1. Definition of Invention/Utility Solution Inventions are technical solutions relating to a product or process which is to solve a…
1. Definition and Registrability
A trademark is defined as a sign used to distinguish the goods or services of one producer/service provider from those of another. The trademark may be presented in the form of words, letters, figures, pictures or a combination thereof in one or several colors. In order to be registered, a trademark must be distinctive and must not fall within the signs excluded from registrability. The registrability of a mark is particularly prescribed under our law.
Collective mark is a mark used to distinguish goods or services of members of an organization that is the owner of such a mark from goods or services of non-member entities or individuals.
Certification mark is a mark that is authorized by the owner to other organizations or individuals for use on their goods or services in order to certify characteristics with respect to origin, materials, method or mode of goods manufacture, or service provision, quality, accuracy, safety or other definable characteristics of the goods or services bearing that mark.
Associated marks are the marks registered by the same owner, identical with or similar to each other and are used for identical or similar or related goods and services.
Well-known mark is a mark that has become widely known by the consumers throughout the territory of Vietnam.
2. The right to file trademark application
All individuals and entities involved in legal production and business activities are entitled to file applications for trademark registrations to be used for products or services they are manufacturing or providing or intend to manufacture or provide.
Actual or prior use of a trademark is not required to get trademark registered in Vietnam.
3. “First to File” Principle
The “first to file” principle is applied for trademark protection in Vietnam also, accordingly the trademark registration will be granted to the person who first filed the trademark application.
However, the “first to file” principle shall not apply to cases of well-known marks under the Paris Convention or those which have been widely used and recognized. In such cases, the priority will be given to the person who can prove that his trademark has been well-known or been widely used and recognized, without subject to the “first to file” principle.
Applicants for trademark application are allowed to claim priority based on the earlier application filed in a foreign country or an officially recognized international exhibition held in Vietnam or in a foreign country under Paris Convention. The priority also may be claimed according to a bilateral agreement with Vietnam.
To enjoy the priority right under the Paris Convention, the trademark applicant must be filed within 6 months
6 months from the filing date of the first application filed abroad or the date of the exhibition as above mentioned.
5. Examination of a trademark application
All trademark applications will be examined by the NOIP with respect to formality requirements within 01 months from the filing date. If the application is found to satisfy the formality requirements, then it will be accepted as legitimate by the NOIP in a Notification of Formality Acceptance. This Notification provides official filing date, official filing number, and priority date if any.
The application will be published in the IP Gazette within 2 months from the acceptance date.
The substantive examination of a trademark application will be taken within 09 months from the date of publication of the application.
The substantive examination is to consider whether the claimed trademark haves registrability or not. During this period, the applicant may make amendments to the application.
In case the trademark is found to be registrable, the NOIP grant Certificate of Trademark Registration for the trademark.
At any time during the period from the publication to the grant of Certificate of Registration, the applicant or any third party whose rights and interests are directly related to the granting of a patent shall be entitled to file written opposition with the NOIP, opposing either the grant or refusal to grant a patent.
Any opposition/appeal must be made in writing, accompanied by argumentation, and/or evidence to support the opposition. The opposition/appeal on the first instance must be submitted to the NOIP within 90 days from the date of receipt or awareness of the NOIP’s notification relating to refusal or grant of a patent as referred to above. In the event the party who file the opposition/appeal does not agree with the NOIP’s decision on the opposition, the party may appeal either to the MOST or the court.
6. Protection Term and Renewal
A certificate of trademark registration shall be effective from the granting date and last for 10 years from the filing date, and can be renewed for indefinitely for each consecutive 10-year term.
To renew the validity of a certificate, the trademark owner must apply for renewal and pay the renewal fee within 6 months before the expiry of the preceding validity term. Renewal request may be filed late within a 6-month grace period, subject to a fine of 10 percent of the renewal fee for each month overdue.
The registered trademark may not be non-used for any five consecutive years. Otherwise, the trademark registration is vulnerable to suspension upon request of a third party.
7. Rights and Obligations of Trademark Owners
A trademark owner is entitled to (i) exclusive use of the trademark, including the right to license the right to use the trademark, (ii) request any person infringing his trademark rights to cease from the infringement and ask for any damage suffered.
The trademark owner must use the trademark continuously and must not discontinue use of the trademark for any consecutive 5 years. Otherwise, the certificate of trademark registration shall be suspended at a third party’s request.
8. Appeal/Opposition Proceedings
The applicant may lodge appeals/oppositions against the NOIP’s rejection of acceptance of applications or of granting certificates. Any third party has the right to appeal or oppose the grant of a certificate of trademark registration, subject to a prescribed fee.
The appeal/opposition must be made in writing and submitted to the NOIP within 3 months from receipt of the NOIP’s decision subject to the appeal/opposition. In case of a third party opposing the grant of a certificate of trademark registration, the opposition may be filed at any time during the validity term of the certificate. The NOIP shall be obliged to reply to the appellant within 30 days from receipt of the opposition. In case of disagreement with the NOIP’s response, the appellant may appeal further to the MOST or initiate a lawsuit against the NOIP at the administrative court under the People’s Court System.
9. Cancellation and Suspension of Certificate of Trademark Registration
The grounds for cancellation are as follows:
a. The person who has been granted the certificate was not entitled to apply for the trademark registration, nor assigned that right from the entitled person; or
b. The trademark under the certificate does not meet the protection criteria.
The grounds for suspension are as follow:
(a) The trademark owner a written request to the NOIP for abandonment of the certificate;
(b) the person who has been granted the certificate fails to pay the renewal fee as prescribed;
(c) The trademark under the certificate has not been used for any consecutive 5 years without any justifiable reasons;
(d) the trademark owner no longer exists, and there is no lawful successor.
10. Trademark applications filed into Vietnam under Madrid System
– Trademark applications filed internationally under the Madrid System shall be also subject to the substantive examination which lasts 12 months from the date of publication of the extension of protection to Vietnam by WIPO.
– Regarding the international trademarks filed under the Madrid System, the NOIP will issue Decision of Acceptance of Protection for the trademark. The international registration of a trademark, accepted for protection in Vietnam by the NOIP, shall be effective from the date it is published in the IP Gazette until the end of the 20-year term of the international registration.
Where the trademark is unregistrable, the NOIP will issue a Notification of Examination Result of Application notifying the applicant of the intended Decision on Acceptance and reasons therefore, or of the deficiencies which should be corrected. The applicant has 02 months to reply or make necessary amendments. If the applicant fails to reply or the response is not appropriate, the NOIP will officially issue a Notification of Refusal of Protection. To the contrary where the response is satisfactory, the Decision of Acceptance of Protection will be granted as above mentioned.