Do you have to buy trademark in all countries?

If you or your business operate a website, you should get a US trademark, unless the website uses a ccTLD other than the .us TLD. There are many benefits to getting a US trademark. A US trademark seems to be the most popular jurisdiction for trademarks.

Trademark Use In USA

If you operate a blog with Amazon or CJ or other US-based affiliate ads or even Google Adsense, you may base your application based on actual use in commerce in the USA by claiming “Online advertising and promotional services” as your service.

Trademark in Vietnam 

If you operate a website that sells goods directly or by drop shipping, you should be able to claim services such as an “On-line retail store services featuring … (describe your goods.)”

Make sure that you use your trademark within view of your ads when creating your website, otherwise, the USPTO may reject your trademark specimen. USPTO trademark applications are usually examined within 4 months and you can get a registration within 8 months.

Getting a US-based trademark is generally preferred for protecting domain names with the .com, .net, .org, and .us TLDs from UDRP or Cybersquatting Complaints.

In what other Countries Should I Register my Trademark?

Your business should register its trademark in every country:

·         where it does business,

·         where it will be offering its goods and services,

·         where it manufactures its goods, and

·         where you plan on licensing your company’s trademark.

Some jurisdictions don’t need use before registration, such as the UK and the EU, and China. Other countries allow for registration based on use and registration abroad, such as the USA and Canada. In any case, trademarks are vulnerable to cancellation after the third anniversary of their registration in most countries if you can’t prove “use of the trademark” within the previous 3 years.

The UK examines and usually approves trademarks within 3 months of filing your application.

The EU examines and usually approves trademarks within 6 months of filing your application.

Canada’s trademark office, CIPO, has typically been taking 12 to 14 months to examine trademark applications filed since 2016.

Oppositions cause uncertainty and can get expensive. Any interested person may oppose a trademark application after a trademarks office has approved it and published it for “opposition” in its Trademarks Journal. If there’s no opposition, most countries will send you a Notice of Allowance.

Some countries require a registration fee. The USPTO requires a Statement of Use fee.

In any case, it is wise to file your trademark applications as soon as you adopt and clear a trademark. If you are planning on growing your business quickly or launching a product before getting a Notice of Allowance, it is important to do a full trademark search to clear your trademark choice. Otherwise, you may face a trademark infringement lawsuit soon after your sales start growing or your website gets traffic.

If you think that you have a very valuable domain, trademark the domain either in the US or in the country that you list in your address as the registrant of the domain name.

Global Trademarks

There’s no such thing as a Global trademark. The Madrid Protocol, however, allows you to file one application in many countries using WIPO’s Madrid System. Trademarks

How can I protect my trademark?

Trademarks are registered at the national and regional levels. For example, there are trademark offices in each country in the EU and there's an EUIPO trademark office https://euipo.europa.eu/ohimport....

So you can have a trademark registered in Italy, Spain, Croatia, and Romania, as well as in the EU.

Trademark law, treaties and documents

The treaties WIPO administers, together with national and regional laws, make up the international legal framework for trademarks.

Trademark-related treaties administered by WIPO

·         Paris Convention

The Paris Convention is an international treaty that allows applicants to file a first application in their home country. That application is referred to as a priority document or filing, and the date it is filed is called the priority date.
→ The Paris Convention gives you a 6-month window to file additional trademarkapplications in various countries after you file a trademark application in your home country and still claim your priority date.

·         Madrid Agreement (Marks)

Nationals of any of the Madrid contracting countries may, in all the other countries party to this Agreement, secure protection for their marks applicable to goods or services, registered in the country of origin, by filing the said marks at the International Bureau of Intellectual Property (hereinafter designated as "the International Bureau") referred to in the Convention establishing the World Intellectual Property Organization (hereinafter designated as "the Organization"), through the intermediary of the Office of the said country of origin.

·         Madrid Protocol

The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks, which was concluded in 1891, and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996.

