“LUXALON” is the exclusive trademark which is internationallly registered by Hunter Douglas (the Netherlands) for many classes of goods/services in construction field. Recently, there have appeared many products bearing the sign “LUXALINE”, causing confusion to consumers.
DUYTHO assists clients in establishing, maintaining, and enforcing trademark rights in both domestic and international scale. The firm furnish clients with comprehensive guidance as well as strategic counseling so as to achieve the most effective protection for their trademarks. The firm’s practice for trademarks covers not only Vietnam but also Laos, Cambodia, Myanmar.
Our trademark practice covers:
TRADEMARK IN VIETNAM
- General regulations on Trademark in Vietnam
- Services rendered by DUYTHO concerning trademark matters in Vietnam
- Trademark registration in Vietnam
General information and regulations on Trademark in Vietnam
DUYTHO is active in trademarks and commercial law related to Intellectual Property, including litigation and corporate law. Each year, we file many applications for registration of foreign trademarks in Vietnam, the majority originating from major companies in the consumer products sector. We typically represent large law offices and foreign patent lawyers, principally in the US and Europe (e.g. Germany, the Netherlands), Japan, China etc. in their patent, design and trademark activities in the country.
Our expert Trademark Department at DUYTHO processes a large and constantly growing number of international applications through the NOIP. Our team of first rate trademark attorneys has years of experience in prosecuting trademark applications, protecting trademark owner’s rights and providing expert counsel in infringement cases.
Through practical experience, DUYTHO has been successfully represented domestic and foreign clients to protect their legitimate rights in Vietnam.
Equipped with the most updated database of the NOIP, DUYTHO, at the client’s request, can conduct full searches and advise on the probability of successful registration of chosen trademarks.
Manufacturers and marketers may file application(s) for registration of trademark(s) relating to goods/services that they manufacture, trade in or provide at the National Office of Vietnam (NOIP). The trademark refers to and preserves the reputation of a specific product/service or class of goods/service. A trademark registration is territorial and should thus be registered in every country where the product is being manufactured or marketed.
Vietnam is a member of:
- The Paris Convention for the Protection of Industrial Property;
- The Madrid Arrangement and Madrid Protocol;
- The Convention Establishing the World Intellectual Property Organization;
- The Patent Cooperation Treaty (PCT);
- Berne Convention for the Protection of Literary and Artistic Works;
- Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting;
- Brussels Treaty Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite;
- Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms;
- UPOV Convention for the Protection of New Varieties of Plants;
- Vietnam – U.S Establishment Of Copyright Relations Agreement;
- Vietnam – U.S Trade Agreement;
- Trade-Related Aspects of Intellectual Property rights (TRIPS).
Trademark registration in Vietnam is governed by Law on Intellectual Property (IP Law) which came into effect on 01 July 2006 (and was amended and supplemented on 19 June 2009). It includes 05 parts, covering:
- Part One: “The IP Law of Vietnam contains comprehensive provisions on all aspects of Intellectual Property rights, on protectable subject matters, conditions for protection, establishment of rights, owners, scope and limitations of rights, transfer of rights, representative, and enforcement of IPRs".
- Part Two: “The IP Law of Vietnam contains provisions on protectable subject matters, conditions for protection, establishment of rights, owners, scope and limitations of rights, transfer of rights, representative, and enforcement of copyright and related rights."
- Part Three: “The IP Law of Vietnam contains provisions on protectable subject matters, conditions for protection, establishment of rights, owners, scope and limitations of rights, transfer of rights, representative, and enforcement of rights of trade marks, geographical indications, industrial designs, patents, Layout designs of integrated circuits and Undisclosed information in the form of trade secrets".
- Part Four: “The IP Law of Vietnam contains provisions on protectable subject matters, conditions for protection, establishment of rights, owners, scope and limitations of rights, transfer of rights, representative, and enforcement of rights to plants varieties".
- Part Five: “The IP Law of Vietnam contains provisions on measures or remedies on handling infringement of IP rights ”
GENERAL INFORMATION ON TRADEMARK IN VIETNAM
According to Article 4.16, IP Law of Vietnam, trademark means any sign used to distinguish goods or services of different organizations or individuals.
According to Article 72, IP Law of Vietnam, which refers to general conditions for marks to be eligible for protection, a mark shall be eligible for protection when it satisfies the following conditions:
- It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours.
- It is capable of distinguishing goods or services of the mark owner from those of other subjects.
According to Article 73, IP Law of Vietnam, the followings signs are ineligible for protection as marks:
Signs identical with or confusingly similar to national flags or national emblems.
Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio-politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
Signs 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 such organizations.
Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
A registered trade mark gives you a monopoly right on that particular brand. To qualify for registration a trade mark must be distinctive. According to Article 73, IP Law of Vietnam, a mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination.
A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has 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, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
Signs describing the legal status and business sector of business entities;
Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated 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 applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
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 five years, except where the ground for such termination was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
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 was 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 sign may cause confusion to consumers as to the origin of goods or services;
Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has 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 application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.
According to IP Law of Vietnam, trademark rights are established based on trademark registration or acceptance of international trademark registration of the NOIP (except for Well-known trademark). Trade mark rights are acquired on a first come first served basis.
Service scope of Trademark matters in Vietnam
Our DUYTHO’s practice for trademark in Vietnam covers:
- Design of logo, trademark, products’ label upon client’s request as well as providing consultancy on trademark design and protection as well as designing strategies for overall trademark protection;
- Conducting trademarks searches based on the database of the NOIP to identify the probability of successful registration of chosen trademarks;
- Preparing, filling and follow-up of applications for registration of trade and service marks and counsel on all trademark matters;
- Opposing and defending the grant of trademark registration;
- Filing a cancellation and/or termination action against a Trademark Registration;
- Attending to renewal of trade mark registrations, recording of assignments, changes of name/ address and records of license contracts;
- Conducting trademark investigations and market surveys on trademark to identify if the targeted trademark has been used in Vietnam or not;
- Customs recordal of trademark rights and customs brand protection training;
- Handling trademark infringement via civil remedies/measure or court proceedings, conducting market investigation on the targted trademark and collecting infringement evidences.
Dear Valued Client/Colleague, To begin with, let us extend our respectful greetings to you! We, Tho & Associates, consistently rank among the most recognized and respected multi-practice law firms operating in Vietnam, Laos, Cambodia and Myamar. We have been acclaimed for our excellence in advising and representing individuals and entities involved in a wide range […]