Trademark registration in Vietnam, according to the newest regulations in 2020, has many updates. In particular, the registration fees have been adjusted and the Nice Classification has been updated. Below is the basic information about Trademark, application dossier and the process of trademark registration in Vietnam
Overview of trademark
What is a trademark?
Trademark is the sign used to distinguish the goods or services of one seller or provider from those of others. In particular, a sign may include figurative sign, word sign, numeral sign, or the combination of figurative, word and numeric elements.
For example: NOKIA; STARBUCK; SONG HONG; DATLAT….
Trademarks are sometimes mistakenly referred to as “brands”. However, according to the current provisions under Vietnamese law, there is no such term as Brand. But brand is a generic word used to refer to a good/service or a certain business. A brand is constituted by many factors such as history, quality, scope… and of course trademarks. Thus trademark registration, trademark exclusive registration, trademark protection … or other terms are all used to refer to the act of “trademark registration”.
Trademark classification in Vietnam
There are many methods of trademark classification, it could be based on the constituent to classify the trademark into word mark, figurative mark (also known as logo) or combined mark. However, nowadays, in order to simplify the management and procedure of trademark registration, trademarks are classified into five (05) main categories
+ Collective mark: It is understood as the sign used to distinguish goods/services of the members of an organization that owns the mark from the individuals and businesses that are not the member of such organization.
For example: the collective mark Bún Bò Huế, Ngao Phù Long, Dê núi Cát Bà.
+ Certification mark: The mark used to certify that the good/service, which is bearing the mark, certainly have the characteristic, material, origin, quality, accuracy … that have been registered by an organization having the function of certifying. If you want to use a certification trademark, you must ask for the permission from the organization owning the certification mark.
For example: the certification mark Vietnam High-Quality Goods.
+ Integrated mark: Integrated mark is the trademark that satisfy all the following criteria: Registered by the same applicant; being identical or similar to each other; used for the same or similar or related goods/services.
For example: Honda Wave motorcycle; Honda RS motorcycle; Honda RSX motorcycle…
+ Well-known mark: A trademark is considered well-known when it meets the criteria set out in Article 75 of the Vietnam Intellectual Property Law. Accordingly, the mark must meet the criteria for the number of involved consumers that know the mark, the territorial era in which goods or services bearing the mark are circulated, the sales volume, the duration of usage, the reputation of the mark, the number of countries accepted to protect the mark….
For example: Vinamilk, IKEA, Vinacafe, Nike
+ The mark containing geographical sign: This is a special type of trademark, in which a trademark includes a geographical element (district, province, or region name)
A trademark containing geographic sign can be a common mark (the geographical name is not protected) or a collective mark, a certification mark or a geographical indication.
+ Trade mark (Common mark): The trademark that does not fall into any of the cases mentioned above.
Register trademark on your own
Vietnamese law does not distinguish individuals, organizations or nationality for trademark registration. Accordingly, any individuals, organizations or businesses with full capacity and behavior will be entitled to submit the trademark application in Vietnam.
Note: For foreign individuals and organizations (with no address in Vietnam), Their trademark applications are required to be submitted through an industrial property representative in Vietnam.
Who is entitled to register trademark in Vietnam
+ Organizations (People’s Committee, Cooperative, Association…): register the collective mark managed by that organization.
+ Agencies and organizations that have the function of certification and control: register certification mark and are responsible for approving and allowing the use of such certification mark.
+ Individuals and organizations: register trademark for the goods/services they provide.
+ Enterprises, organizations or individuals can register trademark, even though not producing the product themselves but have an outsourcing contract, a distribution contract (with the permission of the producer and the manufacturer that not directly involved in the trading of the products in the market).
+ Agents, representative offices, subsidiaries: Conduct the trademark registration for the goods/services of the parent companies, manufacturers (With the permission of these entities).
Where can applicant apply for a trade mark registration ?
a, The trademark registration application is submitted directly at the National Office of Intellectual Property of Vietnam (or the representative office of the National Office of Intellectual Property of Vietnam).
+ National Office of Intellectual Property of Vietnam (NOIP): No. 384-386, Nguyen Trai Street, Thanh Xuan District, Hanoi City;
+ Representative office in Da Nang: No. 135 Minh Mang Street, Khue My Ward, Ngu Hanh Son District, Da Nang City;
+ Representative office of NOIP in Ho Chi Minh City: No. 17-19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
b, The application of the organization which do not have headquarter, or do not carry out the production in Vietnam or the organization of foreign individuals not residing in Vietnam: filed through an Industrial Property Representative.
c, For the organization or individual residing in Vietnam or having an office or manufacturing in Vietnam, an application for trademark registration in Vietnam may be filed to the NOIP by courier.
