Trademark plays an essential role in the overall intellectual property rights of a business. A trademark is not only to identify goods or services of a business with specific quality, origin and usefulness, but also to prevent unauthorized use of others. As a result, companies should be aware of the expiration period of trademarks to maintain their validation of trademark protection.
Business’ exclusive trademark rights are maintained by registration. If they do not renew certificate of trademark registration on time, they lose their rights. There are billions of competitors waiting to come in and take over the ownership, which means the brand’s name, logo, tagline and other similar things are no longer belong to them. As a consequence, the owner of trademark loses their contractual rights over the exclusive trademark right; no assignment related to that trademark can be done and trademark infringement by another company will appear.
Therefore, how long is a trademark valid for? The Registrar issues a trademark certificate with the exact date of registration mentioned explicitly, and trademark is granted for ten years from that date and must be renewed to keep the trademark certificate active. The trademark owner can apply for renewal unlimited times consecutively, each for ten years and can be protected forever if it is extended on time.
Within six months prior to the expiration of the Certificate of Trademark Registration, the trademark owner shall submit a request for renewal and pay the prescribed fee to the National Office of Intellectual Property of Vietnam (NOIP). The proprietor must submit the renewal application carefully during that period. It will ensure minimum cost and quicken the process simultaneously. The application for extension may be filed later than the time limit stated above but not later than six months from the date on which the Certificate of Trademark Registration expires. In that case, for each month of late submission, the Registrar has to pay 10% of the extra fee beside renewal fee itself.
During that period, if the application for trademark renewal has not been filed under any circumstances, the Registrar fail to renew the trademark. That can happen when renewal fees have not been paid. Trademark can be left expired, but that means the owner leaves it open for another company or user to register and use it. If the products or services provided by them are different from the owner’s, the other company may have an easier time acquiring that trademark.
On the other hand, in many countries, to renew a trademark the owner must show that the mark is in use. In Vietnam, proof of use is not actually required to renew registration once the trademarked term expires.
To renew a trademark, the owner of trademark can contact a Trademark Attorney to file the registration renewal. According to the provisions of Circular No. 01/207/TT-BKHCN on the application file for renewal of a trademark protection title, the following documents are required.
1, A declaration for trademark renewal registration, made according to Form No.02 -GHVB specified in Appendix C of Circular 01/2007/TT-BKHCN;
2, The original of the Certificate of Trademark Registration (in case the renewal is required to be recorded in the Certificate of Trademark Registration);
3, Power of attorney (if the application is filed through a representative);
4, Receipt of payment of renewal fee, announcement of the renewal decision and registration of the renewal decision of the Certificate of trademark registration according to regulations.
After the trademark renewal dossier would be sent successfully, the NOIP shall consider the request for extension within one month from the date of receipt. In case the application has no deficiencies, the NOIP shall issue a decision to extend it, record it in the certificate, register it and publish it in the Industrial Property Official Gazette.
If the request for extension is invalid or filed in contravention of the prescribed procedures or the applicant requesting the extension is not the holder of the corresponding certificate, the NOIP will issue a notice of its intention to refuse extension and request the applicant to correct those errors. If within one month, the applicant fails to correct those errors and has no objection or has inaccurate objection, NOIP shall issue a notice of refusal extend.
Certificate of Trademark Registration’s owner should be aware of some following notes.
Firstly, after a trademark has been granted a Certificate, if the owner does not use the mark continuously for a period of 5 years from the filing date, that Certificate may be canceled by another party.
Secondly, after five years from the expiry date of a Certificate that the owner does not renew it, another party can have permission to register that mark.
As an exception, the well-known trademark will be protected automatically without go through registration procedures. Owners of that trademark only need documents proving their ownership and showing that their mark meet the conditions for being considered as the well-known one. Thus, the trademark will be recognized as a well-known trademark and protected immediately.
In terms of the well-known trademark protection, the law currently has no regulations of well-known trademark registration in Vietnam. However, if the above criteria are not met, the trademark will no longer be considered well-known and protected.