·         Nice Agreement

The Nice Agreement established a classification of goods and services for the purposes of registering trademarks and service marks (the Nice Classification), in classes numbered 1 to 45.

·         Vienna Agreement

The Vienna Agreement, concluded in Vienna in 1973 and amended in 1985, establishes a classification (the Vienna Classification) for marks that consist of, or contain, figurative elements, in classes 1 to 29 and up to four sub-levels.

·         Singapore Treaty

A modern and dynamic international framework for the harmonization of administrative trademark registration procedures.

·         Trademark Law Treaty

The Trademark Law Treaty (TLT) standardized and streamlined national and regional trademark registration procedures by simplifying and harmonizing those procedures to make trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable. The procedures are divided into three main phases:
1. application for registration;
2. changes after registration; and
3. renewal.
The rules concerning each phase are constructed so as to clearly define the requirements for an application or a specific request.

·         Nairobi Treaty:

All States party to the Nairobi Treaty are under the obligation to protect the Olympic symbol – five interlaced rings – against use for commercial purposes (in advertisements, on goods, as a mark, etc.) without the authorization of the International Olympic Committee.

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Turkey Imposed Anti-dumping Duty on Products of Vietnam

The Ministry of Economy of Turkey has just issued the conclusion on anti-dumping investigations against such products as plywood and polyester textured yarn imported from Vietnam.

Anti-dumping law firm in Vietnam

According to the investigation report content of the Turkish Ministry of Economy, there are only 2 Vietnam enterprises engaged in providing information to the investigating authorities.

These enterprises will not be subjected to the application of measures against evasion of anti-dumping duty, since they have provided information in full and on time and proved that export products are produced in their company.

Particularly for businesses that do not provide information to the investigating authorities, they will be subjected to the application of tax rate of 240 USD/m3 (equivalent to the anti-dumping duty that has been applied by Turkey to the import goods of China’s enterprises).

The time to apply the tax rate is as soon as the Ministry of Economy published the contents of the investigation in the Official Gazette of Turkey. However, Turkey has also announced that they will review the comments on the report of the investigation of the relating parties.

The case of evading anti-dumping duty investigation for plywood products that are imported from a number of countries, including Vietnam was initiated from the date of May 27th 2015 for plywood products with HS codes: 4412.10; 4412.31; 4412.32 and 4412.39 in the period from 2010 to the present.

Earlier in 2006, Turkey has decided to impose anti-dumping duty for the aforementioned products imported from China, with the tax rate of 240 USD/m3.

Also under the Trade Office – Vietnam Embassy in Turkey, Directorate General for Imports – Ministry of Economy of Turkey has just issued the conclusion for the anti-dumping investigation on polyester textured yarn imported from several countries, including Vietnam.

Based on the conclusion, the Turkey’s investigation agency determined the dumping margin of Vietnam enterprises is 34.81% – 72.56%; Thailand is 8.48% – 37.69%. Directorate General for Imports – Ministry of Economy of Turkey advised related parties to send complaints or feedback on the investigation report. After that, Directorate General for Imports – Ministry of Economy of Turkey will hold separate hearings for each enterprise.

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How many trademarks can a single company have?

Trademark is a sign for consumers to identify the goods or services of each company from those of others. You can have as many trademarks as you wish!

Trademark in Vietnam 

However, there are some point to have in mind:

The registration of highly similar trademarks is a waste of time and money. The trademark is protected not only against the use of Identical marks, but also against the use of similar Marks. So if you use the trademark in three different colours, you should register only black-and-white trademark, as the protection will be given to all the colourful uses of the mark.

Review your trademark portfolio from time to time. Some trademark might not be relevant anymore. So you should not renew the marks and pay all the renewal or registration fees for such marks that no longer exists in the market.

The more different trademarks you own, the stronger competitive power you have. You can limit the possibility of your competitors to use in all the brand names and similar names that you have the registration. So the broader TM portfolio is, the less choices are left to the competitors. Also, if you lose one trademark later on, it will not be a tragic situations, because you will have other protected marks. However, if you have a single mark registered and someone cancels it, you will be in very unfavourable situation.

