How to protect your trademark in Vietnam?

How to protect your trademark in Vietnam?

In Vietnam, trademark registration is the first step in obtaining trademark protection. A trademark opposition may be filed to prevent a mark application that is pending from being granted. Litigation is the last option for resolving disputes involving trademark protection in Vietnam.

A trademark is a sign that helps separate one company's goods or services from those of others. Products and services trademarks play a crucial role in the expansion of the business, alongside patents and industrial designs. A trademark connects a business and its clientele. Customers will be more likely to use goods or services if the trademark is strong. The infringement of a trademark is inevitable when the trademark is well-known and has significant economic benefits from the sale of goods or services.

The owner of a trademark has two options for registration: either directly register a trademark in Vietnam by filling out a registration application with the Vietnam NOIP, or use Madrid's system to seek protection in Vietnam. In accordance with Vietnam's intellectual property law, the trademark owner must prepare, apply for registration, and pay a fee for the first option. If a trademark needs to be protected in multiple countries, such as Vietnam, the owner can register it using Madrid's system.

The trademark owner must assess the degree of infringement and damage in each location where a trademark violation occurs in order to select appropriate solutions. In the beginning, the owner of a trademark may protect themselves by requiring the trademark violator to stop their violations, apologise, and make amends. Owners of trademarks have the right to seek compensation in the event of damage. If negotiations or mediation fail, the trademark owner can use a settlement mechanism or submit a denunciation application to the Vietnam NOIP and ask the appropriate state agencies to handle acts of infringement. Acts of infringement may necessitate litigation. In general, civil litigation proceedings are more complex than arbitration proceedings. Civil litigation takes precedence when the trademark owner requires a court decision to end trademark infringement. In the remaining cases, arbitration is the better option because it is less expensive, takes less time to settle, and is more adaptable.

The client company's competitive advantage is heavily reliant on trademarks. Through trademark registration, oppositions, and other trademark protection resolutions in Vietnam, ANT Lawyers' IP service in Vietnam assists you in securing protection for these priceless intellectual assets.

 

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Trademark protection in Vietnam

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

 

Trademark protection in Vietnam

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year. Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

Trademarks are an important part of client company’s competitive edge. ANT Lawyers, IP service in Vietnam helps you protect these valuable intellectual assets through trademark registration, oppositions, and other trademark protection resolutions in Vietnam.  

 

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Intellectual Property and Trademark Registration Services in Vietnam

 

In Vietnam, many businesses today have not paid sufficient attention to trademark protection. Only when their trademarks would be infringed by other companies or competitors, they really concern to protect their trademarks and business through trademark registration, trademark opposition or take further actions. Such situation will negatively impact the business financially.

Trademark Registration services in Vietnam

Trademark rights will be protected within the national territory, therefore when a trademark has been registered in Vietnam, it will be protected in Vietnam. If one company wishes their trademarks to be protected in other countries, it could:

-Directly register in each country or

-Register via the Madrid International registration by filing a single application which indicates the registrations at respective countries.

If registered under the Madrid International, firstly, trademarks must have been submitted trademark applications or have registered in Vietnam, depending on whether the country for protection is under the Madrid Protocol or the Madrid Agreement.

Law on Intellectual Property and its related documents could also be referred to for further information.

ANT Lawyers’ services in the field of trademark registration advice covers:

-Look-up, assess and consult possibilities to register trademark in Vietnam and abroad;

-Represent clients in applying for certificates of trademark registration, record modification, extend degree of trademark protection in Vietnam and abroad;

-Evaluate the effectiveness of the certificate of trademark registration in Vietnam and the possibility of trademark rights violation;

-Implement of the protected trademark rights: investigate, monitor, negotiate, seek arbitration or initiate a lawsuit or request other competent agencies for handling of infringement in Vietnam and abroad;

-Negotiate, draft, evaluate and register the of changing trademark ownership in Vietnam and abroad;

-Advise on building strategies, brand development;

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

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When and How to Register Trademark to Protect IP Rights

Considering trademark registration activities, the subject holder must comply with certain conditions to fulfill its trademark registration rights.

According to Article 13.1 Law on Intellectual Property amended in 2009:

-Organizations and individuals may register marks to be used for goods they produce or services they provide.

Register trademark in Vietnam

-Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.

-Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

-Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

-Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: i) This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; ii) The use of this mark causes no confusion to consumers as to the origin of goods or services.

If the subject falls into one of the cases mentioned above, they will have the right to register the mark at the National Office of Intellectual Property. After the subject condition has been met, consideration should be given to the condition that a mark can be protected as a trademark. In particular (i) It is a visible mark in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; (ii) It is capable of distinctive goods or services of the mark owner from those of other subjects.

