Overview of Trademark Registration and Protection in Viet Nam

The article below aims?to give?foreign?investors?in Viet Nam?an overview of trademark registration?and enforcement?features in-country.?

1.?????TRADEMARK DEFINITION

Pursuant to?the?Intellectual Property?Law?of Viet Nam?(“IP Law”), a mark, also known as?a?trademark,?means any sign used to distinguish goods or services of different organizations or individuals.?Practically, series marks are not allowable in Viet Nam, but collective marks and certification marks are protectable.??Also, under the current IP Law, only visible signs can be registered as trademarks, but in the near future, sound trademarks will soon be protectable in Viet Nam according to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”) in which Viet Nam is a member.

2.?????FIRST-TO-FILE PRINCIPLE

Viet?Nam?has adopted the “First-To-File” principle, which means prior trademark rights are assigned based on the filing date of a mark instead of either the actual use or?intention to use?of the mark.?Therefore,?it is advisable that?proprietors?file trademark applications for their marks as soon as possible?to secure the?priority?date and ensure their?legitimate IP rights for?their trademarks.?

Moreover, in Viet Nam,?trademark?infringements are?becoming?more and more complicated.?To enforce these actions,?owners must have prior IP rights to take down?such infringements and bad-faith registrations.?As the first-to-use principal is also not available to exercise in enforcement activities in Viet Nam, business owners must have their trademarks registered in Viet Nam in order to enforce against infringing actions.

3.?????TRADEMARK REGISTRATION REQUIREMENTS

To register a trademark in Viet Nam, any foreign applicant, including?companies or individuals,?must?arrange registration through a?local Viet?Namese?IP??agent. The only required document is a simply signed Power of Attorney (POA), no notarization or legalization is necessary. Meanwhile, for enforcement procedures, a notarized and legalized POA would be required.

The applied?marks in Viet?Nam shall be examined on absolute grounds and relative grounds as to substantiveness?as well.?

?3.1. Absolute grounds

With regard to absolute grounds, an applied?mark shall be refused due to its lack of inherent registrability.??Below are some notable cases?following?the IP Law:

• Signs identical with or confusingly similar to national flags or national emblems such as Viet Nam flags;?
• Signs identical with or confusingly similar to real names, aliases, pseudonyms, or images of leaders, national heroes, or famous personalities of Viet Nam or foreign countries. “Ho Chi Minh”, for instance, is an unregistrable mark since it is the name of the national hero of Viet Nam;?
• 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;?
• Simple shapes and geometric figures, numerals, letters, or script of uncommon languages, except where such sign has been widely used and recognised as a mark;
• A word or phrase that is descriptive of the goods or services bearing the mark.?

3.2. Relative grounds

An applied?mark that is refused based on relative grounds is?one that is:?considered to be identical or confusingly similar to other registered or earlier-filed trademarks?or widely used and known trademarks registered for?identical or similar?goods or services;?considered?to be identical or confusingly similar to well-known?marks registered for?any?goods or services if the use of such?applied?mark may affect the distinctiveness of well-known marks;?or?if?the?applied?mark registration was aimed at taking advantage of the reputation of?a?well-known mark.?

4.?????REGISTRATION PROCEDURE

In principle, it would take 18 months from mark filing until the registration certificate issuance by the IP Office of Viet Nam (IPVN). The detailed procedure for a smooth case is described below:

After filing the mark application with all mandatory documents, if the application meets formality requirements, the IPVN will issue a Notice of Acceptance after one month.??Within two months from such date, this application will be published in the Monthly Gazette of the IPVN. From this publication date, the application will enter the 9-month substantive examination period, which runs parallel with the opposition period by third parties. After this period, if there are no oppositions or refusals raised by the examiners, the IPVN will issue a Notice of Granting and Fee Payment which allows the applicant to pay the registration fee within three months from the date of the Notice. After the payment is made, the IPVN will issue a certificate within approximately three months.

Due to the heavy backlog of the IPVN, the total timeframe for a mark to be registered in Viet Nam is approximately two to three years.

