Registering Composite Marks in Vietnam: What Legal Risks to Consider Under the 2022 IP Law?

“One application – a “composite” trademark – cost-effective”. This is a common belief among many trademark owners when opting to file a trademark that combines both figurative elements (logo) and word elements (word mark). Instead of filing two separate applications – one for the logo and one for the word mark – they consolidate both into a single trademark specimen to reduce filing, examination, publication, and renewal costs.

However, what appears to be a reasonable and economical approach actually contains serious legal risks that may significantly impair the applicant’s rights, especially in light of Vietnam’s legislative changes following the 2022 amendment to the Law on Intellectual Property (IP Law).

KENFOX IP & Law Office offers in-depth analysis of the legal landscape before and after the 2022 amendments, focusing in particular on changes to the examination procedure and the ability to amend trademark applications. Our insights aim to help trademark owners identify, assess, and mitigate legal risks effectively while ensuring maximum protection of their intellectual property assets when selecting a trademark filing strategy in Vietnam.

Legal Landscape Before and After the 2022 IP Law Amendments

Prior to the entry into force of the amended IP Law in 2022, the Vietnamese IP Office (IPVN) had a relatively flexible practice regarding the examination of combined trademark applications. Specifically, in cases where a combined trademark (e.g., “VINCO + Logo”) was partially refused – such as the word element “VINCO” being deemed non-distinctive or confusingly similar to a prior trademark like “VINCOM” – the applicant had the opportunity to amend the application by removing the refused element. Upon request, the IPVN might allow the applicant to delete the problematic element (e.g., the word “VINCO”) and proceed with registration of the remaining logo element.

Partial Refusal Could Now Mean Total Rejection

However, the 2022 amendments to the IP Law introduced significant changes that directly impact this procedure. The law recognizes the applicant’s right to amend a trademark application, including by removing certain elements, but such amendments must meet specific conditions.

Article 115 – Amendment, Supplementation, Division, and Conversion of Industrial Property Applications

Clause 1 provides: “Before the state management authority on industrial property rights issues a notice of refusal to grant protection or a decision to grant protection, the applicant shall have the right to: (a) Amend or supplement the application” This confirms the applicant’s right to amend or supplement the application during the pre-decision stage.
Clause 3 provides: “Amendments or supplements to an industrial property application must not expand the scope of the disclosed or claimed subject matter, nor alter the nature of the subject matter of the registration, and must ensure the unity of the application.” This clause is the key legal restriction. An amendment that alters the essential nature of the trademark is prohibited.

Case Study – Refusal Despite Amendment Request

In practice, even where only the word element was refused and the logo remained unchallenged, the IPVN has rejected the entire trademark, finding that removing the refused part would alter the trademark’s inherent nature.

Legal Risks for Trademark Applicants

The legal and procedural changes described above pose serious risks for applicants of combined trademarks:

Risk of Losing Entire Trademark Rights

This is the most significant risk. If any component of the combined mark – either the logo or the word – is deemed unregistrable (e.g., due to similarity with an earlier mark), the entire application may be refused. Since amendments that remove a confusingly similar element may be considered as altering the trademark’s nature, the applicant no longer has the opportunity to salvage the remaining part, as was previously possible.

Risk of Losing Priority Rights and Registration Opportunities

The danger does not end with the initial refusal. If a combined trademark application is rejected and the applicant fails to file a successful appeal, they may choose to re-file a new application covering only the uncontested element (e.g., the word mark “Global Connect”). However, a third party could preemptively file for the same mark in the meantime.

Under Vietnam’s first-to-file principle, the third party’s earlier filing would take priority – even if the original applicant was the creator and long-time user of “Global Connect”. A refused combined mark cannot serve as a basis to claim priority for its individual elements in a subsequent application. As such, a delay in re-filing could result in permanent loss of rights to a core brand asset.

Strategic Recommendations for Businesses

The optimal measure aimed at minimizing legal risks is to undertake separate registration procedures for the figurative element (logo) and the verbal element (word mark) by filing independent trademark applications. Although this approach may lead to an increase in initial costs associated with application filing and future maintenance fees for the protection titles, the accrued benefits in terms of optimizing the scope of protection and enhancing risk management effectiveness are assessed to be superior and strategically significant. Specifically:

Stronger, Independent Protection: Each element is independently protected. If one is refused, the other can still be registered.
Flexible Enforcement: The trademark owner can take enforcement action based on the word mark, the logo, or both, depending on the nature of the infringement.
Easier Licensing and Assignment: Separate registrations simplify management, assignment, or licensing of individual elements.
Strategic Evaluation: Businesses should assess which element (logo or word) plays the dominant role in brand recognition. Where budget constraints exist, priority should be given to the more distinctive or commercially valuable element. However, this should be a temporary solution, not a long-term strategy.

Final thoughts

The 2022 amendments to Vietnam’s IP Law, along with evolving examination practices, have substantially increased the legal risks associated with registering combined logo and word trademarks. Businesses must fully understand these risks and adjust their strategies accordingly.

Although registering each element separately may incur higher upfront costs, it is a prudent and legally sound approach that ensures robust, long-term trademark protection. It shields businesses from avoidable legal pitfalls and secures their valuable intellectual property assets in a competitive marketplace.

A wise registration strategy is not one that merely saves cost in the short term, but one that ensures sustainable and enforceable protection in the long run.

QUAN, Nguyen Vu | Partner, IP Attorney

PHAN, Do Thi | Special Counsel

HONG, Hoang Thi Tuyet | Senior Trademark Attorney