In the Vietnamese market, which is full of brand vitality, have your products received the protection they deserve? This guide will help you quickly understand the entire process of trademark registration in Vietnam and help you seize the opportunity in this growing market. From early preparation to long-term maintenance, we will provide you with professional and practical advice to help you discover common pitfalls and successfully obtain trademark protection.

Whether you are an entrepreneur entering the Vietnam market for the first time or an established business looking to expand your brand influence, we can provide you with valuable insights. We will analyze Vietnam’s unique trademark rules in detail, allowing you to master the key strategies for trademark registration in Vietnam and protect your brand’s success in this emerging Southeast Asian market!

Overview of Vietnam Trademark Registration

Trademark registration in Vietnam is managed uniformly by the National Office of Intellectual Property (NOIP). The agency is affiliated with the Ministry of Science and Technology and is responsible for accepting, examining and managing all types of intellectual property applications, including trademarks, patents and industrial designs. The establishment of NOIP marks an important step in the field of intellectual property protection in Vietnam, providing enterprises with a centralized A specialized and professional registration and management platform.

In Vietnam, trademark registration follows the “first-come-first-served” principle, which is consistent with the practices of many countries. This means that for identical or similar trademarks, the application filed first will usually be granted registration rights. This principle highlights the importance of timeliness, especially for companies that have just entered the Vietnamese market or plan to enter. Delayed application may result in others registering or similar trademarks first, thus affecting the company’s brand strategy in Vietnam.

Trademark protection in Vietnam adopts the territorial principle. This means that even if your brand has been registered or well-known in other countries, you need to apply for registration separately in Vietnam to obtain legal protection. This is especially important for multinational companies, which need to start trademark registration before entering the Vietnamese market.

Trademarks successfully registered in Vietnam have a 10-year protection period, calculated from the date of application. This period is consistent with the practice in many other countries and provides companies with relatively long-term brand protection. More importantly, this protection period can be renewed unlimited times, and each renewal is also up to 10 years. It ensures that companies can protect their brands in the long term and continuously, as long as they renew on time and continue to use the trademark.

However, having a registered trademark does not mean you can rest easy. Vietnamese law requires trademark owners to actually use the registered trademark. If a registered trademark has not been used for five consecutive years without justifiable reasons, any relevant party may apply to NOIP to cancel the trademark. This provision is intended to prevent “trademark hoarding” and ensure the effective operation of the registration system. , after registering a trademark, an enterprise should actively use the trademark in the Vietnamese market, or at least retain evidence of use.

Vietnam’s trademark registration categories adopt the internationally accepted Nice Classification, which divides goods and services into 45 categories. This classification method brings Vietnam’s trademark registration system in line with international standards, allowing multinational companies to implement global brand protection strategies. However, it should be noted that although multiple categories can be included in a single application, each additional category will increase the corresponding fee. . Therefore, enterprises need to select the application category in detail based on their planned business scope and future development.

 Preparation for registration

Before applying for trademark registration in Vietnam, you must make sufficient preparations. Below we will explore in detail two core preparatory tasks: trademark search and determining the category of goods and services.

1. Trademark search

A trademark search is a crucial preparation in the entire registration process. Its importance cannot be overstated. A comprehensive trademark search will help you understand whether your trademark conflicts with a registered or pending trademark, allowing you to evaluate the likelihood and potential risks of registration.

Vietnam trademark searches can be conducted in a variety of ways. The most straightforward method is to use the online database provided by the National Office of Intellectual Property of Vietnam (NOIP). The database contains information on all registered and pending trademark applications in Vietnam. The advantage of using this official database is that the information is authoritative and timely, but it should be noted that the interface may only be in Vietnamese, which may present certain obstacles for users who are not familiar with Vietnamese.

In addition to official databases, consider using some international intellectual property databases, such as WIPO’s Global Brand Database. Although these databases may be slightly delayed in update timeliness, they generally provide a more user-friendly interface and multi-language support.

But relying solely on online databases may not be comprehensive enough. You can hire a professional intellectual property agency to conduct a comprehensive search. These agencies can not only help you search for registered trademarks, but also search for unregistered well-known trademarks, business names, and even domain names. The advantage of professional agencies is that they have rich experience and professional knowledge and can conduct accurate analysis and risk analysis of search results. Evaluate.