However, there are some exceptions even when the mark satisfies those two conditions. For example, marks identical with or confusingly similar to national flags or national emblems; or marks identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations shall not be protected as a trademark.

In order to register for protection of a trademark, the registrant should pay attention to the subject matter and the conditions for the trademark to be protected in order to avoid being refused at the registration authority because of the failure to meet the conditions for the subject or the conditions for protection.

IP Attorney at ANT Lawyers – a Law Firm in Vietnam, a licensed IP agent in Vietnam shall be providing the advice to client to help the clients evaluate and file registration for trademark, patent, copyright and other IP related services

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What To Do When the Trademark Certificate is Misplaced?

Trademark is a type of asset of individual and organization. To be officially recognized as an owner of that trademark, the applicant needs to submit the trademark registration dossiers to National Office of Intellectual Property in Vietnam (NOIP), pay the examination fee and certificate issuance fee to receive the trademark certificate.

Trademark protection in Vietnam

The trademark owner needs to have the consciousness of protecting the trademark certificate. However, if unfortunately, the trademark certificate is misplaced, lost or damaged, torn, stained or faded out that it can no longer be used, the trademark owner may submit the dossier to NOIP to request for regranting the trademark certificate.

The specific required documents for re-granting the trademark certificate are:

-The declaration for regranting the trademark certificate;

-01 mark specimen;

-Power of attorney (if submit the dossiers via IP agent).

NOIP will consider the dossier within 01 month from the date of submitting. In case the dossier satisfies the provisions of law, NOIP will issue the decision to regrant the trademark certificate and record into the National Register of Industrial Property. The information in the duplicate version of the trademark certificate will present sufficiently the information in the first-granted trademark certificate and attached with the phrase “regranting version”.

In case of request for regranting the trademark certificate does not meet the provisions of law, NOIP will issue the denied decision and clearly sates the reasons.

If the client needs any other information or requires for further advice, our IP attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be available for service.

ANT Lawyers in a law firm in Vietnam, recognized by Legal500, IFLR1000. We are an exclusive Vietnam member of Prea Legal, the global law firm network covering more than 150 jurisdictions. The firm provides a range of legal services to multinational and domestic clients. For advice or services request, please contact us via email ant@antlawyers.vn, or call us +84 24 730 86 529.

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Legal consequences of the trademark with origin in Vietnam and designation EU registered under Madrid system after Brexit

After 47 years being a member of EU, UK officially left EU on January 31, 2020. This is an almost half of century relationship, thus, there would be a number of arising confusion as well as the issue which is in need of negotiation to complete the process including trademark registration with origin from Vietnam.

 

Trademark protection in Vietnam

UK is the member of Madrid system from Dec 1st, 1995, concurrently, EU has also officially become a member of this system since Oct 1st, 2004.  According to the international trademark searching Madrid Monitor, there are 292 Vietnamese trademarks registered internationally designated EU which include both the trademarks during the examination period and granted certificate.

How is the fate of these trademarks after Brexit?

According to the guidance from Intellectual Property Office of UK (“IPO”), the owner or applicant of the trademark which submitted according to the Madrid system and designated EU need to note the following points:

International trade mark registrations protected in the EU (“EUTM”) under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021. According to Brexit Agreement, IPO will create a system: “comparable UK trademark” in relation to each international (EU) trade mark designation. In case EUTM are still in the examination period, the applicant has the right to register that exact trademark in UK in the transition period from January 1st, 2021 to September 30th, 2021. In details:

Firstly, to the trademarks which has been protected, UK will:

-Be recorded in UK registration system;

-The recorded trademark will have the same legal status as the trademark protected according to UK law;

-Keep the submitting of the application as EUTM;

-Keep the priority date according to the Madrid system or seniority date according to UK law;

-Be recognized as independently existing trademark according to UK law and may be challenged, assigned, licensed or renewed separately from the original international registration.

However, it is noted that: (i) the Comparable trademarks will be created at no cost to the holder of the international trademark, except a minimal administrative burden will be placed upon the rights holder (ii) the applicant will not receive the trademark certificate, however, they could be searched for the trademark at GOV.UK.

Secondly, for the EUTM which are still in examination phase:

In case EUTM are still in examination phase, on January 1st, 2021, the applicant has the following rights:

-Apply the trademark application in UK for EUTM during the transition, nine months from January 1st, 2021 until September 30th, 2021 as mentioned above;

-Keep the earlier filing date as EUTM;

-Enjoy other international priority claim effecting on EUTM in accordance with the seniority claim according to UK law.

However, it is noted that when applying the EUTM during the examination phase according to the UK trademark system then:

-The trademark applied in UK must be the same with the trademark in EU application which submitted previously;

-Goods/services required to protect of the trademark must be the same or included in the scale of EUTM.

