When and How to Register Trademark to Protect IP Rights

 

Considering trademark registration activities, the subject holder must comply with certain conditions to fulfill its trademark registration rights.

According to Article 13.1 Law on Intellectual Property amended in 2009:

-Organizations and individuals may register marks to be used for goods they produce or services they provide.

Register trademark in Vietnam

-Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.

-Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

-Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

-Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: i) This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; ii) The use of this mark causes no confusion to consumers as to the origin of goods or services.

If the subject falls into one of the cases mentioned above, they will have the right to register the mark at the National Office of Intellectual Property. After the subject condition has been met, consideration should be given to the condition that a mark can be protected as a trademark. In particular (i) It is a visible mark in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; (ii) It is capable of distinctive goods or services of the mark owner from those of other subjects.

However, there are some exceptions even when the mark satisfies those two conditions. For example, marks identical with or confusingly similar to national flags or national emblems; or marks identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations shall not be protected as a trademark.

In order to register for protection of a trademark, the registrant should pay attention to the subject matter and the conditions for the trademark to be protected in order to avoid being refused at the registration authority because of the failure to meet the conditions for the subject or the conditions for protection.

IP Attorney at ANT Lawyers – a Law Firm in Vietnam, a licensed IP agent in Vietnam shall be providing the advice to client to help the clients evaluate and file registration for trademark, patent, copyright and other IP related services

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What is the meaning of trademark?

What is a Trademark?

A Trademark generally refers to a “brand” or “logo”.

Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.

Trademark in Vietnam

Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.

It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Compani­­es Act does not in itself give protection against others who might commence using identical or similar marks.

Use of TM, SM and ® symbols

'TM' stands for Trademark and 'SM' stands for Servicemark. The use of TM and SM symbols notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by one who has filed a trademark application.

The ® symbol, can be used only once the trademark is registered and the registration certificate is issued. Also, you may use the registration symbol only in connection with the goods and/or services in respect of which the trademark is registered.

The registration process is the same for both trademarks and servicemarks.

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.   Please contact our lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at +84 28 730 86 529

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Transfer of Trademark Application in Vietnam

After filing of the application for a trademark registration, applicants might wish to transfer theirs application to others. There are lots of reasons for this but most of them derives from practical business activities and development needs of market, and society. For instance, two subjects transfer the application to each other for profit purpose; individuals want to set up an enterprise in the future and register a trademark as individuals and then transfer the application to the legal person to get early the priority date; at the moment, individuals are unqualified to be applying in applicants’ s name then individuals have others to do in application, in the appropriate time, and when the individuals are qualified according to statutory, they would implement the procedure of transfer the application.

Trademark in Vietnam

Transfer of application for a mark registration is implemented on voluntary basis between the parties or decision of the competent authority and shall be presented in the form of a written contract. However, owner of application is only allowed to transfer application at the following times: before National Office of Intellectual Property of Vietnam makes a decision on refusing to accept the application, decision on issuing or refusing to issue protection titles. If one of the parties in contract transfers application for transfer registration after the time mentioned above, that application shall not be accepted.

Necessary documents when implementing the procedure of transfer of application for a trademark registration include:

-Transfer contract: Contract must show name and address of transferor and transferee; the number of transfered applications or sufficient information to determine that application;

-        -Declaration for registration of transfer;

-        -Power of attorney (if authorized to industrial property agent i.e. ANT Lawyers).

According to regulations, duration of examining application for transfer registration is 2 months from the date of submission the application. However, this duration can be faster or slower, depending on the workload of National Office of Intellectual Property at the time the application is examined.

If the Client would like to know more about information and to be consulted about matters relating to transfer of application for a mark registration, please contact Intellectual Property department of ANT Lawyers, the trademark attorney in Vietnam.

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Can a company in same industry with similar name exist?

