“When goods are imported for exchange and circulation in the Vietnamese market, one of the issues to be concerned about is protecting trademarks in the Vietnamese market. Since foreign organizations, enterprises and traders (“Foreign applicants“) do not permanently reside in Vietnam, they do not produce nor have any business establishments in Vietnam, but they only carry out activities related to goods exporting for other agents and units in Vietnam. Registration of trademark protection in accordance with the Vietnamese Law should be prioritized and is commonly practiced. This raises the question of how to protect international trademarks in Vietnam?”
1. Initial check for trademark
Foreign applicants need to initially perform a preliminary lookup of the trademark expected to be used in the Vietnamese market. It should be done through the electronic library system of the National Office of Intellectual Property of Vietnam (“IP Vietnam”) and the international data system of the WIPO intellectual property agency. This is to find similar trademarks, which may be confused with the trademark of the foreign applicant for similar product groups.
Additionally, foreign owners should also select industrial property representatives who are experts in this field, to support the initial lookup and assessment of the distinction of trademark(s) from other registered trademarks with IP Vietnam.
However, it should be noted that the initial lookup of a trademark is only for reference. It minimizes the risk of the trademark being duplicated with similar registered trademarks. It does not ensure that there will not be any similar or duplicated trademarks at the time of filing the application.
2. Consider and select a strategic trademark in Vietnamese market
Based on the initial lookup results, foreign applicants need to select their trademarks strategically in the Vietnamese market and be able to meet the protection requirements. This trademark can be in the form of letters, words, drawings, images, including horsy-dimensional shapes or a combination of such elements. It also needs to ensure differentiation, making goods of foreign applicants distinguishable from those of other trademark owners.
3. Perform trademark registration
Direct registration at IP Vietnam via industrial ownership representative.
Foreign organizations, enterprises and traders not permanently residing in nor having any production and business establishments in Vietnam, must complete an additional step of applying through industrial property representatives (such as PLF).
The registration process will be carried out in the following stages stated in the ‘Law on Intellectual Property of Vietnam’:
- Formality examination (1 month)
- Publication of intellectual property application (2 months)
- Substantive examination of application (9 months)
- Notification of results of substantive examination and grant of protection title (2-3 months)
International trademark registration via Madrid System with appointment in Vietnam.
Similarly to the procedures for international registration of Vietnamese trademarks through the Madrid system, foreign applicants can carry out the procedures for registration of trademarks in the following order:
- Step 1: The applicant shall apply to the competent authority in the host country.
- Step 2: The application shall be submitted to the World Intellectual Property Organization (WIPO), which conducts formality examination and conducts publications on the official website.
- Step 3: The application is transferred to IP Vietnam to carry out substantive examination.
Upon meeting the formal requirements as notified by the International Office, the trademark application will be processed by IP Vietnam and conclusion on the possibility of trademark protection would be provided within 12 months from the date of notification by the International Office.
In case the international trademark meets the required conditions, IP Vietnam will decide to approve the protection of the international registration mark and send it to the International Office for statement of approval for international trademark registration in Vietnam.
In case a trademark does not meet the conditions or is flawed, IP Vietnam will issue a notice of temporary refusal to grant a protection title and send it to the International Office. After this, the foreign applicants can authorize an industrial property representative to continue correcting the shortcomings or raise an objection to the refusal to grant protection title.
4. Maintaining the validity of the protection title
A trademark registration certificate issued to an applicant is valid for ten (10) years and can be renewed unlimited times, each time for ten (10) years.
Therefore, a foreign applicant should note that after being granted a protection title, the procedures for reviewing the validity of the protection title should be carried out in accordance with Vietnamese regulations to maintain the validity and to protect intellectual property rights of such trademark. This procedure also helps the owners of the trademark save time and costs of re-registration after the protection title has expired.
Thus, in the Vietnamese market, for a trademark to be protected, the implementation of registration procedures at IP Vietnam should be prioritized. In addition, the time taken to complete 1 trademark application at IP Viet Nam may be longer than specified. Depending on the actual situation and business plan of the applicant, appropriate options will be selected to establish trademark ownership as quickly as possible. At the same time, the maintenance of the validity of protection title(s) should also be taken care of whilst following the Vietnamese laws.