When conducting a trademark search, you need to pay attention to the following points:

• Not only look for these two trademarks, but also consider trademarks that sound similar and are visually similar. In Vietnam, these similar trademarks may also constitute obstacles to registration.
• The search should cover all categories of goods and services for which you plan to register, as well as associated categories.
• Pay special attention to trademarks that have been applied for but not yet registered, as these may also affect your registration application.
• If you see a potential conflict, don’t give up immediately. You may consider adjusting the trademark design, narrowing the scope of goods and services, or exploring the possibility of purchasing or licensing an existing trademark.

A trademark search is not just a one-time job. It is also important to conduct regular update searches throughout the application process, in case new related trademarks are applied for or registered during your application.

2. Determine the categories of goods and services

Choosing the correct class of goods and services is another critical aspect of trademark registration. Vietnam adopts the internationally accepted classification (Nice Classification), which divides goods and services into 45 categories (categories 1-34 are commodities, and categories 35-45). The accurate selection of categories is not only related to the scope of protection, but also directly affects the success rate of the application. and the effect of subsequent rights protection.

When choosing a category, there are a few things to consider:

• Coverage of your existing business: First, make sure that all goods or services involved in your current main business are covered. For example, if you are a clothing company, category 25 (clothing, shoes, hats) is a must.
• Future development plans: In addition to existing business, the company’s development plan must also be considered. If you have plans to expand new business in the near future, it is best to include relevant categories in the application scope in advance.
• Related Related Categories: Some skin-irrelevant categories may actually be closely related. For example, clothing companies may also want to consider Class 18 (leather goods, handbags, etc.) since these tend to be accessories for clothing.
• Defensive registration: For core trademarks, you can consider defensive registration in some categories that are not highly relevant but may be exploited by competitors.
• Fee considerations: In Vietnam, each additional category will increase the corresponding fee. A balance needs to be found between protection coverage and cost.
• Specific to sub-categories: It is not enough to just select broad categories, you also need to select specific goods or services under each category. Vietnam is extremely strict on this point and does not allow the use of general category titles.
• Market local characteristics: Certain categories that may not be commonly used in other countries may be important in Vietnam. For example, given Vietnam’s motorcycle culture, Class 12 (Vehicle) may be more important than in other countries.

When determining the category, it is recommended to consult a professional intellectual property attorney. They are not only familiar with the classification system, but also understand the characteristics of the Vietnamese market and NOIP review trends, and can help you make optimal choices.

Additionally, it is worth noting that although Vietnam allows multiple categories to be included in one application (called a multi-category application), each category is reviewed independently. This means that even if applications in certain categories are rejected, others may still be approved.

The two preparatory processes of trademark search and category selection are key to ensuring smooth passage and obtaining full protection. Through careful preparation, you can maximize the success rate of trademark registration and lay a solid legal foundation for the development of your brand in the Vietnamese market.

Preparation of application documents

The National Intellectual Property Office of Vietnam (NOIP) has strict requirements for application documents. Withdrawal or non-compliance of any documents may result in the application being returned or this guide will detail the necessary documents that need to be prepared when applying for trademark registration, as well as in special circumstances Additional documentation may be required below. Therefore, when applying for trademark registration in Vietnam, you must prepare complete and meeting the required documents.

1. Necessary documents

For applying for trademark registration in Vietnam, the following documents are required:

First of all, the trademark application form is the most important document for the application . The application form must be filled out in Vietnamese and the content must be specific, true and accurate. The application form needs to contain the applicant’s basic information, such as company name, address, contact information, etc. In addition, it is also necessary to clearly indicate the type of trademark applied for registration (such as word trademark, trademark, combined graphic trademark, etc.) and the category of goods or services to be applied for. It is important to note that all information must be consistent with other document descriptions, any inconsistency may result in the request being rejected or delayed.

Secondly, the trademark pattern is another key document. For word trademarks, the printed trademark text needs to be marked; for graphic trademarks or combination trademarks, the marked drawings need to be provided. If it is a color trademark, a color illustration must be provided and the color to be protected must be clearly stated in the application. There are specific requirements for the size and format of drawings, and multiple copies of the same drawing are usually required. It is recommended to hire a professional graphic designer to create a trademark pattern that meets the NOIP requirements.

