Cong Thanh Bui (James)
Managing Partner
Lan Nguyen (Megan)
Head of Legal Business Consulting
When registering for trademark protection in Vietnam, both organizations and individuals should carefully consider the eligibility criteria, scope of protection, and various other factors to safeguard their trademarks effectively, minimizing the risk of infringement and counterfeiting.
Securing trademark protection in Vietnam is significant in safeguarding the intellectual property rights of both organizations and individuals. This not only serves as a deterrent against counterfeiting and unauthorized usage but also cultivates enduring brand equity. For enterprises, possessing a registered trademark not only mitigates legal conflicts but also fosters customer trust and unveils fresh commercial prospects. Furthermore, registration for protection aids in governing trademark usage rights and adhering to intellectual property regulations both domestically and internationally. Therefore, this is a crucial step for the development and protection of businesses in the market.
1. Foreign entities have the right to register trademarks in Vietnam
Vietnamese intellectual property law grants foreign entities the right to register trademarks, in the following:
- Foreign individuals permanently residing in Vietnam, foreign organizations, and individuals with production and business establishments in Vietnam have the right to register trademarks for their manufactured goods or provided services;
- Foreign individuals and organizations conducting legitimate commercial activities have the right to register trademarks for products that they introduce to the market, even if these products are manufactured by others, provided that the original manufacturer doesn’t utilize the same trademark for the product and raises no objections to such registration; or
- Individuals and organizations that are representatives or agents of foreign trademark owners, whose trademarks are protected in other countries, are eligible to apply for trademark protection in Vietnam with the consent of the trademark owner.
Thus, foreign entities are eligible to register trademarks in Vietnam based on the aforementioned scenarios.
2. Conditions for trademarks protection in Vietnam
A trademark is protected if it meets 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 colors audio signs expressed in the form of graphic form;
- It is capable of distinguishing the goods or services of the trademark owner from those of other subjects.
- It is not similar to an earlier trademark registered by an individual or organization in Vietnam.
3. Scope of trademark protection
A trademark that receives a protection certificate in Vietnam is safeguarded solely within the defined scope and exclusively for the specific field granted in the protection certificate, along with the range of goods/services applied for by the applicant.
Well-known trademarks, if any, may enjoy broader protection encompassing unrelated goods and services. However, the recognition of a trademark as well-known takes place in a judicial context, on a case-by-case basis, and about stringent criteria that involve significant time investment for the trademark owner.
Hence, individuals and organizations should meticulously specify the scope of goods and services associated with their trademark to prevent unauthorized usage and infringement.
4. Essential documents preparation for trademark registration
Similar to registering a trademark in other countries within the Madrid system, when applying for trademark registration in Vietnam, the applicant must specify the category of goods/services and provide a detailed list of items within each category relevant to their business operations.
In addition, the applicant needs to conduct a thorough review of previously registered trademarks that are identical or similar, assessing the potential protection of the intended trademark.
For conducting a trademark search, please refer to the industrial property information portal at the following link: [Here]
Required documents :
Business license/Establishment license for organizations; or passport for foreign individuals;
- 05 trademark samples sized 8×8 cm;
- Power of attorney for industrial property representation service organization;
- Trademark registration declaration form;
- Document confirming permission to use special signs (if the trademark sought to be protected contains symbols, flags, badges of domestic and international agencies and organizations, etc.);
- Document confirming registration rights;
- Documents proving priority rights (if the application claims priority rights).
Note: these documents must be prepared in Vietnamese language.
5. Trademark registration representative
Unlike Vietnamese applicants, who have the option to either:
- Registering trademark protection themselves, or
- Authorizing an industrial property representative organization to register trademark protection on their behalf. Subjects with foreign affiliations seeking trademark protection must follow specific procedures:
- Foreign individuals residing permanently in Vietnam, foreign organizations, and foreign individuals with production and business establishments in Vietnam may apply directly or through a legally registered industrial property representation service organization recognized by the Intellectual Property Office of Vietnam;
- Foreign individuals without permanent residency in Vietnam, foreign organizations, and foreign individuals without production or business establishments in Vietnam must go through a legally registered industrial property representation service organization approved by the Intellectual Property Office of Vietnam.
Given the lengthy and intricate nature of the procedure for registering foreign trademark protection in Vietnam, it is advisable to engage the services of an industrial property representative organization in the country.
6. Trademark registration fee
|
No. |
Name of fee/charge |
Fee/fee details |
| 1. | Fee for international classification of goods/services | 100,000 VND (for each class of 6 products/services, from the 7th product/service onwards: 20,000 VND/1 product/service) |
| 2. | Application publication fee | 120,000 VND |
| 3. | Fee for publishing the Decision to grant a Certificate of Protection | 120,000 VND |
| 4. | Registration fee Decision to grant a Certificate of Protection | 120,000 VND |
| 5. | Fees for looking up information are for appraisal purposes | 180,000 VND (for each class of 6 products/services, from the 7th product/service onwards: 30,000 VND/1 product/service) |
| 6. | Content appraisal fee | 550,000 VND (for each class of 6 products/services) (from the 7th product/service onwards in each class: 120,000 VND/1 product/service) |
| 7. | Appraisal fee for claim of priority | 600,000 VND/per application/per request |
| 8. | Fee for granting a trademark registration certificate | 120,000 VND (for the first 1 product/service class, from the 2nd product/service class onwards: 100,000 VND/1 class) |
| 9. | Application fee | 150,000 VND (per application) |
7. Validity of trademark registration certificate
A trademark registration certificate remains valid for 10 years from the filing date of the trademark registration application. Before the expiration of the trademark, foreign individuals and organizations have the option to renew the registration for successive 10-year periods, provided they apply for an extension within 6 months before the expiration date.
Moreover, it is important to highlight that a trademark that remains unused in practice for a continuous period of 5 years or more may be subject to termination of its protection validity upon the request of a third party and the decision of the Intellectual Property Office of Vietnam.
8. Carry out periodic inspections
Conducting periodic inspections is an important part of ensuring compliance and upholding intellectual property rights for trademarks in Vietnam. Moreover, this process ensures that the trademark is still used properly and is not infringed. Therefore, this protects the rights of the intellectual property owner or trademark registrant.
- Review and revise the scope of trademark protection: owners need to review the actual use of the trademark, including considering how it is used, related products or services, and scope of use.
- Update and align with relevant legal regulations: ensure that the use of the trademark complies with the latest intellectual property rights regulations, encompassing provisions on protection and infringement to protect the rights of the owner and the person who has the right to register for protection.
- Conduct infringement checks: owners need to check whether there is any infringement of their trademark from third parties, and implement preventive measures or take necessary actions accordingly.
9. Conclusion
Trademark registration in Vietnam is essential for protecting intellectual property rights and fostering business growth. In addition, by carefully considering eligibility criteria, scope of protection, and other relevant factors, organizations and individuals can safeguard their trademarks from infringement and counterfeiting. A registered trademark not only strengthens brand equity but also provides legal protection and opens up new business opportunities. Therefore, investing in trademark registration is a crucial step for businesses that want to tap into Vietnamese market.
Need assistance with trademark registration in Vietnam? Check out PLF’s Intellectual Property service or contact our lawyers who can help guide through the entire process.
Contact PLF Law Firm today via email at inquiry@plf.vn or +84913 902 906 or Zalo | Viber | WhatsApp to receive a free 30-Initial Minute Consultation.
The article is based on laws applicable at the time noted as above and may no longer be appropriate at the time the reader approaches this article as the applicable laws and the specific cases that the reader may wish to apply may have changed. Therefore, the article is for referencing only.
