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1.
Name of Vietnam Trademark Act and any statute or code into which it
may be incorporated?
Date of promulgation and Effective Date of the Act?
There is no specific Trademark Act, but it is incorporated into the
following legal texts:
-
Part VI chapter 2 of Civil Code of SRV adopted by the 9th National
Congress on
October 28th 1995, effected from July 1st , 1996 on Industrial Property Rights.
- Decree 63/CP passed by the Government on
October 24th,1996,
revised and amended according to Decree 06/2001/ND-CP dated February 1st
, 2001 on Industrial Property
- Circular No.
3055/TT-SHCN of the
Ministry of Science Technology and Environment (MOSTE) dated 31
December 1996 came into force on 15 January 1997
providing the procedures for establishment
of industrial property rights that;
- Regulation No.308/DK issued by the National
Office of Industrial Property (NOIP) dated 11 June 1997 and effective
from 1 July 1997 stipulating form and content of applications for
registration of industrial property
2. Definition of Trademark under
Vietnam Law?
A
trademark is defined as a sign used to distinguish the goods or
services of one producer/service provider from those of another. A
trademark may be presented in the form of letters, images or a
combination thereof in one or several colors.
3. Registrable signs under
Vietnam Trademark Law?
To be registrable, a trademark must be
distinctive and must not fall within the signs excluded from
registrability.
A sign used as a trademark
shall be recognized
as possessing distinctive characteristics if
the following conditions satisfied:
-
It is created
from one or more distinctive, recognizable elements or
from elements which are, as a whole, distinctive or recognizable;
-
It is not identical with or confusingly similar
to any extent that
may cause confusion with any trademark of another person which is
currently protected in
Vietnam
including those trademarks registered under the Madrid Agreement
-
It is not identical
with or confusingly similar
to
any extent that may cause confusion with any trademark of another
person claimed in an application filed with the authority on an
earlier priority date
including those
trademarks filed under the Madrid Agreement;
-
It is not identical with or confusingly
similar to any
extent that may cause confusion with any trademark of another person
in respect of which a certificate of protection has expired or been
suspended for less than five years, except where the certificate of
protection has been suspended on the basis of non-use of the
trademark
-
It is not identical with or confusingly
similar to any
extent that may cause confusion with any trademark of another person
deemed to be well-known (in accordance with article 6bis
of the Paris Convention) or to any trademark of another person
currently being widely used and recognized.
-
It is not identical with or confusingly similar
to any extent that
may cause confusion with any protected trade name or with any
protected geographical instruction (including appellation of origin
of goods).
-
It is not identical
to any protected or a prior-filed
industrial design.
-
It is not identical
to a figure or character which is already under the copyright of
another person, except where permission has been granted by such
person.
4.
Signs are excluded from protection under Vietnam Industrial Trademark Law?
The following signs shall be excluded from trademark protection:
-
Signs that do not
possess distinctiveness, such as simple shapes and geometric
shapes, figures, capital letters, letters that can not be
pronounced as a word, and foreign letters of uncommon languages
(common foreign languages are widely understood to include
English, French, Russian and Chinese) . Those signs can be however
registered if they have been widely used and recognized;
-
Conventional
signs, symbols, ordinary devices, and denominations of goods in
any language that are used widely and popularly and known to many
people;
-
Signs indicating
time, place, manufacturing process, type, quantity, quality,
nature, composition, utility or value that are descriptive of
goods, services or origin thereof;
-
Signs likely to
mislead or cause confusion or to deceive consumers as to the
origin, nature, function, utility, quality or value of goods or
services;
-
Signs identical
with or similar to official quality marks, control marks, warranty
marks, etc. of Vietnam, foreign countries or international
organizations;
-
Signs or names
(including pictures, names, nicknames and pseudonyms), devices or
symbols identical with or confusingly similar to national flags,
national emblems, portraits of national leaders or heroes, public
figures, geographical denominations, organizations of Vietnam and
foreign countries, unless duly authorized; and
-
Signs that are
contrary to law, social interests, public order and humanity.
5. Who may file Trademark Applications?
All
individuals and entities including foreign individuals and entities
engaged in legal production and business activities are entitled to
file applications for registration of their trademarks to be used for
products or services they are manufacturing or providing or intend to
manufacture or provide.
6. Is use of a mark required for its registration
Vietnam?
No.
Actual or prior use of a trademark is not required for trademark
registration in
Vietnam.
So it is possible to seek registrations of trademarks for future use
in Vietnam. However a registered mark may not be discontinued for any
five consecutive years, otherwise, the trademark is vulnerable to
attack.
7. How
to file Trademark Applications in Vietnam?
Trademark
applications can be filed with the NOIP's Office in Hanoi or its
representative offices in Ho Chi Minh and Danang Cities (the NOIP's
Offices).
Vietnamese individuals and entities may file trademark applications
directly with the NOIP' offices. Foreign individuals permanently
residing in Vietnam or foreign entities having legal presence in
Vietnam or real and effective production and business establishments
in the country may also file applications directly with the NOIP's
offices.
Trademark
applications of foreign individuals or entities other than above
listed cases must be filed through a licensed local IP agency like
AMBYS.
An online
trademark filing system has not been available in Vietnam yet.
8. "First- to- Use" or "First- to- File" Principle is applied under
Vietnam Trademark Law?
