KENFOX IP & Law Office > Trademark registration and protection in Vietnam

Trademark registration and protection in Vietnam

 

1. Legislation

 

(1). Law No. 50/2005 of 29 November 2005 on Intellectual Property, amended and supplemented in 2009 (Vietnam IP Law).

(2). Decree No. 103/2006/ND-CP dated 22 September 2006 detailing and guiding the implementation of a Number of Articles of Vietnam IP Law regarding Industrial Property, supplemented and revised by Decree 122/2010/ND-CP.

(3). Decree No. 105/2006/ND-CP dated 22 September 2006 on detailing and guiding the implementation of a number of articles of the IP Law on protection of IPRs and State management of IP, amended and supplemented by Decree 199/2010/ND-CP.

(4). Circular No. 01/2007/TT-BKHCN of 14 February 2007, guiding the implementation of Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding the Implementation of a Number of Articles of Vietnam IP Law regarding Industrial Property.

(5).  Circular No. 16/2016/TT-BKHCN of June 30, 2016, amending and supplementing a number of Articles of Circular No. 01/2007/TT-BKHCN of 14 February 2007.

(6). Decree No. 99/2013/ND-CP of 29 August 2010 on sanctioning of administrative violations in industrial property.

(7). Circular No. 11/2015/TT-BKHCN June 26, 2015, detailing and guiding a number of articles of Decree No. 99/2013/ND-CP on sanctioning of administrative violation in the field of industrial property.

(8). Law No. 105/2016/QH13 dated 06 April 2016 on Pharmacy (Law on Pharmacy 2016)

2. Trademark in Vietnam – basic things to know

 

A trademark, as provided under Article 4.16, Vietnam IP Law, is defined as a sign used to distinguish goods or services of different organizations or individuals. Trademarks under the laws of Vietnam can be categorized in five types as follows:

(i). Trademark including service mark means any sign used to distinguish goods and/or services of different organizations or individuals (Article 4.16, Vietnam IP Law).

(ii). Collective mark means a mark used to distinguish goods and/or services of members from those of non-members of an organization which is the owner of such mark (Article 4.17, Vietnam IP Law)..

(iii). Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods and/or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods and/or services bearing the mark (Article 4.18, Vietnam IP Law).

(iv). Associated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated (Article 4.19, Vietnam IP Law).

(v). Well-known mark: means a mark widely known by consumers throughout the Vietnamese territory (Article 4.20, Vietnam IP Law).

For trademarks to be eligible for protection in Vietnam, they must meet the following requirements:

(i). To be visible signs in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours, and

(ii). To be capable of distinguishing goods or services of the mark owner from those of other subjects as provided under Article 72, Vietnam IP Law. A mark is distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination. Three-dimensional signs (shapes) can be registered as trademarks under the laws and practice in Vietnam.

Thus, the unconventional trademarks based on sound and smell which are not visible are not yet recognised.

Trademark rights are established on ground of a decision issued by the IP Office of Vietnam on trademark registration or protection in Vietnam (with an exception of well-known trademarks where trademark rights can be established on use) as provided per Article 6.3(a) of the IP Law 2005. Vietnam’s trademark regime operates on a first-to-file basis, protection for unregistered trademarks is only granted in limited cases (e.g. an unregistered trademark in Vietnam is enforceable when (i) it is recognized as a well-known mark in Vietnam under Article 4.20 and Article 75 of the IP Law of Vietnam or (ii) it is falls within the scope of “unfair competition” under Article 130 of the IP Law of Vietnam).

3. Establishment of industrial property rights to trademarks in Vietnam

 

3.1. Right to register trademark in Vietnam

 

In general, an entity or individual shall be entitled to file an application for a trademark to be used for the goods or services produced or supplied by such entity or individual. Vietnam adopts the first-to-file principle, which grants exclusive trademark rights to the first party that applies for registration of the mark.

An entity or individual legally engaged in the trade of a product manufactured by a third party shall be entitled to file an application for a mark to be used for such product, provided that the manufacturer neither uses such mark for the product nor objects to such filing. This right-to-file principle serves as a ground for initiating a trademark opposition and/or trademark cancellation in Vietnam in case a third party files or registers a trademark of a legitimate owner on bad faith.

