KENFOX IP & Law Office > Our Practice  > Vietnam  > IP Practice  > Related Matters in Vietnam  > Important notes on International Application designating Vietnam

Important notes on International Application designating Vietnam

No.

NotesRequirements

Information about IP Office of Vietnam

Methods of filing international application

Paper (hard copy)

The IP Office of Vietnam also requires use of a national form.

Filing language

English or French

Handling fee. Option to pay Madrid System fees through Office

VND 1500000.

The IP Office of Vietnam collects and forwards fees to WIPO.

Information about members you are designating

When Designating

Types of trademarks that can be protected

All types of trademarks except color marks, “smell” (scent) marks, “sound” marks, and guarantee marks.

Requirements for representation of mark

The IP Office of Vietnam requires a description of the mark.

Additional requirements for protection of collective, certification and guarantee marks

 

 

Protection of collective marks:

  • Holders are must provide regulations governing the use of a collective mark as soon as possible.
  • Providing a summary of regulations governing the use of a collective mark is not considered sufficient.
  • Regulations must be submitted in Vietnamese.
  • Holders must provide explanations of particular characteristics and the quality of the product bearing the mark (if the to-be-registered mark is a collective mark used for a product with unique characteristics).

Protection of certification marks: Holders must provide:

  • regulations governing use of the mark,
  • explanation of particular characteristics and the quality of the product bearing the mark (if the to-be-registered mark is a mark for certification of the quality of a product or for certification of geographical origin),
  • map showing the indicated territory (if the to-be-registered mark is a mark for certification of the geographical origin of a product).

Protection of guarantee marks: guarantee marks cannot be protected.

Information on classification practices

The IP Office of Vietnam applies current version of Nice Classification. The IP Office of Vietnam does not accept Nice Classification Class Headings. The IP Office of Vietnam  does not accept individual terms in Nice Classification Class Headings.

Information on databases of acceptable terms for classification of goods & services

There is no publicly available database/information on acceptable terms for goods and services.

Requirement of intention to use, and form in which such intention must be submitted (where applicable)

The IP Office of Vietnam does not require intention to use.

Requirement to provide description of mark containing non-standard characters

No information is provided by the IP Office of Vietnam.

Specific requirements to protect mark via the Madrid System

None

Applicable fees

The Office charges individual fees. Please check WIPO fee calculator.

Language in which Office issues notifications

English or French

Examination before the IP Office of Vietnam

Order of examination for provisional refusals

The Office examines on absolute and relative grounds. The Office conducts the ex officio examination and the opposition procedure in parallel.

Provisional Refusals (ex officio)

Grounds for refusing protection (ex officio)

 

The Office examines international registrations on absolute and relative grounds:

  • List of absolute grounds for refusing protection: Articles 73, 74.2 a, b, c, d, đ, 73.3, 73.5 of the Law on Intellectual Property;
  • List of relative grounds for refusing protection: Articles 90.2, 74.2 e, g, h, i, k, l, m, n of the Law on Intellectual Property.

Time limit to issue provisional refusal

12 months

Method of communicating ex officio provisional refusal to WIPO

Email (PDF format)

Partial ex officio provisional refusals

 

Partial provisional refusals (i.e., refusal of some of the goods and services in the international registration) can be issued.

Time limit to respond to ex officio provisional refusal

3 months from the sending date of the Notification on provisional refusal to the WIPO

Calculation of time limit to respond to ex officio provisional refusal

No information is provided by the IP Office of Vietnam.

Option to extend time limit to respond to ex officio provisional refusal. Requirements for extension of time limit

Requests to extend the time limit can be submitted by letter. The holder must appoint a local representative to submit the request. Requests are subject to the payment of fees.

Authority to which response to ex officio provisional refusal should be addressed

The IP Office of Vietnam

(Formerly, National Office of Intellectual Property (“NOIP”))

Requirements for responding to ex officio provisional refusal

 

Holders must appoint a local representative to respond to a provisional refusal. Information about local representatives can be obtained from the Office. The response is not subject to the payment of fees.

Option to review or appeal ex officio provisional refusal

After submitting a response to a provisional refusal, holders can request a review/appeal of the provisional refusal by the Office.

Oppositions

Grounds for opposition

Absolute and relative grounds

Time limit to issue provisional refusal based on opposition

12 months

Publication of international registrations for opposition purposes

The IP Office of Vietnam does not republish international registrations for opposition purposes.