Third, a detailed list of goods/services is required . The listing needs to clearly list the goods or services in which you wish to use the trademark. Listings must be in Vietnamese and comply with the Nice Classification specifications. An accurate and detailed list of goods/services not only facilitates smooth application, but also provides a clear scope of protection for possible trademark issues with future applications.

Fourth, the applicant’s identity document is required. For companies, this often includes business license requirements. If the applicant is a foreign enterprise, you may also need to provide a company registration certificate or similar company existence certificate. These documents need to be notarized, authenticated, and translated into Vietnamese.

Finally, if applying through an agent (which is common among foreign applicants), a power of attorney will be required. This document needs to clearly state the scope of the agent’s authority, such as applying, receiving documents, paying fees, etc. The same goes for the power of attorney, which needs to be notarized and authenticated, and translated into Vietnamese. It is worth noting that Vietnam has very strict requirements for power of attorney and it is recommended to use the standard format provided by NOIP.

2. Additional documents in special cases

In addition to the above necessary documents, in some special cases, additional documents may need to be prepared:

If your application is a priority, priority documentation is required. This usually happens when the applicant has preemptively filed an application for the same trademark in other Paris and wants to wrap up the earlier filing date as the priority date of the application in Vietnam. In this case, it is necessary to provide a priority date issued by the State Intellectual Property Office for re-application. Supporting documents and submit within 3 months from the date of application in Vietnam. This document also needs to be translated into Vietnamese and notarized.

For trademarks already in use in Vietnam, providing evidence of use may assist the application. Such evidence can include advertising materials, sales invoices, product packaging, etc. to prove that the trademark has been used in the Vietnamese market. Although this is not a requirement in Vietnam, it may be beneficial to the application in certain circumstances (e.g. the trademark lacks distinctiveness but secondary information is obtained through use).

If the application is for a collective mark or a certification mark, rules for use will need to be provided. The document needs to detail the conditions for use of the trademark, quality control measures, etc. For collective trademarks, the album of the collective organization or related documentation is also required.

In some cases, if the trademark contains special elements (such as your national flag, national emblem, portraits of famous figures, etc.), you may need to provide relevant licenses or authorization documents. The use of such elements is often subject to strict restrictions, and failure to obtain appropriate permissions may result in the application being rejected.

Finally, for applications for pre-emptive well-known trademark protection, a large amount of supporting materials need to be provided, including trademark usage time, geographical scope, sales volume, advertising investment, consumer awareness survey, etc. Organizations applying for this type of application are advised to consult a professional intellectual property lawyer before submitting.

Preparing these documents can be tedious, but each document is submitting important information to NOIP and proving that your application is legal and valid. Before submitting an application, carefully review all documents to ensure that the information is accurate and consistent. If you have any questions, it is best to consult a professional intellectual property agent or lawyer. Not only are they familiar with the specific requirements of NOIP, they can also help you avoid common mistakes, thereby increasing the success rate of your application.

Remember, the devil is in the details when it comes to trademark registration in Vietnam. Through the documents prepared above, you will lay a solid foundation for the successful registration of your trademark in the Vietnamese market.

Submit application

After completing the preliminary preparations and collecting all necessary documents, the next step is to formally submit a trademark registration application to the National Intellectual Property Office of Vietnam (NOIP). There are three main ways to submit a trademark registration application: private in-person submission, mail submission, and online submission. Various methods have their own advantages and precautions. Applicants can choose the most suitable method according to their own circumstances.

1. Submitted in person

Submitting an application in person at the NOIP office is the most traditional and direct way. The main advantage of this method is that you can communicate with NOIP staff in person and answer questions or supplement supplementary documents in a timely manner. NOIP has offices in Hanoi and Ho Chi Minh City, and applicants can choose to submit their applications nearby.

• When you choose priority submission, there are a few things to note:
• Have originals and attachments of all necessary documents ready.
• It is recommended to make a reservation in advance to avoid waiting.
• Bring enough cash or check to pay the application fee.
• If you are not familiar with Vietnamese, it is best to bring a translator or entrust a local agent to handle it.

2. Submit by mail

Sending submissions is a convenient option for applicants who are unable to travel to a NOIP office. You can send all application documents to NOIP’s address by registered mail or a reliable courier service.

When selecting a submission time, please note:

• Ensure all documents are complete and notarized and authenticated as required.
• Use a safe and reliable shipping service, preferably a trackable express delivery method.
• Attach contact details to your package so that NOIP can contact you promptly if needed.
• Taking into account possible breaks during the writing process, it is advisable to allow sufficient time, especially where a priority application is involved.

