A pre-filing trademark in Vietnam is undoubtedly critical before you make any financial investment, time and efforts to secure a trademark registration, then, promote a trademark, launch a website, SEO campaigns and register domain names. Putting off a pre-filing search may make you pay an expensive price, e.g. a period of 16-18 months is wasted to wait for the substantive examination outcome from the IP Office of Vietnam, but the filed trademark is rejected. In a serious circumstance, use of an unregistered trademark may pose a range of potential risks for infringing other’s prior trademark rights. This results in various costs of defending legal action, in addition to costs of rebranding and the associated loss of market recognition, this can cause a company to become crippled, or at least, put a significant break on its growth.
Benefits of a pre-filing trademark search in Vietnam
Although pre-filing trademark search entails an additional expense, it often saves Clients significantly in the long run. A trademark search report prepared by the professional trademark attorney will identify potential obstacles, i.e. whether a proposed mark may face an absolute and/or relative refusal ground (i.e. figuring out whether a proposed mark is deemed inherently distinctive or confusingly similar to other prior marks) which block the registration thereof in Vietnam.
A pre-filing trademark search may be useful in assessing the relative strength of a proposed trademark by indicating how many other similar trademarks are already available in the Register or possibly, in the marketplace. By going through the trademark search outcome, you will have a clear picture of the situation with a list of possible conflicting marks and then determine whether the said proposed trademark is safe to use and/or register.
Challenges of pre-filing trademark searches in Vietnam
Pre-filing trademark search has become increasingly complicated. This has resulted from the following facts:
- Annual increasing number of trademark applications: The number of trademark applications filed directly to the Intellectual Property Office of Vietnam and via Madrid system has constantly increased since 2015. The following table shows total number of applications for trademarks rights in in 2015-2019:
The number of new applications filed annually in Vietnam for the past five years always exceeds over forty thousand trademark applications. The larger the number of trademark applications are filed, the easier it will get for a proposed mark to be conflicted with earlier ones.
- Broad specifications of goods and services: Under the law and practice of trademarks in Vietnam, it is possible to claim for goods and services not limited to specific functions or types, e.g. “pharmaceutical preparations”, “hand tool”, “agricultural machine”, etc. Such broad claims increase the frequency of conflicts between trademarks, even when businesses operate in completely different fields.
- Refusal due to similarities of goods and services: Goods are items, such as beer (in Class 32), cigarettes (in Class 34) or cars (in Class 12). Services are activities that benefit someone other than you or your company, such as food and drink catering service (in Class 43), cigarette trading service (in Class 35) or car repair services (in Class 37). The difference between goods and services can sometimes be confusing. Do your customers pay for a product or a specific activity? If your customers pay you for a product, like some beer, then you have goods. However, if your customers pay you to perform an activity, such as food and drink catering service, then you have a service.
In Vietnam, services may be considered similar to any goods for which such services could be applied to and vice versa, the goods may be considered similar to any services if such goods are the subjects provided/rendered by the service. For instance, the goods “beer” in Class 32 can be considered similar to the “food and drink catering service”, the goods “cigarette” in Class 34 can be regarded similar to the “cigarette trading service” in Class 35 and the goods “cars” can be deemed similar to the “car repair services” in Class 37.
It is as such required to make an extensive trademark search in Vietnam and assessment based on the prior found marks.
- Trade name/Company names in conflict with trademark: Trade names also constitute a form of industrial property in Vietnam, with rights established through their use rather than under a formal registration system. A company name or an enterprise name or a business name also serves as a trade name. A later-file trademark will be refused for protection if it is deemed confusingly similar to a prior trade name. Therefore, in addition to a trademark search, a comprehensive trade name search should be conducted in order to identify any company names which are identical or similar to the trademark. The IP Office of Vietnam does not own a database for company name or enterprise name or business name or trade name. As a result, the trade name search must be conducted based on the national enterprise portal at: https://dangkykinhdoanh.gov.vn/vn/Pages/Trangchu.aspx. However, it is not easy to confirm whether a likelihood of confusion may occur because Vietnamese companies often register a wide range of business, making a potential for conflict between a trademark and a trade name greater.
- Long pendency periods for pending applications – many trademark applications filed in Vietnam eventually lapse and do not proceed to registration. However, the current lengthy wait for examination (around 16-18 months), and the period given to applicants to respond to the examination result (e.g. formality and substantive examination office action) have often protracted due to time extension request, meaning that applications can sit on the register for at least several years before they are deemed lapse.
- No requirements on actual use of trademark for renewal purposes: Trademarks in Vietnam may be renewed in perpetuity without having to file a Declaration of use, requiring the trademark owner to provide evidence on use of the mark in commerce as a means of showing that the mark has been perceived by the buying public. Such unused trademarks have caused a waste of trademark sources/outlets, discouraging other potential investors who are interested in doing business in Vietnam.
Tools To Facilitate Your Trademark Searches Properly in Vietnam
When looking to run a trademark search before registering a new mark in Vietnam, it is advisable to resort to a professional trademark attorney to conduct the search. However, you may try to figure out some obstacles (e.g. to figure out whether an identical prior trademark is found). The following websites are public for your possible use: