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TRADEMARK REGISTRATION PROCEDURE

27/08/2020 - 06:28
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One of a company’s most valuable intangible assets is its trademark portfolio. Sometimes the brand name owned by the company is worth more than the total sum of its factory, investment equipment, products, items, and services combined. As a result, implementing trademark registration is not only a requirement and adequate step for each good and service before entering the market, but it also serves as a base for the growth of an enterprise’s tangible assets. The reputation, caliber, and consumer trust for a specific good or service are connected to the trademark of those goods and services. Moreover, it serves as a means of identifying one business unit’s products and services from those of another.

Subjects entitled to trademark registration

Subjects eligible for trademark registration include individuals, organizations and enterprises (According to the provisions of the Intellectual Property Law). Which includes:

  • Vietnamese individuals, organizations and enterprises.
  • Foreign individuals and organizations.

If the subject is an individual, a Vietnamese company can register the mark by itself directly at the Intellectual Property Office or through an intellectual property representative to register the mark. On the other hands, foreign individuals, organizations and enterprises wishing to register a trademark in Vietnam are required to file a trademark registration application through an intellectual property representative company.

Note: Even when a trademark has been given a Trademark Registration Certificate, if it is not utilized for five years in a row, another party may demand it to lose its validity.

Product grouping, goods of the brand

The classification of registered trademarks is based on an international classification of goods and services (Nice Classification – NCL) which is applied worldwide. Although there are many different types of goods and services available on the market, the Nice Classification only recognizes 45 classes. This has 11 groups for services and 34 groups for goods. The cost of registering a trademark in Vietnam is determined by the number of class of products and services for which the mark is registered. Therefore, the registration price will increase as clients register additional categories of goods and services.

Steps to conduct trademark search and registration

To assist companies and individuals in swiftly and expertly securing trademark rights for their goods and services prior to launch. Tue Phong will provide the following guidance for finding and registering trademarks for goods and services as of 2020:

Step 1: Trademark Inquiry

Customers send trademark samples and the list of good and service bearing the trademark to Intellectual Property Representative, in this case, Tue Phong, for preliminary examination and assessment of the possibility of trademark registration.

Free preliminary search: Tue Phong will conduct a free preliminary search for customers to evaluate the registrability of the mark within 01 day since the customer provides information.

After said preliminary search, if it is founded that the trademark is not registrable, Tue Phong will advise and give relevant oppositions to help find a solution for the trademark that can eventually be given a certificate.

In-depth research before filing a trademark application

In the event after the preliminary search, it is founded that the mark is likely to be registered, the next step will be an in-depth search through Vietnamese and international data to best evaluate the possibility of granting a protection title. for trademark. This is not a mandatory step, but it should be done to increase the possibility of trademark registration and save time.

The intensive search is a completely voluntary procedure on the part of the application. However, this procedure should be carried out as it is the first and most important step in the preliminary assessment of whether a trademark should be filed for protection.

However, the trademark search is only designed for reference only, and in no way a basis for granting or not granting a Trademark Registration Certificate (partially related to the priority right of trademark registration as described in the above section).

Dossier regarding trademarks search in which the customers need to prepare included: 03 trademark samples with size larger than 3×3 cm, not exceeding 8×8 cm.

The intensive trademark search procedure under Tue Phong will usually takes 1-3 working days.

The results: Notice of trademark search results

Step 2: Submit a trademark registration application and monitor the trademark registration process at the National Office of Intellectual Property

Stage 1: Submission of a trademark registration declaration (submission of a trademark application):

After an in-depth search and the trademark is judged to be registrable, Tue Phong will conduct trademark registration at the Intellectual Property Office for your application.

Dossier for trademark registration customers need to prepare

  1. Power of attorney (attached form)
  2. 01 sample of trademark (not less than 3×3 cm, not exceeding 8×8 cm)
  3. List of products and services intended for trademark registration.
  4. Tue Phong will prepare the remaining documents as prescribed for the trademark registration application.

In addition to the necessary documents mentioned above, in case a customer registers a collective mark, the certification mark needs to be provided to Tue Phong as follows:

  • Regulations on the use of collective marks/certification marks.
  • An explanation of the characteristic (or specific) nature and quality of the product bearing the mark (if the registered mark is a collective mark used for products of particular characteristics or is a quality certification mark). quality of the product or a mark of geographical origin);
  • Map identifying the territory (if the registered mark is a mark certifying the geographical origin of the product).

State agency responsible for receiving and processing trademark registration dossiers in Vietnam: Vietnam Intellectual Property Office.

The result of stage 1: Trademark registration declaration form

Stage 2: Formal examination of the trademark application

The time limit for formal examination of a trademark registration application is 1 month from the filing date.

  1. The NOIP will consider the application for eligibility in terms of form, label form, application owner, filing right, subheading, etc.
  2. If the enterprise’s application meets the conditions, the NOIP will notify the acceptance of the valid application and publish the application.
  3. If the enterprise’s application does not meet the conditions, the Intellectual Property Office will issue a Notification of not accepting the application and request the enterprise to perform amendment. Enterprises make amendments as required and submit the documents to the Intellectual Property Office.

