Intellectual Property and Trademark Registration Services in Vietnam

 

In Vietnam, many businesses today have not paid sufficient attention to trademark protection. Only when their trademarks would be infringed by other companies or competitors, they really concern to protect their trademarks and business through trademark registration, trademark opposition or take further actions. Such situation will negatively impact the business financially.

Trademark Registration services in Vietnam

Trademark rights will be protected within the national territory, therefore when a trademark has been registered in Vietnam, it will be protected in Vietnam. If one company wishes their trademarks to be protected in other countries, it could:

-Directly register in each country or

-Register via the Madrid International registration by filing a single application which indicates the registrations at respective countries.

If registered under the Madrid International, firstly, trademarks must have been submitted trademark applications or have registered in Vietnam, depending on whether the country for protection is under the Madrid Protocol or the Madrid Agreement.

Law on Intellectual Property and its related documents could also be referred to for further information.

ANT Lawyers’ services in the field of trademark registration advice covers:

-Look-up, assess and consult possibilities to register trademark in Vietnam and abroad;

-Represent clients in applying for certificates of trademark registration, record modification, extend degree of trademark protection in Vietnam and abroad;

-Evaluate the effectiveness of the certificate of trademark registration in Vietnam and the possibility of trademark rights violation;

-Implement of the protected trademark rights: investigate, monitor, negotiate, seek arbitration or initiate a lawsuit or request other competent agencies for handling of infringement in Vietnam and abroad;

-Negotiate, draft, evaluate and register the of changing trademark ownership in Vietnam and abroad;

-Advise on building strategies, brand development;

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

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Why Investor Needs to Protect Trademark in Vietnam?

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

 

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the trademark protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the Trademark process and will work closely with you as you apply for your IP.

 

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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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Legal consequences of the trademark with origin in Vietnam and designation EU registered under Madrid system after Brexit

After 47 years being a member of EU, UK officially left EU on January 31, 2020. This is an almost half of century relationship, thus, there would be a number of arising confusion as well as the issue which is in need of negotiation to complete the process including trademark registration with origin from Vietnam.

 

Trademark protection in Vietnam

UK is the member of Madrid system from Dec 1st, 1995, concurrently, EU has also officially become a member of this system since Oct 1st, 2004.  According to the international trademark searching Madrid Monitor, there are 292 Vietnamese trademarks registered internationally designated EU which include both the trademarks during the examination period and granted certificate.

How is the fate of these trademarks after Brexit?

According to the guidance from Intellectual Property Office of UK (“IPO”), the owner or applicant of the trademark which submitted according to the Madrid system and designated EU need to note the following points:

International trade mark registrations protected in the EU (“EUTM”) under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021. According to Brexit Agreement, IPO will create a system: “comparable UK trademark” in relation to each international (EU) trade mark designation. In case EUTM are still in the examination period, the applicant has the right to register that exact trademark in UK in the transition period from January 1st, 2021 to September 30th, 2021. In details:

Firstly, to the trademarks which has been protected, UK will:

-Be recorded in UK registration system;

-The recorded trademark will have the same legal status as the trademark protected according to UK law;

-Keep the submitting of the application as EUTM;

-Keep the priority date according to the Madrid system or seniority date according to UK law;

-Be recognized as independently existing trademark according to UK law and may be challenged, assigned, licensed or renewed separately from the original international registration.

However, it is noted that: (i) the Comparable trademarks will be created at no cost to the holder of the international trademark, except a minimal administrative burden will be placed upon the rights holder (ii) the applicant will not receive the trademark certificate, however, they could be searched for the trademark at GOV.UK.

Secondly, for the EUTM which are still in examination phase:

In case EUTM are still in examination phase, on January 1st, 2021, the applicant has the following rights:

-Apply the trademark application in UK for EUTM during the transition, nine months from January 1st, 2021 until September 30th, 2021 as mentioned above;

-Keep the earlier filing date as EUTM;

-Enjoy other international priority claim effecting on EUTM in accordance with the seniority claim according to UK law.