3. Submit online

As the Vietnamese government promotes electronic government affairs, NOIP has also launched an online application system. This method is extremely convenient and is especially suitable for foreign applicants or companies wishing to submit applications.

However, online submission also has its own special requirements and considerations:

• You need to register an online account with NOIP, which may take some time.
• All documents need to be submitted electronically in the specified format, usually PDF.
• Online payment of application fees may require the use of local Vietnamese bank cards or international credit cards.
• Some documents, such as a power of attorney, may still require the original to be submitted within a certain period of time after submission.

While the online submission system is in Vietnamese, NOIP is working to develop an English version to facilitate international applicants.

No matter which submission method you choose, you will need to pay an application fee. The amount of the fee depends on the number of trademark categories applied for and the number of specific goods/services. NOIP regularly updates the fee schedule, so it is recommended to review the latest fee schedule before submitting an application.

In general, the cost includes the following parts:

• Basic application fee
• Surcharge for each additional category
• Surcharges stipulated for goods/services exceeding the quantity
• Priority declaration fee (if applicable)

It should be noted that these fees are only for the subject application stage, and additional fees may be required for subsequent review, announcement, registration certificate issuance, etc.

After the application is successfully submitted, NOIP will issue an application acceptance notice, which will indicate the application number and application date. This document is very important, please keep it safe. From this moment on, you can start tracking the progress of your application. NOIP provides an online query system, and you can check the application status through the application number. At the same time, it is recommended to regularly check whether there are notices or requests from NOIP so that you can respond in a timely manner.

Submitting an amendment application is just the beginning of the entire registration process. During the subsequent review stage, NOIP may request additional materials or review the application content. Therefore, you still need to remain vigilant after submitting your application and respond to various NOIP notices and requirements in a timely manner. In addition, even if the application has been submitted, it is still recommended to continue to pay attention to similar trademarks that may appear on the market so that timely action can be taken (such as filing an opposition) if necessary.

Considering the complexity of the trademark application process in Vietnam, as well as the differences in language and culture, it is recommended to seek help from a professional intellectual property agent or lawyer. They are not only familiar with the entire application process, but also understand the specific requirements and review trends of NOIP, which can maximize the success rate of your application and help you avoid unnecessary interruptions and additional expenses.

Application

In Vietnam, a trademark registration application will undergo a series of strict review procedures after submission. This process mainly includes three key stages: formal review, physical review and announcement. Understand the specific content of these stages and possible problems encountered. The paper “Can successfully register a trademark” will analyze the characteristics, processes and precautions of each stage in detail to help applicants better understand the entire review process.

Formal review

Formal examination is the first critical stage of the trademark registration application process. At this stage, examiners from the National Office of Intellectual Property of Vietnam (NOIP) will carefully check whether the application documents are complete and in the correct format. This process usually takes 1-2 months, but the actual time may vary depending on the workload of the NOIP.

In terms of review form, examiners mainly focus on the following aspects: First, they will check whether the application form is filled out completely and accurately. This includes applicant information, trademark description, and whether the category of goods or services applied for registration is indicated. The examiner will review whether all necessary supporting documents are provided, such as trademark drawings, power of attorney (if applicable), etc. They will check whether these documents comply with the format requirements of the NOIP, such as whether the size of the trademark image is compliant and whether the power of attorney has been properly notarized and authenticated.

Additionally, the examiner will verify that the application fee has been paid in full. If a priority request is involved, they check that the priority document was submitted in a timely manner and that the priority information is consistent with the original request.

If the examiner finds any formal defects or omissions, they will issue a notice of correction. Applicants generally have two months to respond to these notices and submit or amend documents. It is important to note that failure to respond internally to a correction notice within the required period may result in the request being deemed abandoned. Therefore, pay close attention to NOIP’s notifications and respond promptly to emergencies.

Once the application passes the formal examination, NOIP will issue a formal examination passing notice and the application will enter the substantive examination stage. However, passing the formal examination does not guarantee that the trademark will be successfully registered. It only ensures that the application meets the basic requirements in terms of procedures.

substantive examination

Substantive examination is the most critical and complex stage in the entire trademark registration process. At this stage, NOIP examiners will conduct an in-depth assessment of whether the trademark meets the conditions for registration. This process usually takes 9-12 months, sometimes even longer, especially for complex requests or where additional data is required.