In short, the answer is yes; however, a seasoned trademark attorney would be the best person to ask regarding your particular situation. That being said, the United States Patent and Trademark Office (USPTO) routinely rejects trademark registrations based on the “likelihood of confusion” that consumers would face between a prospective trademark and one that is already on file with the USPTO. According to the USPTO, “likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion.” Some things to consider regarding “likelihood of confusion”:

Trademark in Vietnam

Aside from being rejected for having a similar textual composition to an already-existing trademark, a new registration may fail for also sounding alike, looking similar or creating “the same commercial impression in the consuming public’s mind”

The USPTO looks at whether a likelihood of confusion would exist as to the source of the goods and/or services rather than whether the actual goods and/or services are likely to be confused

The USPTO cannot perform pre-application searches or provide advisory opinions regarding registrations (hence the importance of an attorney - see below)

Businesses often seek the assistance of a lawyer to make sure their application gets accepted (which can be a time consuming process) and to avoid any future potential legal liability. For competitive rates on registering your trademark with the help of experienced trademark lawyers.

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What cannot be registered as trademark?

A trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a trademark is such that does not create any brand for a product can't be trademarked. A trademark should not be a conflicting trademarks with others. It means the trademarks should not create confusion between two trademarks. In general,

Trademark protection in Vietnam 

-Generic words can't be trademarked. For example you can't trademark the words like TV, Fridge, scooter, car etc.

-The names of the cities and countries can not be trademarked.

-The names of Gods and Godesses and the names of religious books can not be trademarked. For example you can't trademark *Lord Ram* or *Ramayana*

-Surnames can not be trademarked under normal circumstances. For Example you can't trademark *Sharma*

-Names of Constitutional Posts or Government posts can't be trademarked. For examples you can't trademark *Prime Minister of Vietnam

-Words which denote illegal or Immoral acts can't be trademarked. For example you can't trademark *Let's cheat* or *Let's grope*

-Words which are prohibited under names and emblems act can't be trademarked. For example, you can't trademark the official sign of Government of Vietnam.

Hope this helps!

Source: Quora

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How do you know when it's time to renew your trademarks?

As regulation of law on intellectual property, the mark, trademark or service mark, is one of protected subjects of industrial property right. However, to be protected by law, the owner of mark shall apply protection registration dossier to competent authority prior. When the owner registers and is granted a certificate of registered mark, the owner shall have the exclusive right to label the product, service or both, right to allow others to use the mark throughout mark license contracts, right to assign the mark ownership and right to prevent breaching action from any third party.

Trademark in Vietnam

The receiving of the trademark registration certificate is not a final point in your trademark life. To keep your trademark valid you must renew it every 7-20 years depending on the country the mark is registered in. There are no limits on how many times your trademark can be renewed. You can do it 1, 3, 6 times or do not do it at all if you don’t want to use your mark more.

The renewal date is indicated on the website of the Intellectual Property Office of the country where your trademark is registered. The only way to know it is just to remember this date. You can set a reminder on your phone or computer, print the date and put it up on the wall or think out another method to keep it in mind. The main thing is not to miss this date, otherwise, your mark will be canceled.

It might be easier if you hire trademark lawyers in Vietnam to register your mark because he will probably send you an email with the notification that it is time to renew your trademark.

Hope this help!

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How long is a trademark good for?

In the US, a trademark can last indefinitely (which is different than the case of patents or copyrights). However, the catch is that the trademark must continue to be used to identify goods and services. Keep in mind, there is a federal term for trademarks which is ten years. You can continue to renew for ten year periods.

However, there’s a bit of a catch here. You must file an affidavit between the fifth and sixth year following trademark registration. This affidavit simply states that the trademark is still in use. Failure to file this document will lead to a cancellation. It’s up to the individual to remember to do this as there will be no reminders issued.

Related post: Can a trademark expire?

Your best bet is to have an attorney help you with this process. It can be timely and expensive to miss important deadlines.

Source: Raad Ahmed - Quora

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Can a trademark expire?

Once your trademark is 10 years old, it would expire. This is a primary caveat with trademark; it only lasts for about 10 years. Once the 10 years have come close and you haven’t applied for renewal or restoration, the expiration process begins.

Time limit of trademark protection extension

To that end, it is definitely important for you to either renew or restore it:

1. Trademark renewal: Application for the trademark renewal has to be applied 6 months before the expiration date has come near. Once this period is not taken heed to, the trademark shall expire and you are only left with the next measure.