The trademark is registered only in a country where you filed the registration. Which means, if you have a US trademark, you still do not have any protection in the EU market. If you want to have protection in EU, you must file a new European application.

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When should a startup file for a patent?

Each jurisdiction is different in terms of its “first to disclose”, “first to file” and “first to invent” rules. First to file and first to invent - Wikipedia

You should file a provisional patent application as soon as possible (to establish your patent’s priority date) if you are filing your patent application in the US because USPTO follows a “first inventor to file” rule. First Inventor to File (FITF) Resources

Vietnam Patent 

I’ll recommend the following course of action to help you file a provisional patent application as quickly as possible:

a) Conduct a through prior art search as soon as possible to make sure that your idea is novel, non-obvious to others in your field, and has utility in real life.

b) Draft your first independent claim. Draft any additional independent claims if you’ve more than one. Don’t waste your time on drafting any dependent claims at this stage.

c) Focus on writing as many possible embodiments you can think of for implementing not only your independent claim(s) that you have drafted but also for all possible dependent claims (that you’ve not drafted). Refer to 2164-The Enablement Requirement to guide you in writing your embodiments.

d) While drafting your embodiments, draw as many diagrams as possible to show your invention and its implementation. Follow Patent Drawing Rules: Everything You Need to Know. No need to use any fancy tools for doing your diagrams. Make your drawings by hand for now to save some time.

e) Provide a brief definition of any special terms that you are using in your patent claims and embodiments.

f) Draft a paragraph to serve as abstract. No need to write any paragraphs covering background of the invention or summary of the invention. Providing a list of prior art is also not needed at this stage.

You are now ready to file a provisional patent application. File it without any delay to establish a priority date. You’ll have a full year to file your non-provisional patent after this date. During this one year time, also called a “pendency period”, patent process is pending till you file your non-provisional patent application.

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How is patent prosecution distinct from patent litigation?

Patent prosecution refers to the process of interacting with the patent office to have claims allowed and the patent issued.

Litigation refers to “court-related proceedings, ” typically AFTER a patent is issued (say, suing someone for infringement, etc.)

Vietnam Patent

Patent prosecution happens when you (as an inventor), your patent attorney, and the examiner at a patent office are engaged in the process of getting a patent granted on your intellectual property.

Main steps that are part of the patent prosecution process include:

a) Preparation and filing of a patent application with or without the help of a patent attorney.

b) A patent office examiner responding to your filings and taking an office action which may include legal arguments and reasons for rejecting or accepting your claims and arguments.

c) You or your patent attorney responding to an office action using sound legal arguments and providing supporting facts in your favor.

d) Patent office granting you a patent if everything goes well, and, thereby, granting you rights as an inventor and giving your a monopoly on the use of your patent’s methods for a fixed number of years.

Patent litigation is a totally different beast. It happens only when you discover that somebody (generally a corporation) is infringing upon your patent’s rights and you take some concrete actions in order to stop infringement.

Inventors are granted a monopoly power by the patent office on their intellectual property in a known jurisdiction (e.g., US). Inventors are free to negotiate and charge any licensing fees from others who want to use their intellectual property.

If somebody is using your invention without having any licensing rights from you to use your invention, they are infringing upon your patent. Patent litigation is a highly technical process because you (as an inventor) have to create detailed claim charts (Claim Chart: Everything You Need to Know) to prove infringement. It is a lengthy legal process that is also highly expensive.

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ANT Lawyers Participating in Vietnam-Austria Business Forum in Vienna on October 15, 2018

On the afternoon of October 14th, 2018, the Vietnam Prime Minister Nguyen Xuan Phuc and his wife led Vietnamese delegation to Vienna for official visit to Republic of Austria under the invitation of Austrian Chancellor Sebastian Kurz. On October 15th, 2018, the Prime Minister Nguyen Xuan Phuc had an official meeting with the Chancellor Sebastian Kurz and participated in the Vietnam – Austria Business Forum.

