What documents and which steps to register a trademark in Vietnam?
1. What is trademark registration in Vietnam?
Registering a trademark in Vietnam is a legal administrative proceeding in which a trademark applicant (either a natural person or a legal entity) file an application to register a trademark with the Intellectual Property Office of Vietnam (“IP Vietnam”). Of note, co-ownership of a trademark is possible in Vietnam. Trademarks to be protected under the IP Law of Vietnam include: (i) Trade/service Mark; (ii) Collective Mark; (iii) Certification Mark; (iv) Associated Mark and (v) Well-known Mark
2. What documents are required to register a trademark in Vietnam?
- 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 from the applicant (notarization is not required);
- 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.
Remark: 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
3. What basic steps to be taken for registering a trademark in Vietnam?
Trademark registration should undergo 5 steps below:
Step 1: Conducting an availability search for a proposed mark in Vietnam
Despite optional, a pre-filing availability search for a proposed mark is highly recommended in Vietnam. This results from the fact that a trademark search may help minimize risks of refusal, opposition or infringement over prior registered marks or trade name rights of others.
To this end, the IP Vietnam’s trademark database will be search to figure out prior marks (pending or registered) which may be deemed conflicting ones barring the proposed mark from registration. The trademark search results should be considered a source of reference to determine whether the proposed mark should be filed, not a guarantee that it will be 100% registered in Vietnam. Normally, it costs US$ 50-100 for one trademark search/class of goods/service subject to the fees charged by the IP agent you are working with. It may take 2-4 working days to obtain a trademark search report.
Trademark search can be conducted based on the online trademark database at the following official websites:
Or you can contact KENFOX for assistance.
Step 2: Filing an application for registration of a mark in Vietnam
To secure protection for a trademark in Vietnam, trademark holder may either apply to register through national route or international route (the Madrid system). In detail, an application for registration of a mark may be filed directly with the IP Office of Vietnam or by filing an International Application under Madrid system to WIPO’s International Bureau.
Via through national route, an application for a trademark 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
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
Via international route, an International Trademark Application must be filed with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Vietnam through the Madrid Agreement or the Madrid Protocol or both of them.
Step 3: Following up the trademark application filed with the IP Vietnam
A trademark application, once filed with the IP Vietnam, will typically undergo (i) formality examination (within 01 month from the filing date), (ii) publication on Industrial Property Gazette (02 months after formality examination acceptance) and (ii) substantive examination (within 09 months from the publication date). Such steps may be briefly manifested in the following diagram:
During substantive examination, the IP Vietnam may issue the following Notices:
- A Notice of Opposition filed by any party with the IP Vietnam
- A notice on intended grant of a mark registration and request the applicant to pay the registration/granting fee
- A notice on intended refusal to grant a mark registration
Step 4: Grant of protection or Refusal of protection of a trademark in Vietnam
After concluding a substantive examination for a trademark application, the IP Vietnam shall issue either of the following Notice:
- 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.
- 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;
Step 5: Issuance of a Trademark Registration Certificate in Vietnam
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.
4. Some key takeaways relevant to a trademark application in Vietnam
(a) A multi-class application acceptable in Vietnam?
A multi-class application is accepted. Vietnam adopts Nice Classification.
(b) Official fees will increase in what circumstance? Class heading accepted?
Official fee for each further item of goods or services from 7th one included in each class shall be surcharged at US$ 8.00. Generally, class headings are not acceptable, except few classes (for example, Class 25_Clothing, footwear, headgear). For the purpose of calculation of fees and trademark examination, the description of goods/services must be sufficiently specific. In other words, the goods and services under any applications must be listed into specific items, preferably using the terms guided in the Alphabetical List of the Nice Classification.
(c) Is it possible to record changes to a pending trademark application in Vietnam?
Recordal of change to a pending or even a registered trademark in Vietnam is statutorily permissible, provided that such a change must not expand the scope of protection of the trademark.
(d) Evidence of use required for trademark registration in Vietnam?
Vietnam applies first-to-file system. Therefore, use of the trademark is not a condition for filing an application in Vietnam. However, in the event of a priority conflict between applications filed at the same time, registration will be granted to the applicant who proves the most extensive use.
Neither Intent-to-use Declaration nor Declaration of Use is required as a prerequisite for obtaining a certificate of trademark registration.
(e) Trademark merely comprising non-Latin characters eligible for registration in in Vietnam
Proposed marks merely constituted by foreign words/scripts other than Vietnamese, Latin or English characters, e.g. Chinese, Russian, Thai languages, etc. are frequently rejected by IP Vietnam due to lack of inherent distinctiveness.
(f) How is the procedure for responding to IP Vietnam’s rejection of a trademark application in Vietnam?
The IP Vietnam, once issues a Notice intended refusal to grant a mark registration, will set a due date for the application to render the latter’s opinions thereon. A response to the IP Vietnam’s rejection of a trademark application must be filed within 3 months from the date of issuance of the Notice. The examiner must re-examine the application in the view of the response submitted by the applicant and the result thereof is normally available within 04 to 06 months from the filing date of the response. If dissatisfied with the IP Vietnam’s decision, an appeal can be filed with the IP 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.
(g) How is the procedure for appealing against a decision of refusal of an application or a decision of refusal of granting a registration certificate in Vietnam.
When dissatisfactory with the IP Office of Vietnam’s refusal Decision (”first Decision”), the applicant may proceed with filing an appeal (“first-time appeal”) against the refusal Decision or initiate lawsuits at court in accordance with administrative procedures. The appeal will be then examined and a second Decision on settlement of the appeal will be issued by the IP Vietnam. If unsatisfactory with the IP Vietnam’s second Decision, the concerned party may 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.
In a broader view, the appeal proceeding against a trademark refusal decision issued by the IP Vietnam may be elaborated as follows:
(i) The claimant to file the first-time appeal against the IP Vietnam’s refusal decision with the IP Office of Vietnam (not the MOST); or
(ii) The claimant to institute an administrative lawsuit at court against the IP Office of Vietnam’s decision on the trademark case.
In the circumstance (i), if the first-time appeal remains unsettled by the IP Vietnam at the expiration of the settlement time limit (i.e. 30-45 days after the appeal is accepted), or if any of the relevant parties does not agree with the first-time appeal settlement issued by the IP 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 (i.e. 45-60 days after the appeal is accepted), 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.
(h) Is it possible to use the trademarks in commerce with the symbol ® and TM although the trademarks have yet to register with the Trademark Office (but the same have been registered as trademarks under the law of a country outside Vietnam)
The marking of “TM”, “SM” or “®” to trademarks is not required and generally provides no legal protection. However, If the trademark has not been registered in Vietnam, even if the same has been registered in other countries, the act of using the symbol “®” is considered as “Providing false indications on the legal status of IP rights” and place users at risks of being sanctioned under administrative proceedings in Vietnam.
(i) What is the term of a trademark registration and how can the mark be renewed in Vietnam?
Term of protection of a registration of a trademark in Vietnam is 10 years, calculated from the filing date. Renewal may be conducted within six months prior to the expiry date of the registration. There is no provision on submitting a request for premature renewal, however, a premature renewal request, e.g. 01 year before the due date, may be accepted by the IP Vietnam without shortening the term of the registration.
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.