During the substance review, the examiner mainly focuses on the following aspects:

First, they will assess the distinctiveness of the mark. A trademark must be sufficiently distinctive to distinguish the applicant’s goods or services from those of others. Signs that lack distinctiveness, such as purely descriptive words or generic names, will usually be refused registration.

Secondly, the examiner will check whether the trademark is identical or similar to a previously registered or applied trademark and whether it may cause confusion. This involves a comprehensive comparison of the visual, pronunciation and message of the mark. If an application is found to be in conflict, it may be rejected in part or in full.

Third, the examiner will consider whether the trademark violates public order or moral standards. In Vietnam, any mark deemed inappropriate or offensive may be refused registration.

In addition, the examiner will also check whether the trademark contains elements prohibited by law, such as official symbols such as the national flag and national emblem, or unauthorized use of portraits of famous figures, etc.

During the substantive examination process, if the examiner finds any problems or areas that require clarification, they will issue a notice of examination action. Applicants usually have two months to respond, providing additional explanations, amendments, or requesting the submission of additional evidence. Communication and debate at this stage are often the key to the success or failure of the application.

It is worth noting that trademark examination in Vietnam adopts relatively broad examination standards. This means that the examiner mainly focuses on absolute reasons (such as obvious distinctiveness) and obvious relative reasons (such as conflict with prior rights), and will not take the initiative. Therefore, even if the trademark passes the physical examination, it may still be subject to subsequent property rights proceedings. facing challenges.

announcement

Publication is the last important stage in the trademark registration process. If the trademark application successfully passes the physical examination, the NOIP will announce the application in the official gazette. The announcement period is usually two months, during which third parties are given the opportunity to file objections to the trademark.

The content of the announcement usually includes key information such as applicant information, trademark drawings, and the category of goods or services applied for registration. This information will be published on the NOIP official website and paper bulletins for public investigation.

In the announcement, any third party that believes that trademark registration may harm its rights and interests can file an objection with NOIP. Reasons may include conflicts of prior rights between the trademark and the opponent, lack of distinctiveness of the trademark, malicious registration by the applicant, etc.

If no objections are received in the announcement, or if the objections received are answered, the trademark will enter the final stage of registration. NOIP will issue a registration decision to the applicant, and the applicant must pay the registration fee within the specified period. Once the fees are paid in full, NOIP will issue a trademark registration certificate and the trademark will officially receive legal protection.

However, if a valid objection is filed, NOIP notifies the applicant of the content of the objection and gives the applicant an opportunity to respond. This could trigger a complex objection process that could last several months or even longer. During this period, the applicant needs to provide sufficient arguments and evidence to maintain its right to registration.

It should be noted that even if a trademark is successfully registered, within 5 years after the certificate is issued, a third party can still apply to NOIP to declare the registration invalid on the basis that the trademark is invalid. Therefore, trademark owners need to continue to pay attention to market dynamics and actively use and maintain their trademark rights.

Issuance of registration certificate

The issuance of the trademark registration certificate is the last important milestone in the trademark registration process in Vietnam. Once a trademark is officially protected by law, the trademark owner can begin to legally use and defend its trademark rights in the Vietnamese market.

There are still several important steps that need to be completed before the National Intellectual Property Office of Vietnam (NOIP) officially issues a registration certificate. First, if the trademark application successfully passes the physical examination and no valid exceptions are received in the announcement (or all exceptions are successfully answered), NOIP will issue a formal registration notice to the applicant’s agent. This notice usually contains information about registration fees and payment deadlines.

After the registration notification, the applicant needs to pay the registration fee within the specified period (usually one month). This fee is separate from the previously paid application and examination fees. The amount of the fee will be determined based on the number of registered goods or service categories. It is worth noting that if the fee is not recovered within the specified period, it may be deemed to have been abandoned, and all previous efforts will be in vain. Therefore, it is crucial to apply for timely payment of registration fees.

Issuance of registration certificate

Once NOIP confirms receipt of the registration fee, they will start preparing and issuing the trademark registration certificate. This process usually takes 2-4 weeks. The registration certificate is an important legal document that officially confirms the trademark ownership rights of the trademark in my country.