What is the class of good/service?
The scope of trademark protection depends on the class of the good/service bearing the mark. So what is the class of good/service?
Essentially, trademark is the sign used to distinguish the goods and services of an entity from those of others. Therefore, in order to consider the distinction, the legislators have classified the business sectors into 45 categories (classes). This classification is known as the Nice Classification. Trademarks are determined to be similar or distinctive based on which class the trademarks are registered for.
The mark KAMA whichis registered for clothing in the class 25 is not confusingly similar to the mark KAMA whichis registered for metal building material in the class 06.
But KAMA for the class 25 (clothing) is confusingly similar to the mark KAMA for the class 35 (retail in clothes).
Please note that:The applicant needs to select the correct class in order to cover the scope of his or her production/business activities. A trademark can be registered for the related/ extended classes. For manufacturing companies: in addition to the class of goods, the service class for trading, importation, exportation and distribution is also required.
Nice Classification can be divided into two parts
Part 1: Class of goods: From class 01 to class 34.
Part 2: Class of services: From class 35 to class 45.
Priority right/First to file
Under Vietnamese law, the first to file principle is applied for trademark registration. Accordingly, if there are many applications filed for the same or confusingly similar trademark, the earlier filed application shall have priority over the later one; no matter who used the trademark first.
This principle is not applied to the following case: The agent, subsidiary, and distributor register the trademark of the manufacturer without permission.
Trademark registration in Vietnam procedure according to the 2020 regulations
Preparing the application
Classification of goods and services:
The applicant needs to classify their goods, services into one or more classes from 01 to 45.
Please not that: The non-classification or incorrect classification will affect not only the scope of protection but also the examination process. In case the goods/services are not classified correctly, the NOIP may reject the application for not satisfying formality requirement and require the applicant to amend the application (amendment fee is required).
Link for checking the classification: https://checks.vn/nice/
Conduct the trademark search before filing application
Trademark search is not a compulsory step, but it is advised that the applicant should conduct this action to assess the possibility of being granted protection title before filing.
Instead of waiting for 14 – 24 months to know exactly whether a trademark is protected or not, the trademark search only takes 03-05 days for the applicant
applicant can receive information on identical or confusingly similar trademarks that can be cited by NOIP in order to reject their applications via a trademark search.
The search is conducted online for free or for a fee by trademark searching service providers.
Step by step to register a trademark
Time needed: 2 days, 1 hour and 30 minutes.
- Draft the application and prepare the dossier
Dossier for trademark registration in 2020
+ Application (02 copies);
+ Trademark samples (can be black and white, in color or digital);
+ Power of Attorney to authorize the Industrial Property Representative (if the application filed through an Industrial Property Representative);
+ List of the goods/services classified based on the Nice Classification;
+ Document for claiming priority right (if any);
+ Regulations on the use of trademarks (for collective trademarks, certification trademarks);
+ Documents proving the right to registration (authorization letter from the manufacturer, written approval…);
+ Name and address of the owner (or/and co-owners).
Drafting the application
Requirements on trademark application in Vietnam is specified in Appendix A of Circular No. 16/2016 /TT-BKHCN, the applicant needs to fill in all the information in the application before filing, including:
+ Name, address, phone number and email of the applicant (who seeks to be the owner of the trademark);
+ Trademark samples and detailed description;
+ Representative of the applicant;
+ Table of fees;
+ List of goods/services (classified according to the Nice Classification);
+ List of other applicant(s) (who seek to be the co-owner of the trademarks);
+ List attached documents (Power of Attorney, priority documents, written permission).
+ Commitment and signature/seal.
– Classify the goods/services correctly and completely. Goods/services in the same group are separated by “;”. Specify the total number of the goods/services in each class.
Example: “Class 25: Pants; shirt; shoes; slippers. (04 goods)”
– The registration fee will not change for a group with less than 06 goods/services. You should list at least 06 goods/services for each group.
– Information of the applicant in the application and those in other documents must be consistent.
– By registering a black and white trademark, the applicant will have more flexibility with the usage of color in the future.
– It is not required to affix the seal on the application;
– Do not seal/sign on the trademark sample.