 

3.2 Methods of filing an application for registration of establishment of industrial property rights to inventions

 

Trademark can be protected in Vietnam by filing an application for registration directly with the IP Office of Vietnam or by filing an International Application under Madrid system.

The application for a mark registration must be filed directly or by mail, to the IP Office of Vietnam or its brand offices in Ho Chi Minh City or Da Nang:

 

INTELLECTUAL PROPERTY OFFICE OF VIETNAM (“IP Office of Vietnam”)

384-386 Nguyen Trai Street, Thanh Xuan District, Hanoi

Tel: 84 24 3858 30 69 / +84 24 3558 82 17

 

IP Office of Vietnam’s Branch Office in Ho Chi Minh City.

Address: 27B Nguyen Thong Str, Ward 7, District 3, Ho Chi Minh City, Vietnam

Tel: 84.28. 39322714, 39322715 Fax: 84.28. 39322716

E-mail: noipvp2@hcm.fpt.vn

 

IP Office of Vietnam’s Branch Office in Da Nang City

Address: 3rd Floor, No. 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang City, Vietnam;

Tel: 84-236 3889955         Tel: 84 236 3889977

Foreign applicants can obtain a mark registration in Viet Nam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Viet Nam through the Madrid Agreement or the Madrid Protocol or both of them.

 

3.3. First-to-file principle

 

Vietnam operates under a ‘first-to-file’ system. Hence, it is important to register trademarks in Vietnam as early as possible. In such respect, monopoly trademark-based rights are conferred to the person who is the first to file a trademark application for registration thereof. If there are 2 or more applications for registration of the same mark, for the same goods and/or services, under the same priority conditions, all of the applicants are required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused. In addition, in case there are several applications filed by the same person for identical trademarks for identical goods/services, a trademark registration may only be granted for a trademark claimed in a valid application having the earliest date of priority or filing date among the applications that satisfy all the conditions for registration.

 

3.4. Priority principle

 

Per Article 90 of Vietnam IP Law, trademark applicants for subsequent trademark application are allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or such a member country.

As Vietnam is party to the Paris Convention for the Protection of Industrial Property (“Paris Convention”), applicants for trademark registration are entitled to a ‘right of priority’ if the same filing has been made within the last six (6) months in any other country which is also a party to the Paris Convention.

For trademark filing in Vietnam to claim priority based on Paris Convention, the applicant is required to submit a certified copy of priority document for claiming priority right under the Paris Convention (if any) (priority data are acceptable at filing, provided that the certified copy is submitted within 3 months from the filing date).

3.5. Trademark filing in Vietnam: Fees and requirements

 

3.5.1. Trademark filing fees in Vietnam

Official trademark related fees in Vietnam:

Trademark filing fees in Vietnam depend of the number of goods/service in each Class (i.e. in Vietnam, if the list of goods/services exceeds 6 goods/services, for each additional goods from the 7th one, further fee of US$ 11 will incur).

+ For a single-class application (assuming there are 06 goods/services in one class in one application), the total fees for filing stage are US$ 201.60. If the mark matures into registration, the total fees for obtaining Trademark Registration Certificate and forwarding it to the client are US$ 130.20. Thus, the total fees (from filing to granting a Trademark Registration Certificate) for one trademark application for one class within 06 goods/services are 331.80.

+ For each further class from the 2nd one (assuming there are 06 goods/services in each additional class), the filing fee is US$ 122.

+ If the list of goods/service in one class exceeds 6, for each additional goods/service from the 7th one, an additional amount of US$ 11.

 

3.5.2. Requirements for trademark application in Vietnam

 

Requisite Information:

1. Full name, address and nationality of the applicant;

2. Description of the trademark: meaning, colors claimed, translation or transliteration of characters into English if the mark contains foreign characters;

3. 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);

4. If a priority is claimed: statement of country, application number and filing date of the original foreign application from which the priority is claimed.

 

Requisite Documents:

1. Power of Attorney from the applicant (notarization is not required);

2. 15 specimens of the mark (the size of each specimen is not smaller than 15mm x 15mm and not larger than 80mm x 80mm);

3. If the Convention priority is claimed: a certified copy of the priority document(s) and the English translation thereof.

Note:

         A copy of the executed Power of Attorney can be accepted at the time of filing trademark application, but the original one must be submitted within 30 days from the filing date.