"First to
file" principle is applied for trademark registration in Vietnam,
accordingly the trademark registration certificate will be granted to
the person who is the first to file an application for the trademark.
However,
the "First- to- File" principle shall not apply to the following
cases:
-
well-known marks under the Paris Convention; or
- widely
used and recognized marks.
In these cases, the protection will be given to
the applicant who can prove that his trademark has been well-known or
been widely used and recognized.
9. Can
priority be claimed for trademark in Vietnam?
Yes. Priority in accordance with the Paris
Convention (PC) can be claimed based on an earlier application filed
in a foreign country - PC member of or an officially recognized
international exhibition held in
Vietnam
or in a foreign country - PC member. Priority can be also claimed
according to bilateral agreements or based on the reciprocity
principle. To secure the priority right, the application must be filed
within 6 months from the filing date of the first application filed
abroad or the date of the exhibition as above mentioned.
10.
Which system of classification of goods or services is applied in
Vietnam? Multi-class Trademark Applications can be filed under Vietnam
Trademark Law?
The
International Classification of Goods and Services under the Nice
Agreement (currently the eighth edition) is applied for classification
of goods/services of trademark applications filed in Vietnam.
Yes. A
single trademark application can not cover more than one trademark,
but can cover more than one class up to 45 classes of goods and
services.
11. Is Vietnam a member of
Madrid agreement and /or Protocol?
Vietnam has been a
member of Madrid Agreement since 1949.
Vietnam is
considering to become a member of Madrid Protocol.
12. Is
General Power of Attorney acceptable?
Yes. The NOIP accepts a general power of attorney
for trademark filings of one applicant. If some particular marks of
the applicant are specified in a power of attorney, then for any
subsequent marks a separate power of attorney will be required. At the
filing Power of Attorney can be submitted by fax copy, provided that
the original copy shall be supplemented within 3 months from the
filing date.
13. How
to examine trademark applications?
All
trademark applications will be examined as to form by the NOIP
within 3 months from the filing date. A Notification of
Acceptance providing official filing date, official filing number, and
priority date if any will be issued by the NOIP if the application is
found to satisfy the formality requirements. In case the application
does not meet the formality requirements, the NOIP will issued a
Notification of Refusal of Acceptance or Notice for Amendment or
Correction, as the case may be.
Upon
acceptance as to form, the application will be examined as
to substance within 9 months from the date of acceptance of
the application as to form. During the substantive examination the
NOIP shall consider if the claimed trademark possesses distinctiveness
and falls into the signs excluded from trademark protection. Within
this period, the applicant may request for amendments or minor change
to the application, for example, to disclaim some elements of the mark
or restrict the goods and/or services.
International trademark applications filed under
the system of Madrid Agreement shall also be examined by the NOIP as
to substance within 1 year from the date of extension of
protection to
Vietnam.
Where the
trademark is found unregistrable, the NOIP will issue a Notification
of Examination Result of Application notifying the applicant of the
intended refusal of grant of the certificate and the grounds
therefore, or of the shortcomings or amendments which should be cured
or made. The applicant has 2 months to reply or make necessary
amendments. If the applicant fails to reply or the response is not
appropriate, the NOIP will officially issue a Notification of Refusal
of Granting Certificate of Trademark Registration.
If the
trademark is found registrable or the response to the office action,
as the case may be, is satisfactory, the Certificate of Trademark
Registration or Decision of Acceptance of Protection will be granted.
14.What is the maximum term of protection? How to renew Certificate of
Trademark Registration? Is there grace period for late renewal?
A
Certificate of Trademark Registration shall
take effect from the granting date for a period of ten (10) years
calculated from the filing date of the application and is renewable
indefinitely for periods of ten years.
To renew Certificate
of Trademark Registration the renewal request shall be filed with the
NOIP within 6 months before the expiry date of the
preceding validity term subject to
payment of renewal fees.
Yes,
there is 6 - month garce period for late renewal, in this case a fine
of 10 percent of the renewal fee for each month overdue shall be paid.
15. Is
unregistered trademark protected under Vietnam Trademark Law?
No. The right to a
trademark in Vietbnam shall arise upon registration of it with the
NOIP or via Madrid System according to the Madrid Agreement.
The right to a well-known trademark shall arise upon a
decision on recognition of the well-known trademark by the NOIP.
16.
Can
an opposition be brought against a trademark application/registration
before Vietnam National Intelectual Property Office?
Yes,
an opposition can be brought before the National Office of
Intellectual Property (NOIP) against any published trademark
application during the period of its substantive examination.
Within 5 years from the date of granting trademark registration
certificate, a cancellation can be brought before the NOIP against it.
There is no time limit for cancellation of the trademark registration
in bad faith.
17. If
I have a registered trade mark, does that automatically entitle me to
use that mark as my domain name?
No. Because the same mark may be registered by different
proprietors for different goods or services, someone else may also
have legitimately registered the mark as their domain name. Domain
name is registered on the first come first registered basis.
18. If I have a registered domain name, does that automatically
entitle me to a trade mark in the same name?
No. Because trademark
right is established in
Vietnam
by its registration with the NOIP. Even if your domain name has been
properly registered, the same or a similar trade mark may not satisfy
the basic requirements for trade mark registration, or it may be
confusingly similar with someone else's earlier mark |