The result of the 2nd stage of the trademark application: Acceptance of the valid application

Time limit for publication of trademark registration applications: 02 months from the date of the Notification of acceptance of the valid application.

Contents of announcement of a trademark registration application are information related to a valid application stated in the Notification of acceptance of a valid application, a sample of the mark and the attached list of goods and services.

Stage 3: Substantive examination of the trademark application:

Time limit for substantive examination: 09 months from the date of application publication.

  • The National Office of Intellectual Property considers the conditions for trademark registration, thereby assessing the possibility of granting a title to the trademark registered by the enterprise. If the trademark registration application satisfies all conditions, the National Office of Intellectual Property shall issue a Notice of intention to grant a diploma for the trademark registered by the enterprise.
  • If the trademark registration application does not meet the conditions, the National Office of Intellectual Property shall issue a Notice not to grant a title to the trademark registered by the enterprise. Enterprises consider and send official correspondence to respond, complain about decisions of the National Office of Property, and at the same time provide grounds for granting trademark protection titles to their trademarks.

The result of stage 3: Notice of intention to grant trademark protection title and payment of licensing fee

Stage 4: Receive the certificate of trademark registration and hand it over to the customer

The result of stage 4: Certificate of trademark registration

After the decision to grant the certificate is issued, Tue Phong shall inform the enterprise to proceed to pay the fee for the Certificate and return the trademark protection title to the customer.

Time limit for grant of title: 02-03 months from the date of payment of certification fees.

Duration of trademark protection

Trademarks are protected for 10 years from the filing date (also known as “priority date”). Enterprises can renew their protection titles and there is no limit on the number of renewals. Therefore, the trademark will be an asset throughout the operation and business process of the enterprise.

Some notes when carrying out trademark registration procedures:

With regards to trademark registration with the registration of trade names, domain names, copyright registration of applied art works for logos (image marks)

  • The homogeneity between the trademark registration and the trade name of the enterprise

When you register a trademark, you should simultaneously register a company name that has a part of the registered mark: For example, Tue Phong trademark registration company should also be the name of the company, such as: Company….Tue Phong … in order to avoid this type of event: After more than 1 year, since the mark is granted a title, from the time of filing the application to the time of granting the degree, a competitor registers a trade name with part of your trademark text, leading to the case where the trademark has already been granted a protection title, but the trademark owner cannot handle violations or request the opponent to stop using the trade name because the opponent has registered the trade name before the date, he is granted the license. brand. This is an unreasonable provision of the Intellectual Property Law and the Law on Enterprises that the applicant himself should pay attention to to avoid unnecessary risks.

Consistency between trademark and domain registration

In case if the customer registers a trademark and the company’s company name (trade name) is not identical with the registered trademark, you can choose to add a domain name registration option (especially the domain name registered by the Company). The management country of Vietnam has the ending “.vn” to prove the registration of the mark together with the domain name.The reason why the trademark registration is taking a long time to establish the right of the application owner needs time from Over 01 year or more. Also to avoid the risk as analyzed above, later the trademark is granted by the trademark owner, the trademark owner can ask the opponent to register the trade name after the time of registration of the trademark and domain name. stop the infringement of intellectual property.

Homogeneity between trademark registration and applied art copyright registration for trademarks with image and text parts

For image marks (ie logos) when registering with the same information as text marks, customers who do not register a company trade name, or do not have the need to register a domain name, have more options when registering a trademark. At the same time, it also registers the copyright for applied art works for the trademark with both text and image parts. This registration is similar to the registration of a trade name, a domain name is to avoid the case that after the trademark is granted, a competitor has registered a company name, domain name before the date the trademark is granted a license. then the trademark owner has enough grounds to request an unfair competitor to stop the infringing act or request the business registration office to revoke the part of the name showing signs of rights infringement.

Note about color when registering trademark

According to the provisions of the Intellectual Property Law of Vietnam, there are no specific provisions on the scope of protection of black – white and color trademarks, as well as registration of black – white marks or registration of color marks. absolute rights to the single owner. However, the practice of trademark protection in Vietnam allows a trademark registered in black-and-white that can be used in different color forms, as long as the text/image contents of the trademark are preserved. trademark and does not infringe the rights to another person’s registered black-and-white or color trademark.

Therefore, Tue Phong’s point of view is that for individuals and businesses carrying out trademark registration in Vietnam, who want to save costs in the process of trademark protection, or choose between registering a color or a color mark. Black and white, it is preferable to register a trademark in the form of black and white.

Notes on registration of image marks (also known as logos), word marks, positioning sentences (slogans) when registering trademarks:

Image marks (also known as logos): Can be independently registered for protection as a trademark or combined with the text of the mark, positioning sentence when registering the trademark.

Text marks: When registering a word mark, the application owner can choose the form of the registered trademark word in the following forms:

The first type of trademark registration: It is simply made up of standard letters or numbers and is only in simple black-and-white color. The owner of a standard font trademark has a fairly broad right to use the registered mark, that is, the right to use the mark in any font or color that he or she wants as long as it does not infringe the rights of a trademark. others are protected. Such use will not prejudice the protected content of the mark.