- Step 2: Filing the trademark application in Vietnam
The dossier shall be filed to the NOIP (see the address and method of filing above).
After receiving the dossier, NOIP will perform the examination under the following process:
+ Formality examination: 01 month;
+ Publication of the application: 02 months from the date of formality acceptance;
+ Substantive examination: 09 months from the date of filing;
+ Notification of examination result: 01 month
- Step 3: Receive and respond to the notification of NOIP
The applicant may be requested by the NOIP to amend or specify the application. Depending on the NOIP’s notification, the applicant shall have the fixed term to respond, in particular:
+ Correct the formality of the application: 01 month;
+ Respond to the result of substantive examination: 03 months;
+ Pay the certification issuance fee: 03 months.
If the applicant fails to fulfill the request on time, the NOIP shall reject or terminate the application.
Some notes for the process of trademark registration in Vietnam:
+ All information, documents in the dossier must be translated into Vietnamese
+ The document that includes more than one page must be numbered according to the numbering requirements.
+ It is advised that you should submit the application through an Organization of Industrial Property Representative. The process of trademark examination usually takes much time (1-2 years), which makes the tracking of application status difficult and requires the professionalism. The application can be cancelled if the applicant fails to respond to the notification of the NOIP in time.
+ Classify the goods/services accurately and properly.
+ Registering black and white trademark shall help protect different colors, which will provide the applicant with flexible use of colors after the trademark is granted protection.
Fee for trademark registration in Vietnam under the 2020 regulation
The fee for trademark registration depends on the number of class and the number of goods/services in a class.
Case 1: The application includes 01 class of goods/ services and less than 07 goods/services
- Official charges for filing application: VND 75,000 (Valid by December 2020)
- Fee for publication of application: VND 120,000
- Fee for the trademark search for the substantive examination process: VND 180,000
- Fee for substantive examination: VND 550,000
- Fee for granting the certificate: 120.000 VND
- Fee publication of the certificate: 120.000 VND
- Fee for registration of the certificate: 120.000 VND
Therefore, in case the trademark includes 01 class of goods/ services and less than 07 goods/services, the fee is 1.285.000 VND
Case 2: The application includes more than one class and more than 06 goods/services in a class
• Official charges for filing application: VND 150,000/ 01 application; (Valid by December 2020)
• Publication fee: 120,000 VND
• Fee for trademark search: 180,000 VND / class
• Fee for trademark search for each class with more than 6 goods / services (from the 7th goods / service onwards): 30,000 VND / product
• Fee for substantive examination: 550,000 VND / class
• Fee for substantive examination for each class with more than 6 goods / services (from the 7th product / service onwards): 120,000 VND / class
• Fee for granting certificate: 120,000 VND
• Fee for publication of the certificate: 120,000 VND
• Fee for registration of the certificate: 120,000 VND
• Fee for granting certificate for the second class onwards: 150,000 VND / class
Trademark registration certificate in Vietnam
The validity of trademark registration certificate
The effect of trademark registration certificates begins at the grant date and lasts for 10 years from the filing date of the application.
Example: The application was filed on January 1, 2010 and was granted protection on December 15, 2012.
-> The duration of protection is from December 15, 2012 to January 1, 2020.
Renewing the validity of a trademark registration certificate
Before and after 6 months from the expiration of the certificate, the trademark owner can file an application for renewal of certificate.
Successful renewal shall extend the validity of the certificate by 10 years.
For example: The trademark expired on January 1, 2020, which means the trademark owner may renew the validity of the certificate from June 1, 2019 to July 1, 2020,
Note: If you renew at the time after the expiration date (January 1, 2020), NOIP will request a late renewal fee. The fee is 10% of the renewal fee for each month after the expiration.
Trademark registration certificate renewal fee
+ Fee for maintaining the validity of trademark certificate for each good/service: 100,000 VND (For 10 years)
+ Fee for late renewal: 10% for each month after the expiration.
+ Fee for publication of the renewal: 100,000 VND (for one application).
The trademark ANS LAW was filed on December 29, 2012 for the class 45: Legal consulting services; law firms. Please calculate the fee for the renewal in the following scenarios:
+ Renewing on October 27, 2022;
+ Paying the renewal fee on June 1, 2023;
+ Renewing on April 20, 2023.
Frequently asked questions
Answer: Unlimited number of class. Vietnam accepts multi-class trademark application.