5.?????PROS AND CONS OF NATIONAL APPLICATION AND INTERNATIONAL REGISTRATION DESIGNATION IN VIET NAM

In general, national applications will be recommended if the applicants wish to file their marks in Viet Nam only, to reduce the filing fee. In the case where proprietors wish to apply for one mark in several countries including Viet Nam, the Madrid System is suggested for the sake of portfolio management.??Apart from this point, we set out below some pros and cons of each system:??

• Timeframe:?In a smooth case, an International Registration designating Viet Nam would only take approximately 12 months to be registered, given the examiners of IPVN strictly follow the examination timeframe under the Madrid system. Meanwhile, for a national application in a smooth case, as mentioned below, it would take approximately 18 – 24 months from filing to registration.
• Mark adaptation:?For national applications, the marks as filed are allowable to be amended, as long as the amendment is not significant and does not affect the nature of the marks, in response to refusal notices to increase the chances of registration of such marks. Meanwhile, it is not allowed to amend marks filed in Viet Nam through the Madrid system.
• Central Attack:?International registrations designating Viet Nam will be affected by the “Central Attack” rule in the Madrid system. There is no equivalent rule applied to national applications.
• Disclaimer Practice:?As a matter of practice, for marks filed under the national applications, if any element of a mark is subject to disclaimer, IPVN will issue a notice informing the applicant of the disclaimer request, and give the applicant an opportunity to argue against the disclaimer, if they wish. However, for International Registrations (IR) designating Viet Nam, normally IPVN would not inform the IR holders of any disclaimer imposed on any element of their marks, so the IR holders may not be aware of such disclaimers, and also do not have a chance to oppose. To be certain about the scope of protection of an IR in Viet Nam, the IR holder should file a request to obtain a certified copy of their IR in Viet Nam.

6.?????BORDER PROTECTION FOR TRADEMARK OWNERS IN VIETNAM

The IP?Law of Viet Nam?provides IP owners with different routes to protect their IP rights in-country. As such, they are?entitled to choose?among?the following options depending on their respective situations:

• Apply technology measures to prevent IP infringements;
• Request the voluntary compliance of stopping the IP infringements from any organisation or individual who commits such IP infringements, make publication of apology in newspapers and pay damages;
• Request the competent authorities to handle the infringement under administrative proceedings (so-called “administrative route”);
• Initiate a lawsuit against the infringer in line with the civil proceedings (so-called “civil route”);
• Initiate border protection related to IP (so-called “customs route”).

Regarding the?customs route, the IP owners must secure their registrations at the IPVN before initiating any customs proceedings. Non-registered IP assets cannot receive border protection.??

The border protection measures are handled by the Customs authority and include two types of measures?as below.?

• Temporary suspension of customs procedure upon the imported/exported goods that have signs of IP infringement; and
• Regular inspection and supervision to detect imported/exported goods having signs of IP infringement.

It is essential for the IP owners?to file customs recordals at the General Directorate of Customs?of?the Ministry of Finance. Customs recordals are recommended since?the?Customs?Directorate?will monitor the flow of goods and conduct seizures immediately if they identify any counterfeits or suspected products. Moreover,?this filing would enable the?Customs?Directorate to?inform the?owners in a?timely?manner,?and rapidly since they have already had contact information from the customs recordal applications. The validity of the customs recordal is?for?two years and is subject to an extension of another two years.?The extension request must be filed?within at least 20 days?before the expiration of the customs?recordal.

Further,?foreign?investors?can consider taking part in?customs training since Viet?Nam has long borderlines and there are more than 40?customs checkpoints across?the country.?This?training?provides?an opportunity to address brands,?and?counterfeit situations to the Customs officials,?and to assist in making?the?officials?aware of the brands, and?to?support the officials in identifying counterfeits?during their daily monitoring activities. The IP?owners?can organize the training themselves or join the annual customs training held by the General Directorate of Customs (normally twice a year).?

By,

Hau Nguyen, Country Manager, S&O IP Viet Nam, and Deputy Director, S&O IP Southeast Asia

Yen Pham, Trademark Head and Senior IP Attorney, S&O IP Viet?Nam

Hai Dinh, Jr. Associate, S&O IP Viet Nam

Nga Pham, IP Consultant, S&O IP Viet Nam

Thi Ly, IP Consultant, S&O IP Viet Nam

Daniel Greif, Director, S&O IP Southeast Asia