In case the application submitted into UK does not satisfy the above criteria, the application would not enjoy the priority date or the priority claim of EUTM.

The application after having been submitted within that period and satisfies the criteria will be deemed as UK application and be examined according to UK law.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP. We routinely match inventors with experienced IP attorneys for a free consultation on our platform and offer a money back guarantee. 

 

 

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Is it possible to trademark a brand name if it's similar to one that exists?

In the United States, the key is determining whether there is a likelihood of confusion. In other words, are consumers likely to believe that the goods are made by the same person. Similarity of the marks is just one factor. Another important factor is the relatedness of the goods. If the goods are wine, for example, and you want to use a similar mark on a wine, then there would be a greater likelihood of confusion. If, however, the goods are orthopedic shoe inserts, then the likelihood of confusion is greatly reduced because few people would think that a winery made orthotics.

Registered trademark protection in Vietnam

There is an exception for famous marks because they are so strong. For example, if you saw a bar of APPLE soap, you might not think that APPLE has gone into the soap business, but you might think of Apple computers or products. That is called “trademark dilution” because it is likely to diminish the value of the APPLE trademark. In that case, likelihood of confusion has nothing to do with the analysis.

Source: Quora 

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.   Please contact our lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at +84 28 730 86 529

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How Vietnamese Companies Could Register Trademark in USA?

In order to expand business to the world market, the company should prepare the legal foundations before entering the foreign market or launching any products or services in another country. Many Vietnam companies aims to enter US market but there are opportunities and challenges.  One of our many issues are legal risks in intellectual properties protection law of the US. It is suggested the Vietnamese companies to consult with IP lawyers in Vietnam and US to register trademark and clear off such legal issues before launching products in the US.

Trademark in Vietnam 

              

When submitting for trademark registration in USA, individuals or enterprises need to comprehend its procedures to make the most reasonable choice.

Authority

The Vietnamese individuals and enterprises may directly file the dossiers for registration of US trademark to United States patent and trademark office (USPTO) or via Madrid System with US designation. However, if Vietnamese individuals and enterprises are not resident or do not have office in US choose to directly file the dossiers to USPTO, they must submit dossiers via a licensed US IP agent.

The required dossiers include:

-Trademark sample;

-Applicant’s information;

-Registration of goods/services;

-Filing basis.

Besides, based on each below filing basis, different dossiers would be required.

According to US Law, to the direct registration, applicant needs to file on following four basis:

1.Registration on the basis of Section 1(a). Accordingly, applicant will file the registration for the mark that already used in commerce in USA

On this basis, the applicant or their representative files used trademark application to USPTO. After 3 months from the filing date, the examiners will examine the dossiers to consider if it satisfies the protected criteria.

-If the examining attorney does not find grounds for refusing to register the trademark, and the application satisfies all legal requirements, the trademark will be approved for publication in the USPTO’s Trademark Official Gazette (TMOG) within one month for opposition. If there is no opposition or it is already resolved in regulated duration, then USPTO registers the trademark. Before the end of the first six-year period after the registration date, or within six months of the expiration of the sixth year with an additional fee, the applicant must file a Declaration of Use or Excusable Nonuse to keep the trademark alive. Besides, within one year before the end of every 10-year period after the registration date, or within six months of the end of the 10-year period, the applicant must file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal.

-If the examining attorney finds grounds for refusing to register the trademark, or if the application does not satisfy all legal requirements, the examining attorney issues a letter (office action) explaining those refusals and/or requirements. The applicant must respond to the office action within six months of the date it was issued. (i) If the applicant does not respond within regulated period, the USPTO will sent to the applicant a Notice of Abandon (ii) If applicant responds in regulated time and USPTO considers it is reasonable, USPTO then approves the application and publishes it on TMOG for opposition. If there is no opposition or it is already resolved in regulated duration, then USPTO registers the trademark. If applicant responds in regulated time and USPTO considers it is unreasonable, then examining attorney will issue a final action letter. If the applicant responds in regulated time and examining attorney considers it is reasonable then USPTO registers the trademark. Via versa, if the applicant do not respond in time, the application will be abandoned.

2.Registration on the basis of Section 1(b). Accordingly, for application based on intent to use the trademark in commerce

Basically, the procedure in this case are almost the same as filing basis 1(a). However, after USPTO approves the application and publishes on TMOG, USPTO then will issue a Notice of Allowance (NOA) instead of registering the trademark. A NOA is not a registration, but means that the trademark made it through the 30-day opposition period and will be allowed to register after the applicant timely files an acceptable Statement of Use (SOU). The deadline to file an SOU or request for extension of time to file an SOU (extension request) is calculated from the date the NOA issued. If applicant does not file an SOU or extension request within six months of the NOA date, the application will abandon.