Set up company in Vietnam

In Vienna, the representative of ANT Lawyers law firm, Mr. Tuan Nguyen participated the Vietnam – Austria Business Forum organized by the Vietnam Chamber of Commerce and Industry (VCCI) and the Austrian Federal Economic Chamber (WKO). This forum has been joined by the representatives from 60 Vietnamese businesses and over 100 Austrian companies. The lawyer of ANT Lawyers law firm met the representative of Austrian companies including Asteas Technologies GmbH & Co KG, AGES – Austrian Agency for Health and Food Safety, FRONIUS International GmbH, Europlast Kunststoffbehälterindustrie GmbH, Bitmedia e-solutions GmbH, D2 Consult International GmbH,… to discuss the Vietnam market entrance possibilities.

The meeting has occurred in the context that Vietnam Prime Minister and the Austrian Chancellor emphasized the importance of promoting the bilateral cooperate on economic, investment and trade; the opportunities post signing the Free Trade Agreement between Vietnam – EU (EVFTA) and Investment Protection Agreement (IPA) looking into the future.

The Vietnam economy has been achieving high growth for the last 30 years. Vietnam is a large market with a population of almost 100 million, 65% of the country’s workforce is young, and the increasing number of internet and smart phone users in Vietnam has also opened up a great opportunities for e-commerce development. Vietnamese Government has committed to vigorously reform and created optimal conditions for Austrian investors. The Prime Minister suggested Austrian companies invest in high-tech agriculture, processing and manufacturing industry, especially agricultural product processing, high-tech zones,…

Along with the advantages facilitated by Vietnamese Government, Austrian companies will seek for investment opportunities in Vietnam to set up company, joint invest, or cooperate to transfer technology. It is expected that both countries will further cooperate and receive benefits from competitive advantage of each other, contribute to economic development and promote the relationship between Vietnam and Austria.

Mr Tuan Nguyen, the representative of ANT Lawyers law firm is honored to participate in the Vietnam – Austria Business Forum, and together with its law firm partner in Austria, Leitner HirthRechtsanwälte GmbH, under the leadership of Markus Leitner, to promote the development of trade relation between Vietnam – Austria in particular and Vietnam – EU in general. With legal and business expertise and experience, we will continue to support the Austrian and other European companies to invest in Vietnam and that Vietnamese company to enter Austrian and European market.

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Anti-dumping Case for Steel Imported from China

The Vietnam Competition Authority (Ministry of Industry and Trade) has just received the dossier requesting the application of anti-dumping measures on H-shaped steel product imported from China to Vietnam.

Anti-dumping lawyer in Vietnam

According to Vietnam Competition Authority, they have received full and valid dossier under the provisions of the anti-dumping law for goods imported to Vietnam.

Within 45 days from the date of receipt of full and valid documents, the investigation agency will assess the dossier and submit to the Minister of Industry and Trade for consideration and decide to or not to investigate.

In order to serve the assessment, as well as ensuring the legitimate rights and interests of enterprises, the investigation agency suggested that domestic enterprises which are manufacturing/trading similar goods to provide the following information: Information on enterprises; design capacity and productivity of the H-shaped steel product in 2013, 2014, 2015 and the first 6 months of 2016; the company’s comments on the case (agree, oppose, no opinion); any documents/evidence that companies consider relevant to the case.

Since the law on trade remedies is issued, Vietnam has 4 times issued the investigation decision on anti-dumping against imported steel products to Vietnam. Accordingly, there is one case of anti-dumping duty application to cold-rolled stainless steel product and 3 self-defense cases for the steel billet and long steel products (the Ministry of Industry and Trade has signed decision to impose safeguard duty for plated steel and painted galvanized steel.

The application of trade defense measures will certainly cause conflict of interest between the 2 groups of enterprises. However, according to the Vietnam Steel Association, the application is necessary to protect domestic production.

