SECTION VIII: COPYRIGHT AND/OR TRADEMARKS
1. Trade marks and trade names protection
Trademarks and trade names are protected under Vietnam Intellectual Property Law that has entered into force since July 01, 2006.
A trademark is protected if it meets the following conditions:
i) To be visible sign in the form of letters, words, pictures including three dimensional figures or a combination I one or more colours.
ii) To be capable to distinguishing goods and service of the mark owner from those of others.
A mark is considered as distinctiveness if it consists of one or several easy noticeable and memorable elements or of an easily noticeable and memorable combination formed by many elements.
A trade name is protected if it is capable of distinguishing the business entity bearing such trade name from other business entities acting in the same field and locality of business. Its distinctiveness is based on the following conditions:
– Consist of a proper name.
– Not to be identical with or confusingly similar to a trade name having been used earlier by another person in the same field.
– Not to be identical with or confusingly similar to a mark having been protected before the date it is used.
Rights to register a mark:
– An organization or individual shall have the right to register a mark used for goods or services that he produced or supplied.
– An organization or individual legally engaging in trade of a product produced by third party shall have the right to register the mark to be used for the product, provided for the producer neither uses such a mark for the product nor objects to such registration.
– An organization with the function to control and certify the quality, characters, origin or other relevant criteria of goods or services shall have the right to registration of a certification mark provided that such organization is not engaged in the production or trade of such goods or services.
Who have the right to file for the Protection Certificate?
– Organizations and individuals of Vietnam, foreign individuals permanently residing in Vietnam and foreign organizations and individuals having a production or trading establishment in Vietnam shall file application for registration of establishment of industrial property right either directly or through a lawful representative in Vietnam.
– Foreign individuals not permanently residing in Vietnam and foreign organizations and individuals not having a production or trading establishment in Vietnam shall file application for registration of establishment of industrial property right through a lawful representative in Vietnam.
Filing principle: First-to-file (earliest date of priority).
The protection titles may be granted to the application with earliest date of priority. The applicant for registration of a mark may claim priority on the basis of the first application for protection of the same subject matter.
The protection certificate granted by an authorised agency – the National Office of Intellectual Property under the control of the Ministry of Science, Technology is the only sign of national recognition and is valid throughout the state of Vietnam. In Hanoi, the NOIP is situated at 96+98 Nguyen Trai street. The protection certificate of trademarks is the Certificate of Trademark Registration which is valid within 10 years since the conformable application day and can be continuously renewed for many times of 10 years each.
The application for Protection Certificate of a trademark must satisfy the certain requirements, following are some main ones:
– A request, made in prescribed form.
– The application itself and all documents enclosed are written in Vietnamese.
– All documents are set up in portrait in A4 paper size (210*297mm) with margins of 20 mm at four sides.
– Documents, samples, information identifying the industrial property object claimed for protection.
– Documents evidencing the right to registration.
– Documents evidencing the priority right.
– Receipts of fee and charge for this registration.
Requirements of trademark registration applications:
1. Documents, samples, information which specify the trademark claimed protection in the trademark application shall include:
a) Trademark samples and list of goods or services bearing the trademark;
b) Rules on using collective mark or Rules on using certification mark.
2. The trademark sample shall be described in order to make it clear as to the components of the trademark and the comprehensive meaning of the trademark (if any). If the trademark consisting of letters, words belonging to hieroglyphic languages, such words and letters shall be transliterated. A trademark consisting of signs in foreign languages shall be translated into Vietnamese.
3. Goods or services listed in an application for trademark registration shall be classified in accordance with the International Classification of Goods and Services under the Nice Agreement that published by the State administrative authority of industrial property .
4. The rule on using collective mark shall consist of the following main contents:
a) The legal entity who is the mark owner;
b) Conditions for using the mark;
c) Conditions to become a member of the legal entity owning the collective mark;
d) Sanctions applicable to acts infringing the rules on using the collective mark;
d’) List of legal entities and individuals permitted to use the mark (if any).
5. The rules on using certification mark shall consist of the following main contents:
a) The legal entity, individual who is the mark owner;
b) Conditions for using the mark;
c) Characteristics of goods and services certified by the mark;
d) Methods to evaluate the above characteristics and supervise the use of the mark;
d’) Expenses (if any) payable by the mark user for the certification and protection of the mark.
When applying for Protection Certificate, the applicant must pay a fee. The Department of Industrial Protection and other authorised agencies have the responsibility of collecting all the fees correctly, on time and contribute to the National Budget in conformity with the state regulations on fees and costs. Application fee of Protection Certificate is decided by the Ministry of Finance in co-ordination with the Ministry of Science, Technology therefore, this is suitable to the current conditions in Vietnam and international practice. In case fees have been already submitted but the relevant work has not been done yet due to mistakes of the Industrial Protection body, those fees must be returned to the applicants with their approval and certificate of returning.
Please contact Post for the Intellectual Property Law in detail. It’s available in English.