 

Important Notes:

In accordance with the legal regulations on trademark in Vietnam, KENFOX provides the following advice for possible reference:

1. List of goods/services – Must be clear to specify the goods and services. Vietnam has long adopted the International Classification of Goods and Services even though it has not yet acceded to the Nice Agreement. As of 1 October 2017, the NOIP has acceded to the 11th edition of International Classification for Goods and Services.

2. A trademark application can cover more than 01 class. The priority right belongs to the person who first files application for trademark registration, it is advised to file application for trademark registration as soon as possible.

3. The time limit from the filing to granting date is 12 months, of which 01 month is for formality examination, 02 months are for data preparation for publication of the application and 09 months are for substantive examination and publication of trademark application;

4. The protection title of a trademark is a Trademark Registration Certificate, which is effective from the granting date;

5. The validity term of a Trademark Registration Certificate is 10 years from the regular filing date and can then be renewed indefinitely for consecutive periods of 10 years;

6. A Trademark Registration Certificate can be suspended by a request made by any third party if it is not used in five successive years without any proper reason.

7. Since the fee for filing trademark application depends on the number of goods/services in a class, all the generic terms are not accepted for registration. The applicant, therefore, is required to clarify all the generic terms (if any) in the list of goods/services.

8. To assist clients, during the examination of the trademark application, we do not charge fees for sending Notification of Formality Examination, Notification of Substantive Examination as well as translating those Notifications from Vietnamese into English.

 

3.5.3. Trademark Application in Vietnam

 

The following documents are required for a trademark application to be filed with the IP Office of Vietnam:

(i). An application for trademark registration, (see attached).

(ii). Documents, samples, information identifying the trademark claimed for protection in a trademark application.

(iii). Document attesting the entitlement to file an application if the applicant has been assigned that right from another person.

(iv). Priority document if priority is claimed.

(v). Power of Attorney if the application is filed through a representative, and

(vi). Filing fee.

 

The Trademark Application in Vietnam should consist of the following particulars: 

1. The name and address of the applicant.

2. The presentation and description of the claimed trademark.

3. The name and address of the representative if the application is filed through a representative.

4. Priority information including the country where the corresponding application was filed, the filing date and the number of the priority application, and

5. The designation of goods and/or services to bear the claimed trademark in accordance with the International Classification of Goods and Services under the Nice Agreement.

The trademark description must be provided in the Trademark Application filed with the IP Office of Vietnam by pointing out each of the elements forming the mark and the significance of the mark. If the mark contains words in a foreign language, the pronunciation and the Vietnamese translation thereof must be specified. In general, the features constituting the distinctiveness of the mark should be identified. 

For designation of goods and services, it is required to specify particular goods and/or services of interest. Multiple class applications are applicable in Vietnam, that is, the applicant can claim up to 45 classes of goods/services under one trademark application to be filed in Vietnam. The goods and/or services claimed under the application must be classified based on the International Classification of Goods and Services under the Nice Agreement, currently, the 11th edition of International Classification for Goods and Services.

Sample Trademark Application for registration in Vietnam: (Download)

Sample Trademark Registration Certificate in Vietnam: (Download)

 

3.5.4. Trademark examination in Vietnam

 

Under Law on Intellectual Property of Vietnam, a trademark application must undergo 02 phases of examination, i.e., formality examination (or examination as to form) and substantive examination (or examination as to substance).

(1) Formality examination

 

The formality examination will assess whether the application follows the formality standard and the information relating to the identity of the applicant, the description of the mark and classification of the goods/services is sufficient and appropriate. If formal requirements are satisfies, the IP Office of Vietnam will issue a Notification of Acceptance as to form to confirm the filing date and the application number. The formality examination will last 01 month counted from the filing date.

 

Notice for formality acceptance or Request for correction and amendment

 

Before the expiration of the time limit above, the IP Office of Vietnam shall complete the formality examination of applications and send notices on examination results to applicants.

– For a valid application, the IP Office of Vietnam shall send to the applicant a notice on acceptance of valid application.

– For an application failing to meet formal requirements, the IP Office of Vietnam shall send to the applicant: a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of two months from the date of notification for the applicant to give opinions or correct errors.

 

(2) Substantive examination

 

Then, the mark will be published in the third month from the date of the acceptance as to form and examined as to substance within 09 months as from the date of publication. The substantive examination aims at appraising whether the mark is available for registration and use in connection with the applied goods/services. However, in practice, the time for two phases is often prolonged and in most cases, it takes 12-15 months for a trademark to be registered. The time may be longer if the trademark application is required to be amended or the mark is opposed or provisionally refused.

