How can you protect your IP rights?
Protect your trademarks in Viet Nam and abroad
There are two routes of protection of marks in Viet Nam—the national route and the international route or protection via the Madrid Protocol. The national route is excellent if you want to protect your mark only in Viet Nam, but if you are thinking of protecting your mark abroad, you may consider the Madrid option.
The National Intellectual Property Office (NOIP) of the Viet Nam is the national agency in charge of registering trademarks.
The contact details of the office are as follows:
National Intellectual Property Office
A trade mark is defined as a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colours and is capable of distinguishing goods or services of the mark owner from those of other subjects.
Certification and collective marks can be registered in Viet Nam.
- The application must be filed using the prescribed application form.
- The filing language is Vietnamese.
- The Office accepts paper applications only.
- NOIP accepts multi-class applications. The Office accepts the Nice classification and the ASEAN List of Goods. The terms accepted by NOIP may be accessed at www.asean-tmclass.org.
The application shall be given a filing date if the following minimum requirements are met:
- Name and address of the applicant;
- Representation of the mark;
- List of the goods or services for which the registration is sought; and
- Prescribed fees and charges, including fee for claim priority right, if priority is claimed.
The formality examination is conducted within one month from the filing date. The application must meet the following requirements before it can be considered a valid application eligible for publication:
- If the applicant is represented, the power of attorney and its translation into Vietnamese if the original document is in a foreign language;
- Documents evidencing priority and their translation into Vietnamese if the documents are in a foreign language;
- Description of the mark sought to be registered;
- Correct classification of goods or services covered by the application;
- Five identical representations of the mark is in the prescribed format (maximum of 80mm x 80mm); A mark specimen must be clearly presented with the dimensions of each element of the mark ranging between 8mm x 80mm and the entire mark must be presented within a space of 80mm x 80mm.
- If the application is for a three-dimensional mark, a photograph or drawing must be submitted together with a description;
- If the mark contains color/s, the representation must show the color/s claimed.
A trademark application shall be published within two months from the date such application is accepted as having complied with the formality requirements.
Substantive examination will then be carried out within a period of nine months from the date of publication. This period does not include the time given for the applicant to correct or amend the application.
A mark must be visible and in the form of letters, numerals, words, pictures, images, including three-dimensional images or their combinations. It must also be capable of distinguishing goods or services.
The following cannot be protected:
- signs that are merely colors and neither combined with character signs or figure signs nor presented in the form of character signs or figure signs;
signs pertaining to the following are not protectable as marks;
- identical with or confusingly similar to national flags or national emblems;
- identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations or socio-professional organizations or international organizations, unless permitted by such agencies or organizations;
- identical with or confusingly similar to real names, alias, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries;
- identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by those organizations;
- those that mislead or confuse or deceive consumers as to the origin, properties, intended utilities, quality, value or other characteristics of goods or services.
signs that are contrary to the public order or prejudicial to national security; (d) signs that are not distinctive, i.e., those that fall under one of the following:
- simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such signs have been widely used and recognized as a mark;
- conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
- signs indicating time, place and method of production, category, quantity, quality, properties, ingredients, intended utility, value or other characteristics, which is descriptive of goods or services, except where such signs have acquired distinctiveness through use before the filing of mark registration applications;
- signs describing the legal status and business field of business entities;
- signs indicating the geographical origin of goods or services, except where such signs have been widely used and recognized as a mark or registered as collective marks or certification marks as provided for in this Law;
- signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of registration applications with earlier filing dates or priority dates, as applicable, including mark registration applications filed under treaties to which the Socialist Republic of Vietnam is a contracting party;
- signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
- signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than 5 years, except where the ground for such invalidation is non-use of the mark according;
- signs identical with or confusingly similar to another person’s mark recognized as a well-known mark which has been registered for goods or services which are identical with or similar to those bearing such well-known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well-known mark or the mark registration is aimed at taking advantage of the reputation of the well-known mark;
- signs identical with or similar to another person’s trade name currently in use if the use of such signs may cause confusion to consumers as to the origin of goods or services;
- signs identical with or similar to a geographical indication being protected if the use of such signs may mislead consumers as to the geographical origin of goods;
- signs identical with, containing or being translated or transcribed from geographical indications being protected for wines or spirits if such signs have been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
- signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an industrial design registration application with the filing date or priority date earlier than that of the mark registration application.