  • The limitation of this first type of trademark registration should be noted that in such arbitrary use, only the content of the mark is protected, while the unique font or presentation as well as the color of the mark is protected. trademarks will not fall under the protection of standard trademarks that have been registered and granted a protection title.

The second type of trademark registration: Composed of letters, words, numbers that are stylized or illustrated or contain colors. A trademark registered in this form is obviously still protected in terms of the core content of the mark, which is the letter structure, pronunciation and meaning of words (if any) like a standard printed mark. However, because the mark is also protected by an additional presentation (typeface or special presentation), its protection is further enhanced against the competitors’ attempts to access the mark. brand is not only about the content but also about the expression of the brand.

  • The limitation of this second type of trademark registration is that when registering a stylized letter mark, the right to use the stylized word mark is restricted because the owner can only use the mark exactly as the registered model without permission. optionally use the mark in other letterforms or in other ways.

Notice of priority affecting trademark applications

Priority in trademark registration affects whether or not to grant protection titles to other subjects’ trademark applications. According to the provisions of the Intellectual Property Law and relevant international treaties, from the date of filing the first application to the date of filing in Vietnam, another subject files an application for the same subject in the first application. then the first applicant’s application is still considered to have the same filing date as the first filing date and is given priority protection. Because of that, no one dares to confirm that a trademark application and has looked up the status of trademark registration will definitely be granted a protection title.

Some notes when designing, choosing to register a trademark

  • To ensure the possibility of exclusive protection for their trademark, businesses need to design a trademark that is unique, reflects the distinctive features of their goods and services, and at the same time must be different from the mark of another entity.
  • Trademarks can be a combination of text and images. In case the mark is just words, it should be stylized so that it can be granted a protection title when registered.
  • Some elements that are not granted protection titles (ie exclusionary signs that should not be used as trademarks) include:
    • Trademarks should not be designed with shapes, simple geometric figures, numbers, letters, words in uncommon languages,
    • Trademarks should not be designed as conventional signs, symbols, drawings, or common names of goods or services in any language (such as translated into English, Japanese, Chinese, Latin, etc.). …)
    • Trademarks should not be designed as signs indicating time, place, production method, type, quantity, quality, nature, composition, use, value or other descriptive characteristics. goods, services;
    • Trademarks should not be designed as signs describing legal forms and business fields;
    • Trademarks should not be designed as signs indicating the geographical origin of goods or services;
    • The best way to assess the possibility of trademark protection is to do a trademark search before filing a trademark application. Tue Phong is ready to do a free preliminary search for customers before carrying out further work in the trademark registration process.

frequently asked Questions

Who has the right to register a trademark in Vietnam?

  • Vietnamese individuals, organizations and enterprises;
  • Foreign individuals and organizations. (For individuals, organizations and foreign enterprises that want to register a trademark in Vietnam, they must file a trademark registration application through an intellectual property representative company such as Intellectual Property Co., Ltd. and Tue Phong Technology).

What is the product grouping of the brand?

The classification of registered trademarks is based on the International Classification of Trademarks (Nissan Classification) which is applied worldwide. All goods and services on the market have many types, but according to the Trademark Classification, there are only 45 groups. In which, there are 34 groups for goods and 11 groups for services. In Vietnam, the fee for trademark registration is charged based on the group of goods and services for which the mark is registered.

Why do you need a trademark search?

Does a trademark search to determine if the mark intended to be filed is similar to the trademarks of other entities previously registered? At the same time, evaluate the possibility that the applied mark will be granted a protection certificate or not?

Why registers a trademark?

Registering a trademark for a new user is first to avoid infringing on someone else’s trademark. But more importantly, trademark registration for businesses, besides promoting brand promotion activities of enterprises, creating trust in relationships with customers, businesses also have a legal basis to protect them. their rights against unauthorized use of that mark.

How long is a trademark protected?

Trademarks are protected for 10 years from the filing date (priority date). Enterprises can renew their protection titles and there is no limit on the number of renewals. Therefore, the trademark will be an asset throughout the operation and business process of the enterprise.

Trademark registration consulting service of Tue Phong

  • Legal advice on procedures and conditions for trademark registration.
  • Advising on the feasibility of trademark registration.
  • Free preliminary search for the possibility of trademark registration.
  • Official trademark search at the National Office of Intellectual Property – Independent cost.
  • Trademark registration representative for customers in the process of trademark registration.
  • Drafting trademark registration dossiers.
  • Submit dossiers and monitor the process of application registration and examination at the National Office of Intellectual Property.
  • Representing clients in the entire process of establishing rights and responding to correspondence with the National Office of Intellectual Property about trademark registration.
  • Exchange and provide information to customers in the process of trademark protection registration.

Businesses and individuals wishing to register trademarks, please contact Tue Phong for advice and detailed instructions on filing documents, how to classify marks, and procedures related to trademark registration applications. trademark or problems arising in the process of trademark registration.