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Can I trademark a name that is similar (but not identical) to the name of another company?

If you will use it on completely different products, then yes, it might be possible. For instance, they produce milk and you offer tires. The main idea is to avoid confusion between your brands; since if a regular customer thinks that your products and the company’s products originate from the same source, you will be in trouble.

Trademark in Vietnam

If the products are similar (even if they are not identical), you should think about choosing another trademark. In the US the company has some common law rights, provided that they used the trademark first. If it’s just a company with the same name and they do not use the name in commerce, it does not qualify for the protection. If the name is in use, the owners can try to cancel your registered trademark if you register it.

The cancellation will be expensive, very expensive and if your trademark becomes popular and the regular customer associates the trademark with your products, they may fail to succeed.

Facts to check: are they using the unregistered trademark? On what products are they using it? Are they similar to your products? Is the trademark registrable?

                                            

You can try to apply for your trademark if it’s registrable and not in use. No one can guarantee that it registers, however, it might be worth trying.

If you want to be sure, contact an attorney.

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Decision No. 3877 On Investigation into Imposition of Anti-Dumping Measures For Products of Chinese and Korean origins (case No. AD04)

The Ministry of Trade and Industry has issued Decision no. 3877 to proceed the investigation on imposition of anti-dumping measure for some products from China and Korea under the case AD04. The first step for related party to participate into the investigation process is to register with Vietnam Competition Authority directly or through the assistance of a law firm with experience in anti-dumping procedures in Vietnam.

Pursuant to Article 70 of the Law on Foreign Trade Management on procedure for investigating the trade remedies case and Article 79 of Law on Foreign Trade Management on the basis of proceeding the anti-dumping investigation, the Vietnam Minister of Industry and Trade decided to conduct the anti-dumping measures imposition investigation according to the request of Investigation Authority relating to some flat-rolled alloy or non-alloy steel products, varnish painted or scanned or coated with plastics or other covers originated from China and Korea (case No. AD04).

International Trade Lawyers in Vietnam

The details of investigation are conducted pursuant to Article 80 of the Law on Foreign Trade Management on contents of an anti-dumping measures imposition investigation and Article 32 of the Decree No. 10/2018/ND-CP on deciding to conduct anti-dumping measures imposition investigation.

Imported goods subject to investigation:

The imported goods subject to investigation are some flat-rolled alloy or non-alloy steel products, varnish painted or scanned or coated with plastics or other covers which are classified by HS Codes 7210.70.11, 7210.70.19, 7210.70.91, 7210.70.99, 7212.40.11, 7212.40.12, 7210.40.19, 7212.40.91, 7212.40.92, 7212.40.99 (the case No. AD04)

Origins of imported goods: China and South Korea

Domestic industry:

No.	Trade name	Opinion	Market share/ total market share (%)
1	Nam Kim Steel Joint Stock Company	The requesting party	29,35%
2	Southern Steel Sheet Co., LTD
3	TVP Steel Joint Stock Company
4	Dai Thien Loc Corporation
5	Ton Dong A Corporation	Agreed the investigation and application of the anti-dumping measures	61,31%
6	Maruichi Sun Steel Joint Stock Company
7	Hoa Sen Group
8	VN Steel Thang Long Coated Sheets Joint Stock Company
9	Blue Scope Steel	No opinion	9,34%

Pursuant to the results of examination of request dossier and the sources of available information in pre-initiation stage, the Investigation Authority found out the evidence of: i) the dumping conducts relating to the goods originated from China and Korea; ii) the significant damages to the domestic industry; iii) the causal relationship between the dumping conducts and the significant damages to the domestic industry.

Consequently, the Investigation Authority recommended the Minister of Industry and Trade to proceed the investigation. The conclusion of preliminary conclusion and/or final conclusion investigation is basis of the Investigation Authority’s recommendation to the Minister of Industry and Trade on imposition or non-imposition of provisional and/or official anti-dumping measures.