2. Trademark restoration: trademark restoration takes place after the expiration date is over. How is this option? The answer is a pretty simple one! Once the trademark has been expired, the most definite and the logical way to make sure that you still have access to it are through trademark restoration. Once you apply for the restoration, you would go through the same strides as you went through when you applied for trademark registration for the first time. You would go through the initial application. This application might be objected against by the department, and you would have to file a reply for it. This restoration process also involves putting the trademark in the journal for about 4 months. Once the mark is restored, you would again receive a certificate from the department that implies the same.

To that end, it would be better if you go by the former part of renewal and don’t wait for the restoration process.

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

Read More

When and How to Register Trademark to Protect IP Rights

Considering trademark registration activities, the subject holder must comply with certain conditions to fulfill its trademark registration rights.

According to Article 13.1 Law on Intellectual Property amended in 2009:

-Organizations and individuals may register marks to be used for goods they produce or services they provide.

Register trademark in Vietnam

-Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.

-Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

-Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

-Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: i) This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; ii) The use of this mark causes no confusion to consumers as to the origin of goods or services.

If the subject falls into one of the cases mentioned above, they will have the right to register the mark at the National Office of Intellectual Property. After the subject condition has been met, consideration should be given to the condition that a mark can be protected as a trademark. In particular (i) It is a visible mark in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; (ii) It is capable of distinctive goods or services of the mark owner from those of other subjects.

However, there are some exceptions even when the mark satisfies those two conditions. For example, marks identical with or confusingly similar to national flags or national emblems; or marks identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations shall not be protected as a trademark.

In order to register for protection of a trademark, the registrant should pay attention to the subject matter and the conditions for the trademark to be protected in order to avoid being refused at the registration authority because of the failure to meet the conditions for the subject or the conditions for protection.

IP Attorney at ANT Lawyers – a Law Firm in Vietnam, a licensed IP agent in Vietnam shall be providing the advice to client to help the clients evaluate and file registration for trademark, patent, copyright and other IP related services

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How do you go about getting a patent and trademark?

A trademark is registered at the Trademark Office in the country(ies) you want are currently doing business in or selling product in. You have to already be using that name or logo in “trade”, and then you can register it.

 Trademark Lawyers in Vietnam

While it is possible to do this yourself, it really is best done through a lawyer who has experience in this. It is not unusual for lawyers to just offer a flat rate for the process, on a per-country basis.

Patents are another thing altogether. They are ridiculously difficult to file and to respond to all of the questions and concerns that come back from the Patent Office before your application is approved. For that matter, your application has to have engineering diagrams and descriptions of sufficient detail that someone else in your field would be able to build a prototype of your design.

You need a specialist lawyer, a patent attorney. Unless you actually are a patent lawyer, there is no way you would be able to succeed at getting a patent approved doing this by yourself.

ANT Lawyers is supported by a team of experienced patent, copyright, design attorneys, trademark lawyers in Vietnam with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

We are representing and advising clients being multinationals, inventors, global partner law firms serving their clients in IP works in Vietnam.

Let ANT Lawyers help your business in Vietnam.

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How much is a trademark and how does it work?

The trademark symbol ™ can be used by anyone to identify a word, words, or symbol used to identify their business, product or services. There is no requirement to use the ™ symbol and their use has no legal significance, but it is wise to do so. When you use the ™ you notify the public of your claim of branding rights in a particular mark and in turn dissuade others from adopting the same or similar mark for the same or similar products or services. This staves off unwitting trademark infringement.

Register trademark in Vietnam

However, the registered trademark symbol ® may only be used by the owner of a mark following registration with the relevant national authority, such as the U.S. Patent and Trademark Office (USPTO), and you can find the latest fee information here: View Fee Schedule: Trademark Fee Information.

Here are some reasons the USPTO gives for registering your trademark:

constructive notice to the public of the registrant's claim of ownership of the mark;

a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;

the ability to bring an action concerning the mark in federal court;

the use of the U.S registration as a basis to obtain registration in foreign countries; and

the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

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