3.Registration on the basis of Section 44(d). Accordingly, for application based on a foreign application within 6 months from the date of filing in other countries

After the application is submitted, if the examining attorney does not find grounds for refusing to register the trademark, and the application satisfies all legal requirements, he or she issues a suspension letter stating that no further action will be taken on the application until we receive the foreign registration certificate, as required for a herein Section 44(e) registration basis.

If the examining attorney finds grounds for refusing to register the trademark, or if the application does not satisfy all legal requirements, the examining attorney issues a letter (office action) explaining those refusals and/or requirements.

-In case there is no response from applicant, the application will be abandoned.

-In case the applicant has reasonable response and be accepted, USPTO will issue suspension letter. If USPTO has not received the required foreign registration certificate for the Section 44(e) basis, the examining attorney will issue a letter inquiring about the status of the foreign application (whether it has registered yet). A suspension inquiry letter will be issued every six months until the applicant submit the foreign registration certificate. (i) If the applicant do not respond to the inquiry from USPTO, the application will abandon (ii) If the applicant responds in accordance with providing foreign trademark certificate, there will be the following situations:

a.In case USPTO accepts the foreign trademark certificate and the examining attorney does not find grounds for refusing to register the trademark, and the application satisfies all legal requirements, USPTO then approves the trademark and publishes it on TMOG for opposition. If there is no opposition or it is already resolved in regulated duration, then USPTO registers the trademark;

b.In case USPTO accepts the foreign trademark certificate, however, the examining attorney finds grounds for refusing to register the trademark, USPTO will issue the action letter. (i) If the applicant does not respond within 6 months, the application will be abandoned (ii) If the applicant responds within 6 months, the response will be considered: In case USPTO considers the response is reasonable, the application will be approved and published for opposition, if there is no opposition or the opinion has already been resolved, the trademark with be granted certificate; in case USPTO considers the response is unreasonable, the applicant may continue to respond to Trademark Trial and Appeal Board (TTAB).

-In case USPTO does not accept the foreign trademark certificate, USPTO will issue notification and clearly state the reason. The applicant has 6 months to respond to the notification, otherwise, the applicant will be abandoned.

4.Registration on the basis of Section 44(e). Accordingly, for application based on a foreign trademark certificate, there are two cases as following:

-The application satisfies the requirements and USPTO publishes on TMOG for opposition;

-The application does not satisfy the requirements and USPTO issues the notification and clearly states the reason.

The procedures and duration for applicant and third parties have opinions are the same as above cases. After the trademark certificate is granted, the applicant needs to submit SOU and pay the fee to maintain.

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What is the meaning of trademark?

What is a Trademark?

A Trademark generally refers to a “brand” or “logo”.

Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.

Trademark in Vietnam

Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.

It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Compani­­es Act does not in itself give protection against others who might commence using identical or similar marks.

Use of TM, SM and ® symbols

'TM' stands for Trademark and 'SM' stands for Servicemark. The use of TM and SM symbols notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by one who has filed a trademark application.

The ® symbol, can be used only once the trademark is registered and the registration certificate is issued. Also, you may use the registration symbol only in connection with the goods and/or services in respect of which the trademark is registered.

The registration process is the same for both trademarks and servicemarks.

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.   Please contact our lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at +84 28 730 86 529

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What To Do When the Trademark Certificate is Misplaced?

Trademark is a type of asset of individual and organization. To be officially recognized as an owner of that trademark, the applicant needs to submit the trademark registration dossiers to National Office of Intellectual Property in Vietnam (NOIP), pay the examination fee and certificate issuance fee to receive the trademark certificate.

Register trademark in Vietnam 

The trademark owner needs to have the consciousness of protecting the trademark certificate. However, if unfortunately, the trademark certificate is misplaced, lost or damaged, torn, stained or faded out that it can no longer be used, the trademark owner may submit the dossier to NOIP to request for regranting the trademark certificate.

The specific required documents for re-granting the trademark certificate are:

-The declaration for regranting the trademark certificate;

-01 mark specimen;

-Power of attorney (if submit the dossiers via IP agent).

NOIP will consider the dossier within 01 month from the date of submitting. In case the dossier satisfies the provisions of law, NOIP will issue the decision to regrant the trademark certificate and record into the National Register of Industrial Property. The information in the duplicate version of the trademark certificate will present sufficiently the information in the first-granted trademark certificate and attached with the phrase “regranting version”.

In case of request for regranting the trademark certificate does not meet the provisions of law, NOIP will issue the denied decision and clearly sates the reasons.

If the client needs any other information or requires for further advice, our IP attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be available for service.

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