However, it is noted that when applying the EUTM during the examination phase according to the UK trademark system then:

-The trademark applied in UK must be the same with the trademark in EU application which submitted previously;

-Goods/services required to protect of the trademark must be the same or included in the scale of EUTM.

In case the application submitted into UK does not satisfy the above criteria, the application would not enjoy the priority date or the priority claim of EUTM.

The application after having been submitted within that period and satisfies the criteria will be deemed as UK application and be examined according to UK law.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP. We routinely match inventors with experienced IP attorneys for a free consultation on our platform and offer a money back guarantee. 

Source ANT Lawyers : https://antlawyers.vn/library/legal-consequences-of-the-trademark-with-origin-in-vietnam-and-designation-eu-registered-under-madrid-system-after-brexit.html

 

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What happens if I have a trademark without registering?

Trademark registration provides protection and exclusive rights to the owner of a Trademark in relation to his goods and services used commercially.

Trademark registration services in Vietnam 

A Trademark differentiates the identity and brand name of a business and separates the goods and services of a business from that of other similar goods or services in the market.

If your Trademark is not registered, it can be easily infringed upon by someone. In such case, you cannot file an infringement suit, but only claim remedy for passing-off. Passing off in trademark is when infringement of an unregistered trademark happens. The mark is not only deceptively similar to the trademark of other company but also creating confusion for the customers, which ultimately results in damage to the business of company.

Legal Remedy In Case Of Passing Off

The trademark owner can file a suit in district court/ High Court within the local limits of the jurisdiction, where the person instituting actually and voluntarily resides or carries on business or personally works for gain.

Where the passing off does not involve the use of trademark or where there is no sale of goods, the suit may be filed in a subordinate judge’s court or a court of superior to it. The plaintiff in a suit for passing off must be the owner of an unregistered trademark which has acquired reputation in relation to some goods or the owner of the goodwill in a trade name, or get-up relating to some goods or business or profession.

The defendant in the suit must be a person who has passed off or whose activities are likely to pass off his goods or business as the goods or business of the plaintiffs. Passing off actions may be instituted by many plaintiffs in a representative capacity provided there is a common interest, common grievance and a remedy beneficial to all. The rules governing the preparation of the plaint and the subsequent proceedings are the same as in any other suit and are governed by the Code of Civil Procedure.

If you are looking for an experienced Trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark. We routinely match inventors with experienced Trademark attorneys for a free consultation on our platform and offer a money back guarantee.

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What are The Advantages of Trademark Registration?

A Trademark is essentially a brand name. It may comprise of a word, name, combination of words or names or a symbol used to identify and also differentiate goods/ services produced/ provided by one seller from those offered by other sellers. It is also used to indicate source of the commodities.

Trademark in Vietnam

Trademarks allow you to protect your company’s name, and to specify which types (classes) of goods and services your company’s trademark should be applied to. For example, coffee mugs vs. outdoor apparel. It’s important to point out that trademarks are intangible assets, and can be bought, sold or licensed.

Other Advantages of Registering a Trademark:

-It grants the right to use the registered trademark symbol: ®;

-It grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary damages;

-It acts as a bar to the registration of another confusingly similar mark;

-Ability to have the customs service block the importation of goods bearing an infringing mark; and

-It may serve as the basis for an international trademark application.

If you’re considering registering for trademarks then you should hire a competent Trademark Lawyers in Vietnam who will make sure everything is protected from the get-go. Feel free to visit ANTLawyers.vn for this. We’re a legal marketplace that makes it easy for entrepreneurs to hire and work with quality, vetted lawyers.

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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.

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Is it necessary to hire a lawyer when applying for a trademark?

The basic answer is No. Applying for a trademark can be done on your own initiative and there are no requirements that a lawyer be involved on your end.

 Trademark registration services in Vietnam 

But, to be honest, it really would be in your best interest to speak with an attorney first. Of course no one wants to hear this, and I hate to be "that guy." However, obviously you care about your company, and you want to make sure it is in the best hands.