Time limit to file opposition

 

Oppositions can be filed starting on the date of publication in the WIPO Gazette until the day prior to the issuance of a decision on the grant of protection.

Calculation of time limit to file opposition

The time limit begins on the date WIPO publishes the international registration.

Extension of time limit to file opposition. Requirements for extension of time limit

Requests to extend the time limit can be submitted by letter. The holder must appoint a local representative to submit the request. Requests are subject to the payment of fees.

Authority to which an opposition can be filed

The IP Office of Vietnam

(Formerly, National Office of Intellectual Property (“NOIP”))

Eligibility to file opposition

Oppositions can be submitted by any interested person

Requirements to file opposition

 

A Vietnamese IP firm qualified to practice before IP Office of Vietnam must be appointed. Oppositions must be submitted in Vietnamese. Opposition is subject to the payment of fees. Opposition must include evidence (if available).

Method of communicating provisional refusal based on opposition to WIPO

No information is provided by the IP Office of Vietnam

Time limit for holder to respond to opposition

No information is provided by the IP Office of Vietnam.

Calculation of time limit to respond to provisional refusal based on opposition

No information is provided by the IP Office of Vietnam.

Extension of time limit to respond to a provisional refusal based on an opposition. Requirements for extension of time limit

No information is provided by the IP Office of Vietnam.

 

Authority to which a response to a provisional refusal based on opposition should be addressed

No information is provided by the IP Office of Vietnam.

Requirements for holder to respond to provisional refusal based on opposition

Holders must appoint a Vietnamese IP firm qualified to practice before IP Office of Vietnam to respond to a provisional refusal.

Option to review or appeal provisional refusal based on opposition

After submitting a response to a provisional refusal, holders can request a review/appeal of the provisional refusal by the IP Office of Vietnam.

Third Party Observations

Admissibility of third party observations

Third party observations are admissible.

Authority to which third party observations can be submitted

 

The IP Office of Vietnam

(Formerly, National Office of Intellectual Property (“NOIP”))

Eligibility to submit third party observations

Third party observations can be submitted by any interested person.

Requirements for submitting third party observations

Local representation is required in order to submit third party observations. Observations must be submitted in Vietnamese.

Grounds for third party observations

Absolute and relative grounds

Legal effect of third party observations

No legal effect

Interim Status

Communication of interim status of mark

 

The IP Office of Vietnam does not notify WIPO of the interim status of the mark under Rule 18bis of the Common Regulations (notification that the ex officio examination has been completed, but that protection of the mark is still subject to opposition or observations by third parties).

After Protection is Granted

Form of communicating grant of protection to WIPO

 

The IP Office of Vietnam sends WIPO a list of international registrations that have been granted protection during a specific period.

Issuance of certificate after grant of protection

No certificate is issued by the IP Office of Vietnam.

Requirements for actual use of mark

None

Invalidations

Authority to pronounce invalidation

The IP Office of Vietnam

(Formerly, National Office of Intellectual Property (“NOIP”))

 

Grounds for invalidation

 

 

List of grounds for invalidations:

  • The applicant for registration neither had nor has been assigned the right to register the mark,
  • The mark failed to satisfy the protection conditions at the time the protection title was granted.

Eligibility to request invalidation

Invalidations can be requested by any interested person.

Requirements for invalidation procedures

 

A Vietnamese IP firm qualified to practice before IP Office of Vietnam must be appointed in invalidation procedures.

Time limit to request invalidation: 5 years from grant of protection, except in cases where the protection was granted as a result of the applicant’s dishonesty/bad-faith.

Procedures concerning invalidations (option to challenge invalidation decision)

Decisions can be appealed to the Minister of  Science and Technology within 30 days from the date of receipt or aware of the IP Office of Vietnam’s decision or Court within 1 year from the date of receipt or aware of the appeal decision

Transformation

Requirements to request transformation

 

A request for transformation must be submitted using the official form. A representative is required. The form must be submitted in Vietnamese. Submission of a form is subject to the payment of fees.

Office procedure following request for transformation

 

The IP Office of Vietnam re-opens examination on formalities, absolute grounds and relative grounds after the request for transformation.

The IP Office of Vietnam publishes:

  •     formality examination in Publication A,
  •     substantive examination in Publication B.