Trademark basics in Vietnam, what should you know?
1. We have registered our trademark in some ASEAN countries, is it valid in Vietnam? Do we need to register our trademark in Vietnam?
Your trademark registration in some ASEAN countries does not provide protection in Vietnam. Generally, trademarks are territorial in nature, which means that a trademark registration in one or several countries are not automatically protected and enforceable in another, and therefore registrations in multiple countries may be necessary.
An international registration system is available under the Madrid Protocol through the World Intellectual Property Organization (“WIPO”). Vietnam and the Member States of some ASEAN countries are parties to the Madrid Protocol and Madrid Agreement (“Madrid System”). Under the Madrid System, the application for extension to Vietnam can be predicated on a trademark application or a trademark registration. To own a trademark in Vietnam, you need to register with the Intellectual Property of Vietnam (IP Vietnam, formerly known as NOIP).
Please be mindful that Vietnam operates a first-to-file system, meaning that meaning that the first person to file an IP right in the Vietnamese jurisdiction will own that right once the application is granted.
2. How do we register a trademark in Vietnam?
The application in Vietnamese must be signed by the applicant or his representative. Individuals and corporate entities/registered organizations may apply for the registration of a trademark.
Foreigners and non-residents can apply to register trademarks, but they must be represented by a duly authorized local agent in Vietnam to whom notice or process for judicial or administrative procedure relating to the application or the registration may be served.
The receipt seal with the name of receiving office (i.e. IP Vietnam), filing date and application is assigned to an application upon receipt by the IP Vietnam of the filing fee and the following:
- Full name, address and nationality of the applicant;
- Description of the trademark: meaning, colors claimed, translation or transliteration of characters into English if the mark contains foreign characters;
- List of goods/services to be covered by the trademark and if possible, the class(es) of the respective goods/services according to the International Classification (if known);
- If a priority is claimed: statement of country, application number and filing date of the original foreign application from which the priority is claimed
- Power of Attorney (“PoA”) from the applicant (notarization is not required). A copy of the executed PoA can be accepted at the time of filing trademark application, but the original one must be submitted within 30 days from the filing date
- 15 specimens of the mark (the size of each specimen is not smaller than 15mm x 15mm and not larger than 80mm x 80mm);
- If the Convention priority is claimed: a certified copy of the priority document(s) and the English translation thereof.
Applications must be physically filed with the IP Vietnam. Online filing is an option, but is available only to entities that have accounts with designated local banks.
3. How much will it cost to register a trademark in Vietnam?
The cost for domestic registration with the Intellectual Property of Vietnam (IP Vietnam) is VND 1,000,000 (approx. USD 50, excluding lawyer fees) for one class, covering up to 6 items of goods/services. An extra USD 11 is charged per additional item. The basic filing fee for trademark registration by a trademark agent/law firm in Vietnam is about VND 350-450 and upwards, depending on the service provider you use.
4. Can we work on the registration ourselves or do we need to hire a lawyer? Where can we find a local trademark agent in Vietnam?
Foreign applicants without residence or place of business in Vietnam are required to submit trademark applications to the IP Vietnam through a local Vietnamese trademark agent. Registrations must be made in Vietnamese. The IP Vietnam has an online database system which includes all recorded trademark agents at http://ipvietnam.gov.vn/.
5. How to adapt our trademark to the Vietnamese market? Should we register our original trademark or its Vietnamese translation?
A trademark can be registered in Vietnam in various languages and variants. To better protect your trademark from infringement in Vietnam, it is highly recommended to register your trademark in three versions (i) in original language (Latin letters); (ii) in Vietnamese characters; and (iii) the symbol or logo. Of note, the applicant is required to file separate trademark applications to register different variants of the same trademark. Since the registration of a trademark in Roman characters does not automatically protect the trademark against the use or registration of the same/similar trademark written in Vietnamese, it is highly advisable to register a Vietnamese variant of a foreign trademark. Moreover, if in the absence of Vietnamese character name for a foreign brand, it is highly likely that one will be adopted by local consumers either by way of translation or by transliteration, and not necessarily with the right connotations or image that the foreign company would wish to convey. You are, thus, advised to consider the following:
- A literal translation works when the trademark has a distinctive meaning. The downside of this approach is that it sounds different from the original trademark. This means that marketing time and money will need to be additionally spent on building the association between the Roman character trademark and the Vietnamese character trademark.
- A phonetic translation involves creating a Vietnamese character name that sounds like the original trademark.
6. How can we protect the outward appearance of our product in Vietnam?
In Vietnam, the exterior appearance of your products can be protected in Vietnam as industrial designs or trademarks and/or work of applied-art, subject to specific facts and details pertaining to such products. An outer/external packaging of a product can be registered as (i) a trademark or (ii) industrial design and/or (iii) work of applied-art in Vietnam. An industrial design shall be new or original creation related to the ornamental features of shape, configuration, form, or combination thereof, of an article of manufacture, whether or not associated with lines, patterns or colors, which impart an aesthetic and pleasing appearance to the article. Original ornamental designs or models for articles of manufacture, whether or not they can be registered as an industrial design, are also copyrightable. Thus, an original ornamental work may therefore be protected both under an industrial design registration and under copyright.
7. Should we register copyright in Vietnam?
In Vietnam, works are protected by copyright from the moment of their creation, irrespective of their mode or form of expression, content, quality and purpose. However, registration of copyright is still required in order to establish the rights of the owner for purposes of seeking remedies against the copyright infringers.