Answer: Yes, if you are able to do so. Because, according to the current law and regulations, a trademark is protected exactly as it was represented in the application. That means if you register the logo and the word together, you will have to use the logo and the word together in practice, while the trademarks usually change over time. Not to mention the case where either part is rejected, the applicant will have to amend the application (and it is not certain that this amendment will be accepted).
Answer: You can find information on Industrial Property Representatives on the official website of NOIP or visit the link: https://bit.ly/2ChLl0i
Answer: There is no procedure of international trademark registration. Accordingly, in order to protect a trademark in a particular country, you must submit the application in that country. If you want to protect trademark in multiple countries, you should submit the application through the Madrid system to reduce the costs
Total: 130$ (from filing to granting)
Situations – CASE STUDY
Case #1: Register the trademark of a Korean company in Vietnam.
Our company established in 2015 in Seoul, Korea. We plan to expand our business to Vietnam next year. We would like to seek your advice on the trademark registration in Vietnam? Are we required to establish a company in Vietnam before proceeding with the registration?
Answer: Answer: First of all, we affirm that there is no discrimination between Vietnamese companies and foreign companies in the trademark registration procedure. Accordingly, you are not required to establish a company, a representative office or commercial presence in Vietnam before proceeding with the filing of a trademark application.
Note: Since your company does not have headquarter in Vietnam, the procedure is required through an industrial property representative. A&S Law is one of the industrial property representatives licensed by the NOIP (Code 172).
The steps of implementation
Step 1: Conduct a trademark search
Please provide us with a sample of the trademark (digital file) and a list of the goods, services and classes that your company wishes to exclusively associate with that trademark registration in Vietnam. A search takes 02 working days to be completed.
Step 2: File the trademark application in Vietnam
A&S Law is an industrial property representative; accordingly, A&S Law has the capacity and authority to carry out intellectual property procedures at the NOIP on behalf of your company, including preparing, filing and monitoring the application as well as receiving notification on the result of the examination.
We will file your trademark application in Vietnam and follow it
Step 3: Required document
– Trademark sample (soft copy), a statement on the claim of color (black and white or any other colors);
Refer to the article: Should I register my trademark in color or black and white?
– Power of attorney (according to the form of A&S Law);
– Information on the applicant;
– Other documents (if any).
Case #2: The exclusive agent wants to register the trademark of the manufacturing company.
Question: Hi A&S law, we are the exclusive distributor of Korean cosmetic brand **** in Vietnam. Recently we discovered that the Korean company is allowing many other agents to distribute their products, which violates our contract. Now we want to exclusively register this trademark to ensure that only our company is allowed to use it in Vietnam.
Hello, A&S Law lawyer would like to advise you as follow:
– According to Vietnamese law: The agents are not allowed to register the trademark of the manufacturing company without permission from the manufacturing company. In case the agent intentionally registers, the manufacturing company has the right to file an opposition against the application or a request to invalidate the trademark registration certificate.
– In this case, in order to give more detailed advice, we will need the following information:
+ Are there any clauses in the contract between you and the Korean company regulating on the matter of trademark registration in Vietnam?
+ Are you merely a distributor? Or do you hire the Korean company to carry out the manufacture? After receiving the above information, A&S Law will advise you with detailed course of action. If you have any other questions, please contact lawyer Thich – Industrial Property Representative at 0922772222.
A&S Law trademark registration service
A&S Law is an industrial property agent licensed by the NOIP on September 13, 2013. A&S Law has represented more than 3,000 domestic and foreign individuals, organizations and businesses to submit 4873 trademark applications (as of July 2020) at the NOIP.
A&S Law receives a lot of trust and appreciation from clients and partners such as: Viettel; VTC; LOTTE; AEON MALL; CEND LAND; VIGLACERA; REDSUN…
Service scope of A&S Law
+ Advising and answering questions before carrying out the trademark registration procedure;
+ Classifying goods/services;
+ Preliminary advising on the subject matter of the registration;
+ Conducting preliminary trademark search to foresee the probability of trademark registration;
+ Conducting official trademark search;
+ Preparing and drafting trademark registration dossier;
+ Filing the application on behalf of the customer, monitoring the application and notifying the results to the customer;
+ Drafting and filing responses to the notifications and decisions of NOIP;
+ Monitoring and handling the trademark infringement;
+ Sending notification on the validity and the renewal of trademark certificate to the trademark owner.