 

Notices of Substantive Examination Results

 

On the date of expiration of the time limit for substantive examination of an application at the latest, the IP Office of Vietnam shall send to the applicant one of the following notices:

– A notice on its intended refusal to grant a mark registration, clearly stating the reason(s) for refusal and setting a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements. The aforesaid time-limit can be extended once, if the signs claimed in the application fails to satisfy the protection conditions;

– A notice on its intended grant of a mark registration and request the applicant to pay the registration/granting fee, if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit above.

 

Responses to Substantive Examination Results

The deadline for responding to the IP Office of Vietnam’s Notices of substantive examination is within three months of the notice having been issued – this is extendable for a further three months.

 

Ways to overcome the trademark refusal in Vietnam

A relative or absolute objection grounds may be overcome by:

(i). Submitting arguments in rebuttal;

(ii). Providing a Letter of Consent from the conflicting trademark owner;

(iii). Initiating a non-use cancellation against the other party;

(iv). Providing evidence of use to support a claim for honest concurrent use or prior use.

 

Decision of refusal

If the applicant to whom the IP Office of Vietnam has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the IP Office of Vietnam shall send a Decision on its refusal of the application.

When dissatisfactory with the IP Office of Vietnam’s refusal Decision, the applicant may proceed with filing an appeal against the refusal Decision or initiate lawsuits at court in accordance with administrative procedures.

 

Issue the Mark Registration Certificate

Within 10 days after applicant pays fully and on time the prescribed fees and charges, the IP Office of Vietnam shall carry out the procedures for granting the Mark Registration Certificate.

 

Entry into the National Register of Industrial Property and publication of the Mark Registration Certificate

The Mark Registration Certificate shall be recorded in the National Register of Marks and the decision on granting the mark registration shall be published by the IP Office of Vietnam in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicant pays a publication fee.

For the international mark registered through the Madrid system, the IP Office of Vietnam shall, if accepted for protection, issue and publish a decision on acceptance for protection of an internationally registered mark in its Industrial Property Official Gazette. At the request of an internationally registered mark owner, the IP Office of Vietnam issues a certificate of protection in Vietnam of the internationally registered mark.

For more details about trademark examination procedures, please access: https://kenfoxlaw.com/trademark-examination-procedure-in-vietnam/

3.6. Appeal against refusal against a trademark application in Vietnam

 

After concluding substantive examination, if the trademark application is found not to satisfy protection requirement, the IP Office of Vietnam will issue a Notice on its intended refusal to grant a mark registration and set a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions. If the response is found not grounded, the IP Office of Vietnam will issue a refusal Decision (the first Decision). The trademark applicant may file an appeal against such first Decision with the IP Office of Vietnam. The appeal will be then examined and a second Decision on settlement of the appeal will be issued by the IP Office of Vietnam. If unsatisfactory with the IP Office of Vietnam’s second Decision, the concerned party may files lodge their appeal (second-time appeal) with the Science and Technology Minister (“MOST”), the supervising body of the IP Office of Vietnam, or initiate lawsuits at court.

As a matter of laws and practice, regarding the appeal proceeding against the IP Office of Vietnam’s decision, please be advised that if any of the relevant parties does not agree with the IP Office of Vietnam’s decision on the trademark case, he/she is entitled:

(i). to file the first-time appeal against the IP Office of Vietnam’s decision on the trademark case with the IP Office of Vietnam (not the MOST); or

(ii). to institute an administrative lawsuit at court against the IP Office of Vietnam’s decision on the trademark case.

In the circumstance (1), if the first-time appeal remains unsettled by the IP Office of Vietnam at the expiration of the settlement time limit, or if any of the relevant parties does not agree with the first-time appeal settlement issued by the IP Office of Vietnam, he/she is entitled:

(i). to file the second-time appeal against the IP Office of Vietnam’s decision on the first-time appeal settlement with the Ministry of Science & Technology (“MOST”); or

(ii). to institute an administrative lawsuit at court against the IP Office of Vietnam’s decision on the first-time appeal settlement.

In addition, in the circumstance (i), if the second-time appeal remains unsettled by the MOST at the expiration of the settlement time limit, or if any of the relevant parties does not agree with the second-time appeal settlement issued by the MOST, he/she is also entitled to institute an administrative lawsuit at court against the MOST’s decision on the second-time appeal settlement.

Regarding the time limits for settlement of appeal filed with the IP Office of Vietnam and the MOST, please see our following advice:

– The time limit for the IP Office of Vietnam to settle the first-time appeal is 30 days after the appeal is accepted. For complicated cases, the time limits may be prolonged, but cannot exceed 45 days (Art. 28, Law on Appeal);

– The time limit for the MOST to settle the second-time appeal is 45 days after the appeal is accepted. For complicated cases, the time limit may be prolonged, but cannot exceed 60 days (Art. 37, Law on Appeal).

However, in practice, both first-time appeals at the NOIP and second-time appeals at the MOST take quite a long time over the prescribed time limits due to the complexity of the appeal cases and the shortage of human resources at the NOIP and the MOST. For your indications, practically, first-time appeals at the NOIP may last for approx. 30-40 months, and second-time appeals at the MOST may last for approx. 10-20 months, or even longer for very complicated cases.

 

3.7. Validity of trademark registration and trademark renewal in Vietnam

 

As provided under Article 93.6, Vietnam IP Law, a trademark registration in Vietnam is effective on the granting date and lasts for ten (10) years from the filing date.

The term can be renewed for unlimited consecutive ten-year periods. To renew the validity of a certificate, the trademark owner must apply for renewal and pay the renewal fee. A request for renewal must be filed within six (6) months prior to its expiry date. A request for renewal can be filed later than the above-mentioned period, but not exceeding six (6) months from the expiry date with payment of an extra fee accounting to 10% of a prescribed fee for each month overdue. For more about us on trademark renewal service, please access: https://kenfoxlaw.com/ip-practice-in-vietnam/ip-practice-trademark-in-vietnam/trademark-renewal-in-vietnam/

 

3.8. Trademark cancellation/invalidation proceeding in Vietnam

 

3.8.1 Grounds for trademark cancellation/invalidation in Vietnam:

– The owner has no right to file the application for the trademark in Vietnam;

– The trademark does not meet protection requirements at the time of registration/protection granted (i.e. being signs excluded from trademark protection; lacking of inherent distinctiveness; indistinguishable);

– Bad-faith filing.

– 5-years non-use of the mark after its registration;

– The non-use arguments, cancellation action against trademarks can be taken on following grounds: (i) The owner fails to pay the stipulated validity maintenance or extension fee; (ii) The owner declares relinquishment of the industrial property rights; (iii) The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir; (iv) The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark; and (v) The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations

 

3.8.2 Procedures for trademark cancellation/invalidation in Vietnam:

 

– The owner is normally assigned a 2-month period, which may be extended by up to 4 months, from the first notification by the IP Office of Vietnam to submit their counterstatement or response.

– The IP Office of Vietnam may seek additional arguments/documents from the parties if necessary.

– Once arguments and supporting documents from both sides are deemed sufficient, the IP Office of Vietnam shall issue their opinion/conclusion on the invalidation action.

After the cancellation/invalidation request is filed with the IP Office of Vietnam, it will be assigned to an examiner for examination thereon. If the cancellation/invalidation request is found reasonable, the IP Office of Vietnam will send its first Notification to the trademark owner for their counterstatement or response. The IP Office of Vietnam may also seek additional arguments/documents from the parties if necessary.

When a Decision on cancellation/invalidation or rejection of the cancellation/invalidation request is issued by the IP Office of Vietnam (the first Decision), the trademark owner or the involved party may file an appeal against such first Decision with the IP Office of Vietnam. The appeal will be then examined and a second Decision on settlement of the appeal will be issued by the NOIP. If unsatisfactory with the IP Office of Vietnam’s second Decision, the concerned party may files lodge their appeal (second-time appeal) with the Science and Technology Minister or initiate lawsuits at court. Due to various levels of settlement of the cancellation case, the time frame for a cancellation proceeding  may range from 2-3 years or even more.

 

Staying infringement handling in case of a trademark cancellation/invalidation in Vietnam:

Many of trademark cancellation/invalidation cases in Vietnam occurs in the context of trademark disputes where the alleged infringers are accused of trademark infringement, aiming at invalidating/cancelling the trademark registration in question as a defense mechanism, with the argument that if a trademark registration is not valid, thus, it cannot be infringed.

