Trademark protection is now in the focus by many businesses aiming to protect their ownership of the trademark. However, this does not mean that the trademark of the business meets the conditions for protection. One issue that businesses often encounter at the time of trademark formation is the consideration of aesthetic factors without considering the similarity with the trademarks of other businesses or factors set out by the law for protecting the trademark. This causes some disadvantages for businesses in the process of developing, circulating products, and providing services. To eliminate these disadvantages, the article below outlines some criteria for trademark that businesses should consider while creating the brand image of their business.
A trademark is a sign used to distinguish goods and services of different organizations or individuals. Take the example of auto industry, when it comes to Mercedes, it reminds people of German high-end cars. Similarly, for Tesla, we immediately think of high-end electric cars and the famous billionaire, Elon Musk.
In terms of trademarks, there are two most common types of trademarks in Vietnam: logo mark and word mark. They can be illustrated as below:
In terms of color, the mark can be distinguished by two categories: (i) colored mark and (ii) colorless mark.
To be regarded as a trademark and have a high probability of being awarded protection upon registration, a mark must meet several general requirements as follows:
Businesses should also consider the following aspects when registering the mark:
However, marks with identical or similar elements as above are only considered at the substantive examination of the registration when it has overlapping products/services with other registered trademarks.
Thus, the prerequisite for ensuring the success of trademark registration is the affirmation of its uniqueness, novelty, and characteristics and those of the corresponding group of goods/services.
However, coincidence is inevitable. It is common for companies to have the same ideas and ways of expressing their mark. Therefore, before conducting trademark registration, the trademark of the enterprise should be checked on the intellectual property database to determine the possibility of success for its registration from the beginning or devise a strategy to adjust the trademark accordingly.
Currently, the National Office of Intellectual Property (NOIP) under the Ministry of Science and Technology is the agency that assesses the criteria to register trademarks and issues trademark registration certificates.
For a trademark to be granted a protection certificate in Vietnam, it is necessary to carry out a trademark examination including formality examination and substantive examination. This process usually takes from 12 to 24 months, depending on the status of processing applications by the NOIP.
Based on the results of the substantive examination, NOIP will issue a decision to grant or refuse the protection certificate to the registered trademark. At this stage, if applicant received the notice of intending to grant a trademark protection certificate, the applicant should pay fees as prescribed to the NOIP to be granted a protection certificate. Beyond the prescribed time limit, NOIP will not issue a protection certificate to the applicant.
Regarding the contents of the protection certificate, the certificate recognizes the trademark owner, also known as the owner of the protection certificate, the subject of protection which is the trademark, the scope of protection including the group of products/services that the trademark registers and the term of protection. The trademark registration certificate is valid for ten years from the date of application and can be renewed once every ten years.
Trademarks are a valuable asset and are symbolic of the image associated with a company’s products and services. So when a company has an idea for a trademark, the enterprises should consider if the trademark they are creating is eligible for protection. This is to avoid the situation where a trademark has been in use for a long time and has gradually become the business’s identity/image in the market, but it is forced to change or adjust due to a genuine protection request from a third-party.
Businesses also need to understand that to assess the registration capacity of a trademark, the NOIP must consider many factors as well as intellectual property requirements. Therefore, to increase the chance of success for trademark registration, businesses should be soon prepared for the registration of their trademark and take note of the above issues.
The article is based on applicable law at the time noted as above and may no longer be appropriate at the time the reader approaches this article as the applicable law has changed and the specific case that the reader wishes to apply. Therefore, the article is only for reference.