Trademark is one of the signs for clients/customers and consumers to identify products/services and names of business organizations and individuals. Organizations and individuals building trademarks, if they do not register for trademark protection, may lead to legal risks such as other individuals and organizations abusing the mark to gain illicit profits. Therefore, the trademark registration helps individuals and businesses prevent legal risks, and create a legal basis to protect intellectual property rights. In particular, trademark registration in Vietnam is very important before individuals and businesses wish to register for trademark protection in other country(s).

So what is a trademark, what are the conditions and procedures for trademark protection in Vietnam under the current Intellectual Property Law and why is it necessary to register for trademark protection in Vietnam (country of origin) before registering for trademark protection in other country(s)?

1. What is a trademark?

According to Article 4 of Intellectual Property Law 2005, amended and supplemented in 2009, 2019 (“IP Law”), a trademark is interpreted as a sign used to distinguish goods and services of other organizations and individuals. In addition, according to Article 6.3 of the IP Law, industrial property rights to trademarks are established on the basis of decisions on grant of protection certificates issued by the authorized authority or recognized international registration under international treaties to which the Socialist Republic of Vietnam is a signatory.

Thus, according to the above regulations, a trademark of an organization or individual... can only be protected when such organization or individual ... registers for trademark protection at the Vietnam Intellectual Property Office (“IPO”).

2. Conditions for trademark protection

According to Article 72 of the Intellectual Property Law, a trademark is protected if it meets the following conditions:

- A visible sign in the form of letters, words, drawings, devices, including holograms or a combination of such elements, represented by one or more colors.

- Having the ability to distinguish the goods and services of the mark owner from those of other mark owners.

3. Trademark registration procedures

a) Trademark search

A trademark search before proceeding with trademark registration at the IPO is not a mandatory procedure. However, individuals and organizations should conduct a trademark search before registering at the IPO to check if there are any previously registered trademarks that are identical or similar to their own. At the same time, assess whether the trademark is likely to be granted a protection certificate or not.

b) Submit the trademark application at the IPO

Trademark registration documents include:

- 02 Request forms to request the grant of a trademark certificate (according to form No. 04-NH Circular 01/2007/TTBKHCN)

- 05 trademark specimens (the overall mark must be presented in a mark template with dimensions of 80mm x 80mm. If color protection is required, all trademark specimens on the request form and attached specimens must be presented in correct colors);

- Receipt of payment of fees and charges.

- 01 Certified copy of business registration license or identity card/passport/citizen identification card to get information for preparing documents (the purpose is to get information to prepare power of attorney and trademark registration documents);

- 01 Power of Attorney (in case an individual or organization authorizes an industrial property representative to file the trademark application)

- Other documents (if any):

• Documents confirming the permission to use special signs (if the trademark contains symbols, flags, badges of domestic and international agencies and organizations...);

• Documents confirming the right to register;

• Documents confirming the right to register from another person;

• Documents proving the priority right (if the application claims for priority).

Form of trademark application submission:

- Direct submission:

The applicant may file a trademark application in person or by postal service to one of the IPO's addresses.

- Apply online:

The applicant needs to have a digital certificate and digital signature, register an account on the Online Application Receiving System and have an account approved by the IPO in order to proceed with registering IP rights.

c) Follow up trademark application

From the date of receipt by the IPO, the trademark application shall be handled in the following order:

• Formality examination: 01 month

• Publication: within 2 months from the date the trademark application has a formality decision on acceptance

• Substantive examination: no more than 09 months from the date of publication of the application.

In case the trademark application meets the requirements for protection, the IPO will issue a notice of granting a registration certificate to the trademark owner.

Note: The term of trademark protection is within 10 years from the filing date (priority date). Individuals and organizations can renew the protection certificate and may renew it several times in a row, for 10 years each time, for the whole or a part of the list of goods and services specified at Point a, Clause 19, Article 1. Circular 16/2016/TT-BKHCN.

4. Why is it necessary to register for trademark protection in Vietnam (country of origin) before applying for trademark protection in other country(s)?

Before proceeding with trademark registration in other country(s), Vietnamese individuals and organizations should register for trademark protection in Vietnam in order to first build a legal background to prevent infringing upon intellectual property rights, thereby creating a legal basis for individuals and organizations to increase the value of goods/services and enhance competitiveness in the domestic market.

Note that, under IP law, the principle of first filing (fist-to-file) is an important principle of protection for intellectual property rights in Vietnam. Accordingly, the IP law only protects the earliest registration application for the same industrial property object. Thus, if individuals and organizations do not file trademark applications at the soonest, the mark is more likely to be registered first by other individuals and organizations. This seriously affects the use of the mark in the country of origin and also influences the decision on whether to continue to choose that mark for registration in other country(s).

In addition, if Vietnamese individuals and organizations wish to register for trademark protection in other country(s) through the Madrid system, the condition of registration of this international application is to have the Trademark Certificates or Trademark application in Vietnam.