Registration certificates typically contain the following key information:

• Registration Number: This is the unique identification number of the mark and will not be used in any subsequent official proceedings.
• Registration Date: This date marks the beginning of the trademark protection period.
• Trademark ownership information: including name, address, etc.
• Trademark pattern: If it is a word trademark, the specific text will be displayed; if it is a graphic or combination trademark, the trademark pattern will be included.
• Registered goods/services: List in detail the categories of goods or services and specific items for which the trademark is allowed to be used.
• Validity period: usually 10 years, starting from the date of application.

The original NOIP should be sent to the applicant’s designated agent. Considering possible unexpected situations during the shipping process, applicants or agents are advised to pay close attention to the status of the shipment and ensure that the shipping address provided is accurate.

After registering the certificate, the trademark owner needs to carefully check all the information on the certificate to ensure there are no errors. Pay special attention to key contents such as trademark images, registered goods/service categories, and ownership information. If any errors are discovered, NOIP should be contacted immediately to request permission to correct them. Although the NOIP can apply to correct registration errors at any time later, identifying and correcting errors early can avoid legal risks that are more likely to arise in the future.

Secondly, it is strongly recommended that the owner of the trademark make multiple copies of the certificate properly. The original copy should be verified and should be used in daily business, such as submitting a trademark registration certificate to the customs, filling out a license agreement with a partner, etc.

Additionally, the trademark owner should record important dates on the registration certificate, especially the date of disappearance. Although there is still a long time until renewal, it is a good idea to set up a reminder system to ensure that the renewal deadline is not missed.

Post-registration copyright and legal

After obtaining the registration certificate, the trademark owner has the exclusive right to use the trademark in Vietnam. This includes the use of the trademark in connection with the registered goods or services and the prohibition of unauthorized use of the same or similar mark by others. However, rights also imply responsibilities. Trademark owners are obligated to use the trademark reasonably, maintain the trademark’s integrity, and take appropriate legal action when incidents are discovered.

It is worth noting that Vietnam implements an “obligation to use” system. If a trademark is not used for five consecutive years without justifiable reasons, it may face the risk of being revoked. Therefore, trademark owners should retain evidence of trademark use, such as advertising materials, sales invoices, etc.

For businesses that extend their operations across other countries, international trademark registration through the Madrid System may now be considered. Vietnam is working on settling and completing products, which means you can apply for protection for other products based on registration in Vietnam. This can greatly simplify the process of registering a trademark in multiple countries.

Post-registration management

Successfully registering a trademark is just the beginning of your brand protection journey. Only effective trademark management can maintain and maximize trademark value . The following will discuss in detail the three key management aspects after trademark registration: usage requirements, renewal, and licensing and transfer.

Usage requirements

In Vietnam, the use of trademarks is not only a right, but also an obligation. Vietnam’s Trademark Law stipulates that if a registered trademark is not used for five consecutive years without reason, the trademark may face the risk of being revoked. This provision aims to prevent “trademark hoarding” and ensure the effective operation of the registration system. Therefore, trademark rights holders need to take the usage requirements seriously.

According to Vietnamese law, the use of trademarks should be real commercial use, not symbolic or nominal use. This includes the use of a registered trademark on goods, packaging, advertising materials, or in connection with the provision of services. It is worth noting that use can be made directly by the trademark owner or through an authorized third party (such as a licensee).

To avoid possible risks, trademark rights holders should take the following measures:

• Periodic review: Conduct a review of trademark usage at least once a year to ensure that all registered trademarks are being used effectively.
• Preserve evidence: Carefully collect and preserve evidence of trademark use, such as product photos, advertising materials, sales invoices, etc. This evidence will be critical in a possible termination request.
• Marketing strategy: If some registered trademarks are not used temporarily, you can consider formulating a marketing strategy for their active use.
• Usage variations: Note that use of a variation of a trademark that differs slightly from the registered trademark may not be considered a valid use of the registered trademark. Try to use the trademark form that is exactly the same as the registered one.
• Cross-class use: If a mark is not used in certain registered classes, consider whether it is necessary to maintain registration in those classes, or explore the possibility of using the mark in those classes.

If the trademark cannot be used due to special reasons (such as government restrictions, import damage, etc.), be sure to save relevant evidence for possible defense needs.

continue

The latest trademark registration in Vietnam is 10 years, starting from the filing date. To maintain the continuity of trademark rights, ownership must be promptly renewed. Understanding and adhering to renewal rules is critical to safeguarding long-term brand equity.