Investigation period: The investigation period for determining of dumping: from 01 June, 2017 to 31 May, 2018.  The investigation period for local industry’s damages determination includes: The first year: from 01 June, 2014 to 31 May, 2015. The second year: from 01 June, 2015 to 31 May, 2016. The third year: from 01 June, 2016 to 31 May, 2017. The fourth year: from 01 June, 2017 to 31 May, 2018.

Proposal for tax duty of Requester:

The Requester proposed for investigating and imposing the provisional anti-dumping duty with 25.5% relating to the investigated import products from China and 19.25% relating to the investigated import products from Korea before the time the Ministry of Industry and Trade issues the official decision.

The individuals and organizations as stipulated in Article 74 of Law on Foreign Trade Management may register as a related party to Investigation Authority  to access the public information during the investigation, and to send the opinions, comments, information and evidences related to the investigation as mentioned herein.

Organizations and individuals shall prepare applications using the application form for registration as interested parties stated in the Appendix 01 attached to the Circular 06 and send to Investigation Authority no later than 30 (thirty) days from the date issuing the investigating decision.

Upon the receipt of applications for registration as related parties, the investigation authority shall consider whether a party is accepted as a related party or not within a period of 07 working days. If an application for registration as related party is refused, the Investigation Authority is required to explain such refusal in writing to the applicant.

The related parties under regulations of Article 79 the Law on Foreign Trade Management shall implement their rights and obligations under Article 9 of the Decree No. 10/2018/ND-CP.

In order to ensure its lawful rights and benefits, the Investigation Authority recommends the individuals and organizations manufacturing, importing, using the investigated goods to register as a related party to perform information accessing right, to provide information and express opinions during the investigation procedure.

Questionnaire: Within 15 days since the issuance of the decision on investigation, the Investigation Authority shall send the questionnaire to seek answer to various subjects.

On-site Investigation: Pursuant to Article 75.3 of Law on Foreign Trade Management, the Investigation Authority shall be entitled to proceed the on-site investigation (if necessary), including overseas investigation to certify the information, dossiers provided by related party or to collect more information, dossiers for settlement of trade remedies case.

Confidential information: The Investigation Authority shall keep the investigation information confidential as stipulated in Article 75.2 of Law on Foreign Trade Management and Article 11 of Decree No. 10/2018/ND-CP.

Cooperation during the investigation: In case any related party refuses to participate in the case or fails to provide necessary evidences or significantly disturbs the completion of the investigation, the preliminary conclusion and final conclusion relating to such related party shall be based on available information.

In case a related party provides false or misleading evidences, such evidences shall not be reviewed and the preliminary conclusion and final conclusion regarding such related party shall be based on available information.

Non-cooperating related parties shall not be exempted from trade remedies measures as prescribed in Article 7 of Decree No. 10/2018/ND-CP.

The Investigation Authority recommends the related parties to comprehensively cooperate during the investigation to protect its legitimate rights and benefits.

Duration of investigation: Anti-dumping measures imposition investigation shall be completed within 12 months from the date on which the decision on anti-dumping measures imposition investigation is issued. In some special cases, the Minister of Industry and Trade may extent the duration for anti-dumping measures imposition investigation but the total duration shall not exceed 18 months.

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What does trademark protect against?

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.

 Trademark registration services in Vietnam 

Trademark is a monopoly, allowing only the owner to make use of the trademark in connection with a business or product. (Similarly, Service Marks do the same thing for services.)

These brand names cannot be used by competitors on their products or businesses. If they try to do so, they are infringing on your trademark and the owner of the brand name must sue them (or risk losing their trademark protections.)

Not, registrations are very specific. If you are not using your trademark in another class of business, someone else can name their non-competing product with that name. So, if you are Apple (makers of the iPhone), Apple Plumbers is not competing with you. Perfectly okay for them to use that mark.

And “nominative use”, where someone is actually referring to your product, is also okay. How could I refer to the company Disney if I could not use their name? I just can’t name my media company with their name.

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