As provided in Article 27, Decree No. 99/2013/ND-CP, in case of a dispute (e.g. a trademark invalidation) that has already arisen before the filing date of the request for enforcement, Vietnamese enforcement authorities may take either of the following options:

(i). To stay the enforcement proceeding and request the involved parties to settle the dispute at a relevant authority in Vietnam before resuming the enforcement; the enforcement will then be taken in compliance with the outcome of the dispute settlement proceeding, or

(ii). To request the trademark owner to make an undertaking, or to request the IP Office of Vietnam to confirm the legal status of industrial property rights, on which the enforcement action is based, to decide whether the enforcement action can be taken or needs to await to outcome of the dispute settlement.

In practice, option (i) is preferable by most of Vietnamese enforcement authorities when information on a dispute comes to their attention.

 

Trademark cancellation based on non-use reason in Vietnam

In Vietnam, a trademark registration will be susceptible to non-use cancellation if it has not been used for 05 consecutive years after its registration date. Article 95.1d, the IP Law 2005 provides that “A trademark registration shall be cancelled at request of a third party if the mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for cancellation, except where use is commenced or resumed at least three (3) months before the request for cancellation“. To initiate a non-use cancellation action against a trademark registration, the party who files a non-use cancellation is required to show evidence of non-use of the mark. The non-use cancellation action can be proceeded under the following procedures:

 

– Step 1: Conducting an investigation on the non-use of the subject mark in Vietnam

Before filing the request for invalidation, the appellant should conduct an investigation to collect the evidence on the 5-year non-use of the subject mark. To this end, we may request the competent authority in Vietnam to conduct the investigation to obtain the conclusion from such authority. The Vietnamese authority will carry out a search on local newspapers and/or commercial prints circulated nationwide to find out whether or not the subject mark has been used in Vietnam. The investigation result will be informed to the appellant in an official Letter of such Vietnamese competent authority.

In case the investigation reveals that the mark in question has not been in use in Vietnam for at least 5 year prior to the date of search, we can proceed with Step 2 as mentioned below.

The time involved in non-use investigation is 20-30 days.

 

– Step 2: Filing a request for invalidation of the trademark registration with the IP Office of Vietnam

The request for invalidation of the subject mark should be filed with the IP Office of Vietnam together with the evidence on the non-use of the subject trademark.

The IP Office of Vietnam will notify the owner of the subject mark of the invalidation action and request the owner to raise its opinions within 2 months from the date of notification. The owner’s opinions may be informed to the appellant and the appellant may be entitled to file further arguments against the owner’s opinions. If evidence of use is not submitted by the owner, claim by the appellant on the non-use of the trademark is deemed grounded, this may lead to cancellation of the trademarks.

When the arguments/evidences submitted by the two parties deem to be enough, the IP Office of Vietnam will consider the case and give its conclusion on whether or not the trademark registration would be cancelled.

 

The time involved in a cancellation action depends on the complicatedness of the case. In normal case, it may take about 12-18 months to obtain the IP Office of Vietnam’s conclusion on the case.

3.9. Trademark assignment in Vietnam

 

Required documents and procedures for trademark assignment in Vietnam:

 

For trademark assignment in Vietnam, the following documents are required to provide KENFOX:

 

(i). 01 original Power of Attorney (“PoA”) by the applicant (either Assignor or Assignee) to KENFOX. Kindly note that if the assignor is required to proceed with the assignment as stipulated in the Assignment Agreement, then the assignor must sign the PoA. Otherwise, the assignee will sign the POA.

(ii). Original Trademark Registration Certificate(s);

(iii). 02 original Assignment Agreements (as attached form). The assignor and assignee are required to sign each page of the Assignment Agreement.

 

Important notes:

 

In accordance with the legal regulations on trademark assignment in Vietnam, KENFOX provides the following advice for possible reference:

 

– The assignor and assignee are required to sign each page of the Trademark Assignment – Agreement (TAA). The TAA is NOT required to be notarized any longer;

– It is possible to proceed with recordal of assignment for several trademarks belonging to the same owner.

– The assignment can be recorded while the trademark is pending;

– It may take around 03-04 months to complete the assignment.

 

Involved costs for trademark assignment in Vietnam:

 

It costs US$ 206 for filing a request for trademark assignment in Vietnam, not including fees for translating the TAA from English into English, which is charged at US$ 10 per 100 words, a disbursement and 5% VAT per total fees.