The key matters for renewal are as follows:

• Renewal time window: Trademarks can be renewed up to 6 months before the latest expiration. Vietnam also provides a 6-month grace period, but additional fees are required to apply for extension within the grace period.
• Renewal procedure: Renewal applications need to be submitted to the National Intellectual Property Office of Vietnam (NOIP). Required documents typically include a renewal application form, updated trademark ownership information, and a power of attorney (if applying through an agent).
• But proof of use: Although proof of use is not usually required for renewal, it may be helpful to provide evidence of use if the mark is at risk of revocation by a third party.
• Partial Renewal: If a mark is no longer used or needed in certain classes, you can choose to renew it for only some classes.
• Opportunities for Changes: Renewal is a good opportunity to update registration information (such as ownership address changes).
• Long-term planning: It is recommended to set up a reminder system and start preparing for renewal 12-18 months before the trademark changes. This gives ample time to assess the value of the trademark and decide whether to renew it and in which categories.

It is important to note that missing the renewal deadline may result in the loss of trademark rights. Once a trademark expires due to non-renewal, re-application may face the risk of being registered by others. Therefore, timely renewal is crucial to safeguarding brand equity.

Licensing and transfer

As the business develops, the trademark owner may need to consider licensing the trademark to others or assigning the trademark to another entity. In Vietnam, the licensing and transfer of trademarks are subject to a strict regulatory legal system. Correct operation can create greater value for the brand, while improper handling may damage trademark rights.

A trademark license allows third parties to use a registered trademark under certain conditions. In Vietnam, you need to pay attention to the following points when licensing trademarks:

• License Agreement: A license agreement should be formulated that clearly stipulates the scope, term, territory, quality control measures, etc. of the license.
• Registration requirements: Trademark licensing agreements must be registered with NOIP to have legal effect on third parties. An unregistered license agreement is only valid between the contracting parties.
• Quality Control: The licensor is responsible for monitoring the quality of the goods or services for which the licensee uses the trademark. Lack of effective quality control may result in the loss of trademark rights.
• Sublicense: The licensee generally may not make the trademark available to others for use without express permission in the license agreement.
• License fee: Both parties are free to negotiate the license fee, but care should be taken to comply with Vietnam’s exchange control regulations.

Trademark transfer refers to the complete transfer of a trademark number to another party. When doing trademark transfer in Vietnam, you need to consider the following things:

• Transfer Agreement: A transfer agreement must be signed, clearly stating the transferred trademark, the categories of goods/services involved, the transfer price, etc.
• Registration requirements: Trademark registration must be registered with NOIP, otherwise the third party will take effect.
• Principle of overall transfer: In principle, registration of the same trademark on the same or similar goods/services should be transferred in its entirety, causing confusion for Xiamen consumers.
• Deregistration restrictions: NOIP may deny registration for deregistration if deregistration may cause consumer confusion or deception.
• Goodwill Issues: In Vietnam, trademark registration is generally deemed to include goodwill associated with the trademark.
• Subsequent use: After the transfer, the original owner should stop using the trademark, unless the two parties agree otherwise (such as transitional use within a certain period of time).

Whether it is a license or transfer, it is recommended to seek professional legal advice. An expert intellectual property lawyer can not only help draft and review the relevant agreements, but can also provide valuable advice on the strategic implications of a specific transaction.

Special circumstances and suggestions

In Vietnam’s trademark protection system, in addition to the regular registration and management procedures, there are also some special situations that require special attention to trademark ownership. At the same time, it is crucial to understand how to deal with these special situations and fully protect brand rights.

Well-known trademark protection

In Vietnam, well-known trademarks enjoy special legal status and broader protection. A trademark is recognized as a well-known trademark, which means that it can obtain cross-class protection, prohibiting others from using the same trademark even in unregistered goods or service categories. However, obtaining a well-known trademark in Vietnam is not easy and requires a lot of evidence and Complex legal procedures.

In order for a trademark to be recognized as a well-known trademark, ownership needs to prove that the trademark has extensive film and television and good culture among the relevant public. This usually requires providing evidence of: the history and scope of use of the trademark, the scale of advertising and promotional activities. It is worth noting that Vietnam does not have a well-known trademark register, and the well-known status of a trademark usually arises in specific cases (such as property rights litigation) , determined by the court or the Intellectual Property Office.

