be recovered in Vietnam?

Under Vietnamese law, the winning party may be entitled to recover certain costs from the losing party. However, the recovery of costs is not automatic and is subject to the court’s discretion. Generally, the following costs can be recovered:
Court fees: The losing party is typically ordered to reimburse the winning party for the court fees paid.
Attorney fees: The prevailing party is generally entitled to recover reasonable legal fees from the losing party. The court determines the reasonableness of these fees based on objective evidence like contracts and invoices, without considering the parties’ conduct or settlement offers.
Other costs: Costs for expert witnesses, translation, and other necessary expenses may be recoverable, again subject to the court’s discretion and evidence that these costs were necessary and reasonable.

XIV. Customs

1. Is there a mechanism for seizing or preventing the importation of infringing goods or services at the border by Customs in Vietnam?

Yes, Vietnam has a mechanism for seizing or preventing the importation of infringing goods at the border. Customs authorities in Vietnam can act to stop goods that infringe upon registered intellectual property (IP) rights, including trademarks, at the point of import. This process is known as customs seizure or border control. It involves the identification and confiscation of counterfeit or infringing goods to prevent them from entering the Vietnamese market.

2. If so, what are the requirements to initiate such Customs protection in Vietnam?

To secure customs protection in Vietnam, the intellectual property rights holder should undertake the recordal of their rights with the Vietnamese Customs authorities. The necessary documents include:

A notarized and legalized Power of Attorney.
A certified copy of the IP protection title in Vietnam.
Photos of genuine and counterfeit products (if available).
A comparison chart between genuine and counterfeit products.
A list of authorized importers/exporters.
An assessment on IP infringement issued by a state body in Vietnam (if available).

The customs recordal will be valid for 2 years with a possibility of renewal for another 2 years. Renewal request must be filed at least 20 days prior to the expiry day of customs recordal. When detecting signs of IP infringement in a consignment, Customs will stop the customs procedures and send a notice on suspected infringing goods to the right holders.

Within 3 working days from the date of receipt of the notice on suspected infringing goods, the right holders must submit a request on suspension of customs and a bond in the form of money or a deed of guarantee issued by a bank/ credit institution. The amount must be equal to 20% of the value of the suspended consignment, or minimum VND 20 million in case the consignment’s value is unidentifiable.

3. What is the procedure for Customs protection in Vietnam?

The procedure for Customs protection in Vietnam is a multi-step process that that IP rights holders and Customs officials must follow to prevent the import or export of counterfeit goods. The process includes the following steps:

(i) Filing a customs recordal application:

The trademark owner files a customs recordal with the General Department of Vietnam Customs (GDVC). This recordal, which is valid for two (02) years and can be renewed for another 2 years.

(ii) Suspension of customs procedures:

If Customs officials suspect IP infringement during their inspections, they will suspend customs procedures for the goods in question and notify the rights holder. The rights holder then has three (03) working days to submit a formal request for suspension along with a bond, which acts as a guarantee against potential losses if the suspension is later found to be unwarranted. The bond amount is usually 20% of the value of the suspended goods or a minimum of VND 20 million. Upon receiving the request and bond, Customs will issue a decision to suspend the goods within two (02) hours. The suspension period is typically ten (10) working days but can be extended for up to 20 working days with an additional security if further assessment or technical opinions are needed.

(iii) Next steps after suspension:

Court action: If the rights holder initiates a lawsuit within the suspension period, customs procedures remain suspended pending the outcome.
Administrative action: If the goods are confirmed to be infringing, Customs will issue a decision to detain the goods and initiate administrative procedures to handle the violation. This may involve imposing sanctions on the importer or exporter
No action: If neither the rights holder nor customs takes action within the suspension period, customs must release the goods and may require the rights holder to compensate the importer/exporter for damages caused by the suspension.

(iv) Other critical notes:

If customs suspends procedures, they must provide the rights holder with details about the shipment (exporter, importer, goods description, etc.) within 30 days.
Examination and assessment: During the suspension period, the suspected goods undergo a thorough examination. Customs officials may conduct their own investigation and analysis, request expert assessments, consult with state management agencies on intellectual property, or seek the rights holder’s assistance in identifying counterfeit characteristics and providing genuine samples for comparison.
No infringement: If the goods are found to be non-infringing, Customs will release the goods and resume normal customs procedures. The bond provided by the rights holder will be returned. However, the rights holder may still be liable for other fees and expenses incurred due to the wrongful suspension.
Customs competence: Customs authorities in Vietnam can inspect and monitor goods to identify potential This can be done at the request of rights holders or proactively by customs officials. They have the power to act ex officio. Customs officials can initiate inspections and investigations on their own accord if they suspect that goods may be infringing on intellectual property rights, even without a formal complaint or customs recordal from a rights holder. However, a prior a prior customs recordal facilitates more efficient and effective border control measures, enabling customs officials to better identify and detain potentially infringing goods.

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