 

For more details about trademark assignment in Vietnam, please access https://kenfoxlaw.com/ip-practice-in-vietnam/ip-practice-trademark-in-vietnam/trademark-assignment-recordal-in-vietnam/

Sample trademark assignment request in Vietnam

Sample trademark assignment agreement in Vietnam (Download Sample 1; Sample 2)

Sample trademark assignment recordal in Vietnam (Download)

3.10. Trademark licensing in Vietnam

Required documents and procedures for trademark license in Vietnam:

(i). 01 original Power of Attorney (“PoA”) by the applicant (either Licensee or Licensor) to KENFOX. Kindly note that if the licensee is required to proceed with the licensing recordal as stipulated in the License Agreement, then the licensee must sign the PoA. Otherwise, the licensor will sign the POA.

 (ii). 02 original License Agreements (as attached form). The Licensee or Licensor are required to sign each page of the License Agreement.

Important notes:

In accordance with the legal regulations on trademark licensing in Vietnam, KENFOX provides the following advice for possible reference:

– The assignor and assignee are required to sign each page of the License Agreement (LA). The LA is not required to be notarized any longer;

– It is possible to proceed with recordal of licence for several trademarks belonging to the same owner.

– It may take around 03-04 months to complete the recordal of trademark licence in Vietnam.

Involved costs for trademark assignment in Vietnam:

It costs US$ 226 for filing a request for trademark licensing in Vietnam, not including fees for translating the License Agreement from English into English, which is charged at US$ 10 per 100 words, a disbursement and 5% VAT per total fees.

For more details about trademark assignment in Vietnam, please access https://kenfoxlaw.com/ip-practice-in-vietnam/ip-practice-trademark-in-vietnam/trademark-license-agreement-in-vietnam/

Sample trademark license request in Vietnam

Sample trademark license agreement in Vietnam  (Download)

Sample Trademark License Registration Certificate in Vietnam (Download)

3.11. Recordal of change for trademark owner’s name/address in Vietnam

Required documents for trademark recordal of change in Vietnam:

(i). An original signed Power of Attorney (“PoA”) executed by the trademark applicant/owner with the new name/address (Neither legalization nor notarization is required).

(ii). An original notarized Declaration of company name/address change executed by the trademark applicant/owner OR a certified true copy of Certificate of Company Name/Address Change (or Certificate of Merger) issued by a competent authority. A form of Declaration is attached.

(iii). An original Certificate of Trademark Registration (in case of registered trademark).

Important Notes:

(i). Under Vietnamese laws, the applicant/owner of any trademarks applied/registered in Vietnam is entitled to request the National Office of Intellectual Property (“NOIP”) to record the change in respect of its company name/address.

(ii). The change in respect of the company name/address is recorded for each trademark application/registration.

(iii). Currently, the company merger is recorded in type of recordal of the change of the company name and address.

(iv). It takes about 3-5 months from the request date for the recordal of the change in respect of the company name/address.

Involved costs for recordal of change:

(i). Costs for recordal of change of company name/address for a pending trademark application is US$70, of which US$14 is official fee and US$56 is agency fees.

(ii). Costs for recordal of change of company name/address for a registered trademark is US$82, of which US$22 is official fee and US$60 is agency fees.

These fees exclude a disbursement  and 5% VAT per total fee.

For more details about recordal of trademark owner’s name/address in Vietnam, please access: https://kenfoxlaw.com/ip-practice-in-vietnam/ip-practice-trademark-in-vietnam/amending-a-trademark-before-and-after-registration-in-vietnam-recordal-of-change-for-trademark-owners-name-address-in-vietnam/

Sample request for recordal of trademark owner’s name/address change in Vietnam

Sample Declaration on name/address change (Download)

3.13. For other trademark related questions, please access:  https://kenfoxlaw.com/trademark-questions-in-vietnam/

 

3.14. Trademark search in Vietnam, please access: https://kenfoxlaw.com/ip-practice-in-vietnam/trademark-searching-services-in-vietnam/

 

3.15. Trademark watching in Vietnam, please access: https://kenfoxlaw.com/ip-practice-in-vietnam/ip-practice-trademark-in-vietnam/want-trademark-searching-services-in-vietnam/

 

3.16. Trademark enforcement in Vietnam, please access: https://kenfoxlaw.com/ip-practice-in-vietnam/enforcement-in-vietnam/kenfox-currently-in-vietnam/

 

3.16.1. Defences to trademark infringement in Vietnam

 

A trademark infringement defense is in types of argument, evidence, documents presented by the alleged infringer to prove they did not infringe on the owner’s registered trademark. The following defences are normally used in Vietnam:

(i). Arguments on non-similarity between the alleged infringing sign and the registered trademark.