For multinational enterprises, if their trademarks have been recognized as well-known trademarks in other countries, they may consider citing these foreign recognitions as supplementary evidence in Vietnam. However, the Vietnamese authorities pay more attention to the local market and influence of trademarks in Vietnam’s local market. , it is recommended that enterprises actively promote and use trademarks in the Vietnamese market, and at the same time systematically collect and save various supporting materials to prepare for possible well-known trademark recognition in the future.

Objections and invalidity declarations

In Vietnam, third parties can challenge the validity of a trademark through opposition and invalidation procedures. Understanding these procedures is important to protect yourself and respond to potential threats.

The opposition procedure allows anyone to file an objection with the National Intellectual Property Office (NOIP) within 5 months after the trademark is published. Opposition proceedings may include lack of distinctiveness of the trademark, conflict with prior rights, infringement by the applicant, etc. If you find that a trademark that may infringe upon your rights is being applied for, filing an objection in a timely manner is an effective way to protect your rights and interests.

On the contrary, even if a restricted trademark has been registered, it may still face the risk of being declared invalid. Anyone can apply to NOIP within 5 years of trademark registration to declare the registration invalid. If it is based on illegal registration, the reasons for invalidation without a five-year time limit may include that the trademark does not meet the registration conditions, the registration procedure is illegal, etc.

Whether you are raising an objection or accepting another person’s objection or invalidation request, you need to prepare sufficient evidence and legal restructuring. This may involve complex legal and factual issues, so it is highly recommended to seek the help of a professional intellectual property lawyer. A timely and adequate response can greatly improve your chances of winning your case.

It is very important for trademark rights holders to continuously monitor trademark applications and registrations in the market. This not only helps to detect and prevent potential conflict behaviors in a timely manner, but also helps to provide necessary information support to interrupt possible abnormal or invalid declaration actions.

law enforcement

Effective trademark enforcement is critical to maintaining brand value. Vietnam provides a variety of enforcement avenues, including administrative enforcement, civil litigation and criminal reporting. Choosing an appropriate enforcement method requires consideration of a number of factors, such as the nature and scale of the conduct involved, the goals you hope to accomplish, time and cost, etc.

Administrative enforcement is the most common method of trademark protection in Vietnam, and is usually handled by agencies such as the Market Administration Bureau, Department of Science and Technology, or Customs. This method is relatively fast and low-cost, and is suitable for handling obvious target cases. Administrative agencies can order the cessation of targeted behavior, fail to collect some goods, impose fines, etc. However, damages cannot be obtained through administrative enforcement.

For more complex cases or cases with increased disputes, civil litigation may be a better option. Through court action, trademark owners can recover damages and damages. However, civil lawsuits often result in losses and are more costly. Vietnamese courts are accumulating experience in intellectual property cases, but the predictability of trial processes and outcomes is still limited.

In extremely serious targeted cases, criminal offenses may be considered. The Vietnamese Penal Code provides that serious targeted offenses may trigger criminal offenses. Criminal procedures can exert greater force against target offenders, but the criminal conduct to initiate criminal proceedings usually requires proof that the endpoint behavior caused significant economic losses or seriously affected social order.

No matter which law enforcement method you choose, collecting and preserving topical evidence is key. This may include purchasing target product samples, notarizing landing pages, market research reports, etc. Sending a warning letter is often a good idea before taking formal legal action and can sometimes resolve the issue quickly enough to move into formal proceedings.

Additionally, it is important to develop a comprehensive market surveillance and enforcement strategy. This may include regular market surveys, monitoring platforms, customs filings, etc. Prompt identification and detection of targeted behaviors can minimize brand damage.

During the enforcement process, it is also important to develop good relationships with local law enforcement agencies. Communicating regularly with relevant departments and participating in trainings or seminars organized by them can enhance mutual understanding and facilitate future law enforcement actions.

In general, protecting trademark rights in Vietnam requires a proactive approach. Understanding and making good use of the well-known trademark protection system, flexible use of opposition and invalidation procedures, and selection of enforcement strategies are the keys to effective brand protection. Seek the assistance of experienced local intellectual property experts in light of the complex and ever-changing characteristics of Vietnam’s legal environment. Through a comprehensive and strategic trademark protection plan, your brand will receive strong legal protection in Vietnam, a market full of opportunities and challenges, laying a solid foundation for the high development of your company.