Particularly when dealing with IP issue, there are certain fears/concerns about protecting all of your rights. Of the many reasons to hire a lawyer for a Trademark (TM), here are few...

1. The process can be complex and lengthy. You are most likely focused on developing your company and are probably working full-time in that capacity. Taking up this task on your own can really limit your ability to focus on your company.

2. The research and background work required for TM's is also exhaustive and can be tricky. Although you may be able to do this yourself, there is a chance you might make a mistake, overlook something, or simply take a path that is not the best for your company. A lawyer is a safe-guard against these problems.

3. Hiring a lawyer who is business savvy and well-versed in your particular industry cannot only help you with your Trademark (TM), but can also develop a strong business plan moving forward. IP is a particularized field, and getting a lawyer on board who has helped similar clients in the past with IP issues can make a HUGE difference for your business.

If you do decide to go it alone, here is a link to the US TM and Patent Office website; How do I file a Trademark Application? They give you some direction and guidance, as well as links to the relevant documents/forms you will need.

Source: Quora

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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 difference between a trademark and a wordmark?

We have established that a wordmark is a logo, but not every logo is a wordmark.

A wordmark or logotype is usually a distinct text-only typographic treatment of the name of a company, institution, or product name used for purposes of identification and branding.

A trademark on the other hand can be a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.

 Trademark registration services in Vietnam  

The number one difference between logos and wordmarks is that wordmarks are text-based logos. These types of logos are completely devoid of extra pictures, meaning that logos such as Pepsi and MasterCard are not wordmarks, since these logos contain images as well. You can probably think of several examples of wordmarks off the top of your head, but some of the most famous are FedEx, Coca-Cola and even world-famous Google. These are all examples of highly successful and easily recognizable wordmarks that are easily identified with around the world.

Why would someone use wordmarks over something like a pictorial graphic?

It ties into the fact that they are a more direct type of branding. When you provide just a picture, such as Joomla's logo, you have to have faith that a person can learn the association between a picture and a name and service, keeping them separate from other pictorial logos. Imagine if all of our favorite brands and companies were only identified by a simple graphic. We would have hundreds or even thousands of these little pictures to remember. Trying to keep them straight would become very confusing!

When providing a wordmark, such as Google, you provide a name while still providing a recognizable image for the viewer. Wordmarks are becoming the standard when it comes to designing logos, as it has been observed by some studies that they are more effective than their pictorial counterparts are.

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and TrademarkOffice. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled “Basic Facts about Trademarks”.

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How can I avoid trademark infringement?

Avoiding a trademark infringement from occurring is crucial to building up trust in the market. There have been instances where brands have unknowingly infringed on other brands due to a variety of reasons. The best way to avoid infringements is to compare the trademark, study related products and services, checking the strength of the mark and learning from the existing confusion among consumers, all of which we have briefly covered in this article to help you avoid infringing upon an already existing mark.

Trademark registration services in Vietnam  

To avoid trademark infringement, the company needs to work on the following before carrying forward the process of trademark registration or usage in the market.

1. Comparing the Trademark:

There should be a thorough research of the trademark that is decided to be used to avoid confusion or clash with other existing marks.

The Trademark database should be well researched and if similar marks are found, then one needs to analyze the features that can cause infringement like appearance, sound, concept, etc.

2. Study related products and services:

Herein, the comparison of actual product and services are done and not the class number of registration to find out the identical features that might lead to infringement.

3. Check Strength of the Mark:

This is another factor that determines the level of strength of the trademark which varies from generic, suggestive to arbitrary.

The lesser is the strength; it is more likely to be infringed.

4. Learn the existing confusion among consumers:

At times, you will see people calling up a wrong company for a similar product, it is then, that you need to realize that the trademark is directing to confusion and misguiding the consumers.

This might lead to infringement, and to avoid that, precautions are to be taken to curb such events or situations.

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