(ii). Argument that the alleged infringing sign was used as a trade name before the registration date of the registered trademark.

(iii). Obtaining assessment conclusion on unlikelihood of confusingly similarity between the alleged infringing sign and the registered trademark.

(iv). The alleged infringing sign has been used in a fair and good faith manner.

(v). Initiation of invalidation action against the trademark based on which infringement claim has been filed.

 

3.16.2. Proving rights conferred for unregistered trademark to enforce against alleged infringement

 

Vietnam’s trademark regime operates on a first-to-file basis, protection for unregistered trademarks and other commercial signs may, however, be granted in limited cases with a pre-requisite that such an unregistered mark must be widely used in Vietnam as a commercial indication. The owner of an unregistered trademark may deter others from using a confusingly similar sign if the use of such sign falls within statutory scope of “unfair competition”. Vietnamese laws provide a legal frame to take action against unfair competition acts taken by a third party.

 

To prove the wide use of an unregistered mark in commerce, the owner is advised submitting the following evidence and information:

               

(i). details of the first use of the mark (time and place) and the length of use of the mark, both globally and in Vietnam;

(ii). an estimate of the value of the mark, if possible (independent estimations/valuations will be particularly useful if available);

(iii). details of the major economic indexes (e.g. annual output, turnover, sales volume, profits and market share, etc.) of goods/services bearing the mark in the recent years;

(iv). details of the sales network (countries where products bearing the mark have been sold), including sales network in Vietnam (list of distributors/resellers, if available);

(v). details or an estimate of the advertising expenditure on the mark throughout the world/the region, and particularly in Vietnam;

samples of advertising materials, demonstrating use of the mark throughout the world and in (i). Vietnam (if any);

(vi). evidence of recognition of the mark as being well-known by the Courts or the other national IP Offices in other countries, if any;

(vii). any other information that can establish the widely recognized status of the mark; and

(viii). documents (emails, photos, etc.) proving the confusion by customers between the unregistered mark and the alleged infringing sign.

 

3.16.3. Petition for handling trademark infringement under administrative route in Vietnam

 

A petition for handling IPR infringement under administrative route is defined, under Article 3.8, Decree No. 105/2006/ND-CP, as a written request for application of measures to handle an act of IPR infringement.

A petition for handling of trademark infringement must contain the following major details:

(a) Date of the petition;

(b) Name and address of the trademark owner who requests for handling of infringement; full name of the representative of the trademark owner if such request is made by the representative;

(c) Name of the Vietnamese enforcement agency that receives the petition;

(d) Name and address of the alleged infringer; name and address of the suspected infringer in the case of request for temporary cessation of customs clearance for exports or imports suspected of infringement;

(e) Name(s) and address(es) of organizations and individuals with related rights and interests (if any);

(f) Name(s) and address(es) of the witness(es) (if any);

(g) Brief information about the infringed intellectual property rights: type of the right, bases for emergence of the right and its subject matter;

(h) Brief information about the act of alleged infringement: date and place of occurrence of the infringement, brief description of the infringing product, acts of infringement and other information (if any).

For a petition for temporary cessation of customs clearance for imports or exports suspected of infringement, it is required to contain additional information on the mode of import or export, country of exportation, mode of packaging, the lawful importer or exporter, features of lawfully imported or exported goods for distinction from infringing goods; risks of occurrence of circumstances when certain measures need to be applied to prevent infringements and to secure the imposition of penalties, and other information (if any);

(i) Proposed measures to handle infringement;

(j) A list of documents and evidence accompanying the petition;

(k) Signature of the petitioner with a seal (if any).

A petition for handling of trademark infringement must be accompanied with documents and evidence to prove the request.

A sample petition for handling trademark infringement in Vietnam (Download)

 

3.17. For other trademark related matters, please access: https://kenfoxlaw.com/our-practice/related-matters-in-vietnam/