If you are thinking of seeking protection outside Viet Nam, you may wish to consider the Madrid Protocol option or the “International Route”. This option is crucial if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Protocol Relating to the Madrid Agreement for the International Registration of Marks or the Madrid Protocol, which is undoubtedly very beneficial for SMEs in countries like Viet Nam, if they wish to protect their marks in other countries.
The Madrid Protocol enables trademark owners to obtain protection in as many countries as are members of the international agreement by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.
In short, the Madrid system is a simple, economical, effective centralized procedure that provides for:
- A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets;
- A single set of simple formalities;
- Lower registration fees;
- No need to translate the application into several languages;
- Great ease of post-registration administration of your rights.
The savings achieved, in terms of filing fees, formalities and agent fees abroad, will clearly facilitate the protection of your trademark abroad and therefore the marketing of your products in foreign countries. Since Viet Nam is a member of the Madrid Protocol, if you possess either a commercial or industrial establishment in Viet Nam, or you are domiciled in or a national of Viet Nam, then you are entitled to use the Madrid system.
A single international application produces the same legal effects in the various designated countries as if the mark had been filed nationally. In other words, the effects of an international registration are equivalent to those of a national registration. As a consequence, an international registration can be seen as a bundle of national registrations, whose management is centralized within the hands of the International Bureau of WIPO and is greatly simplified.
However, it is important to remember that the Madrid system is merely procedural. The domestic legislations of the designated Contracting Parties set the substantive conditions for the actual granting of the protection. In general, it is recommended to seek professional advice before filing an application.
This is the way you should proceed to use the Madrid system:
- First of all, if you are using NOIP as your so-called “Office of Origin”, you need to have a basic mark—an application or a registration in Viet Nam. This is what you will use as basis for your international application.
- You need to use the official WIPO Form (MM2) to file an international application with NOIP. The languages accepted by NOIP are English and French. Note that you cannot file your application directly with WIPO.
- Your basic mark should match your national application or registration. You may decide to reduce its scope (for example, by eliminating some of the goods/services covered by the national mark), but you cannot expand it.
The international application must contain the following:
- a reproduction of the mark (identical to the mark filed or protected nationally);
- a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification); and
- the indication of the Contracting Parties in which protection of the mark is sought (the so-called “designations”); these are the countries where you wish to register your mark and where you intend to do business.
- An international application is subject to the payment of fees. The standard fee system comprises a basic fee (which is intended to cover the costs of the International Bureau in administering the system of international registration), a supplementary fee (if the list of goods and services involves more than three classes of the International Classification under the Nice Agreement) and a complementary fee (for each Contracting Party for which protection is requested) or an individual fee (instead of the complementary fee), the amount of which is determined by that Contracting Party. Viet Nam collects the individual fee.
- Before forwarding the application to WIPO, NOIP, your Office of Origin must certify that the mark that is the subject of the international application is the same as that in the national application or registration, that the applicant or owner of the mark in both the basic mark and the international application is identical, and that the goods and/or services listed in the application are covered by those of the basic registration or basic application.
- On receipt of the international application, WIPO checks that it complies with the requirements of the Madrid Protocol and of the Common Regulations, including in particular, the requirements relating to the classification of the list of goods and/or services, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities and these must be remedied within the time limit of three months, otherwise the application will be considered abandoned.
- Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.
- Each designated Contracting Party has the right to refuse protection in its own territory if the mark does not comply with the substantive requirements of its law.
- A refusal must be notified to WIPO by the Office of the designated Contracting Party concerned within the time limit specified (in principle, 12 months from the date of the notification of the international registration, or 18 months, or even a longer period if the refusal is based on an opposition).
- If no refusal is notified to WIPO within the relevant period, the mark in question will enjoy the same protection in the Contracting Parties concerned as if it had been registered by the respective Offices of these Contracting Parties. The designated contracting party will then issue a Statement of Grant of Protection.
- On the contrary, if a refusal is notified, the procedure subsequent to that refusal, such as a review or appeal, is carried out directly between the holder and the national IP Office of the designated contracting party in accordance with domestic legislation and without any involvement on the part of WIPO.
- An international registration is in effect for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The applicant will still need to comply with the maintenance requirements (use requirements) of each of the designated contracting parties, if there are any.
There is only one route protection of industrial designs in Viet Nam—the national route. The international route via the Hague Agreement is still not available in Viet Nam.
The National Intellectual Property Office (NOIP) of the Viet Nam is the national agency in charge of registering industrial designs.