The author or creator of the work, his heirs, or assignee may apply in person or through a duly authorized representative. Foreigners are permitted to apply for registration but non-resident applicants must be represented by a duly authorized resident agent to whom notice or process for judicial or administrative procedure relating to the application or the registration may be served. You may, as the owner, file an application for a certificate of registration (in Vietnamese) and deposit copies of the work or works with the Copyright Office of Vietnam, submitting the followings:
- Applicant: full name, address and nationality;
- Author: full name, pseudonym (if any), nationality, date of birth, address;
- Date on which the works was created;
- Title, type, date, place of the first publication of the works (if any);
- Brief description of the works;
- Notarized and legalized Power of Attorney from the applicant (with full name and function of the signatory in case of legal entity);
- Copy of the works, fixed or represented in a certain form;
- Notarized and legalized Deed of Assignment from the author to the applicant, or certified document proving the right to apply (e. g. a certified copy of a labor contract), if the applicant is not the author;
- Documents attesting to legal existence and business activities (if the applicant is an entity);
- Undertaking of the author stating that he is the author/designer of the applied work.
The typical cost of Copyright registration in Vietnam is between USD 350 to 550 (including official costs of about US$ 20).
8. Is there any protection for non-registered trademarks in Vietnam?
Registered trademarks enjoy statutory protection under the Vietnam IP Law and its by-law documents and the registered proprietor has certain remedies available to him in the event that his trademark is infringed.
In absence of a registration under the Vietnam IP Law, a mark which is used by a trader in the course of his trade may still be protected under the unfair competition legislation. The IP Law and its by-law documents essentially prevent other traders from unfairly riding on the reputation and success that has been built for a trademark of others.
Chance of success in an unfair competition will depend on three factors which need to be proved:
that you have made prior use of a commercial indication (g. unregistered trademark) in a wide and stable manner in its lawful business activities in Vietnam and established good reputation for the commercial indication (e.g. unregistered trademark) within Vietnam;
- that the alleged infringer has made a misrepresentation to the public that his goods/ services are in some way associated or connected with you.
- as a result, you have suffered damage to your brand’s reputation.
Given that no rights have been conferred through registration procedures, Vietnamese enforcement authorities are quite hesitant to deal with an alleged unfair competition case.
9. How long does the trademark registration process take?
The registration examination done by IP Vietnam takes up to 16-18 months or even more, meanwhile, under the laws, it takes just 12 months.
10. We have found counterfeits of our product in Vietnam. What can we do now?
Enforcement through Courts or the administrative authorities (e.g. Market Management offices, Police, Inspectorates of Science & Technology) are both possible. Accordingly, there are 03 main avenues of enforcement you can consider, namely, administrative actions, civil litigation and criminal prosecution. In many cases, however, private mediation via legal professionals is more effective and should be considered as a viable option, particularly for those trademark owners facing budget constraints
- Administrative measures in Vietnam are generally seen relatively fast and cost effective, but only issues confiscation and destruction orders, and fines.
- Civil litigation is rarely used in Vietnam due the obstacles in proving actual damages caused by acts of infringement, the lack of a formal discovery process, and the delays in prosecuting the case. There is also a lack of proper IP training and human resources within the judicial system, meaning that case outcomes can be somewhat unpredictable.
- Criminal prosecutions are usually considered as the most cost-effective enforcement route available to IP right holders in Vietnam. The judges, however, are reluctant to impose harsh penalties on infringers, especially for first-time and minor offenders. This results in light penalties which often do not act as a deterrent to infringers
The question of the most appropriate enforcement method depends on the specific case and claims. All types of enforcement actions can be combined to achieve optimal results – an administrative raid can be followed by a civil litigation and a negotiation can be ‘stimulated’ by the threat of a criminal action.
11. Our trademark has already been maliciously registered in Vietnam. What can we do now?
It is possible to acquire a registered trademark under certain circumstances, depending on each particular case.
You may try to buy back the trademark and negotiate a price with the current owner. It is recommended that you use an intermediary for the negotiations and have a thorough assessment of the adequate price.
In case the trademark was registered in “bad-faith”: Bad-faith registrations exist where a third party which is not the legitimate owner of the trademark registers the mark first in Vietnam, thereby preventing the legitimate owner from registering it. Trademark piracy due to bad-faith registration is a serious and common problem in Vietnam. Many bad-faith registrations are filed even by the authorized distributors contracted by the trademark owner. In such regard, you can file a request for cancellation of the registration (or file an opposition before registration) in the case that you are able to prove that the registered owner had a previous contractual or business relationship (or any other relationship) with you and thereby knows of the existence of your prior mark and is therefore in bad faith.
The following tips should be taken into account:
(i) Conducting a trademark search as soon as possible to check the actual status of the trademark registration and when it has been filed;
(ii) Collecting all email exchanges and any other relevant documentation proving the existence of previous business relationship between your company and the bad-faith registrant as well as all recent communications;
(iii) Entrusting a specialized lawyer in Vietnam to request the cancellation of the trademark acquired in bad faith.
(iv) If a cancellation request has already been filed, it is advisable to negotiate the purchase of the trademark at a low price. If the asked price would be still too high, you may decide to wait until the cancellation procedure is accomplished, but in the meanwhile, you shall refrain from importing your products into Vietnam to avoid potential problems with customs or other actions to be taken by the bad-faith registrant.
Another noteworthy requirement pertaining to trademark rights is the obligation to use the trademark after a certain period following registration. In Vietnam, this period is 5 years. If the owner fails to use his/her registered trademark in Vietnam within 5 years after registration, any third party is entitled to initiate a cancellation action against such registered trademark due to non-use.