Any natural or juridical person, resident or non-resident, may apply for industrial design protection. There is no requirement for residents of the Viet Nam to be represented by an agent or attorney.
An applicant who is not a resident of the Viet Nam must appoint resident agent or representative in the Viet Nam upon whom notice or process for judicial or administrative procedure relating to the application for industrial design may be served.
- The application must be filed using the prescribed application form.
- The filing language is Vietnamese.
- The office accepts paper applications only.
The application shall contain a specification and a set of photos or drawings of industrial design. The specification includes a description of industrial design and a claim of scope of protection.
The description of industrial design shall fulfill the following conditions:
- It fully discloses features that express the nature of the industrial design and specify features that are new, different from the least different known industrial design, and be consistent with the photos or drawings;
- Where the industrial design registration application consists of variants, the description shall fully specify these variants and clearly define distinctions between the principal variant and the other variants;
- Where the industrial design in the application is of a set of articles, the description shall fully specify features of each article of the set
The scope of protection of industrial design shall specify features claimed for protection, including features that are new, different from similar known industrial designs.
The set of photos, drawings shall fully specify features of the industrial design.
An applicant for registration of an industrial design may claim priority on the basis of the first application for registration of the same subject matter if the following conditions are fully satisfied:
- The first application was filed in a country that is a contracting party to a treaty containing provisions on priority right to which Viet Nam is also a contracting party, or in a country that accords the same treatment to Vietnamese applicants;
- The applicant is a citizen of Viet Nam or of a country identified in the preceding paragraph, who resides or has a production or business establishment in Vietnam or in the foreign country in the preceding paragraph;
- The claim for the priority right is clearly stated in the application and a copy of the first application certified by the office, where the first application was filed, is enclosed;
- The application is filed within the time limit provided for in a treaty to which Vietnam is contracting party.
The applicant may claim the priority right on the basis of different earlier filed applications, provided that the corresponding contents of such earlier applications and the application are indicated. The filing date of an application enjoying priority right shall bear the priority date, which is the filing date of the first application.
An industrial design shall be protected if it satisfies the following conditions:
- It is new;
- It is creative;
- It is susceptible of industrial application.
An industrial design shall be considered creative if, based on industrial designs already publicly disclosed, in or out of the country, before the filing date or the priority date of the industrial design registration application, it cannot be easily created by a person with average knowledge in the art.
An industrial design shall be considered susceptible of industrial application if it can be used as a model for mass manufacture of products with appearance embodying such industrial design by industrial or handicraft methods.
An industrial design shall be considered new if it significantly differs from other industrial designs that are already publicly disclosed in or out of the country, prior to the filing date or the priority date of the industrial design application.
Two industrial designs shall not be considered significantly different from each other if they are only different in features which are not easily noticeable and which cannot be used to distinguish these industrial designs as whole.
An industrial design shall not be considered as having been publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret.
An industrial design shall not be considered having lost its novelty if it is published in any of the following cases, provided that the industrial design application is filed within 6 months from the date of publication:
- It was disclosed by another person without permission of the person having the right to apply for its registration;
- It was published in the form of a scientific report by the person having the right to apply for its registration;
- It was exhibited at a national exhibition of Vietnam or at an official or officially recognized exhibition by the person having the right to apply for its registration.
The following subject matters shall not be protected as industrial designs:
- Appearance of a product, which is dictated by the technical features of the product;
- Appearance of a civil or an industrial construction work;
- Shape of a product, which is invisible during the use of the product;
- Contrary to social morality, public order or harmful to national defense or security.
Industrial design applications shall be subject to formal examination to evaluate their validity. The application shall be considered invalid in the following cases:
- It does not fulfil the formal requirements
- The subject matter stated in the application is ineligible for protection;
- The applicant does not have the registration right, including where the registration right belongs to more than one organization or individual but one or several of them do not agree with the filing;
- It is filed in contravention of regulations on the filing mode provided for;
- The applicant fails to pay fees and charges.
Industrial design applications that are accepted as formally valid shall be subject to substantive examination for the evaluation of the fulfilment of protection conditions of the subject matter stated in the applications and to determine the scope of protection. If the application fulfills the conditions for protection, the industrial design will be granted.
Any third party may request the NOIP to invalidate the registration of the design, subject to the payment of fees and charges, based on the following grounds:
- The applicant has no right or has not been assigned the right to register an industrial design;
- The subject matter of industrial property fails to satisfy the protection conditions at the time the protection title is granted.
The period for invalidating the protection title of an industrial design shall be the whole term of protection.