A trademark is a mark to distinguish goods/ services from other goods/ services of different trademark owners. In business, trademarks are important, on the one hand, it helps consumers to distinguish goods and services of a particular organization or individual from those of similar; on the other hand, it is the ground for distinguishing authentic goods and counterfeit goods, ensuring a healthy competitive environment. So, how to register for trademark’s protection for businessman, enterprise, how is the procedure? In this Article, KAV Lawyers will supply for readers some information to implement this procedure.
First of all, in order to be issued a protection for trademark, such mark must meet the conditions specified in Article 72 of the Law on Intellectual Property 2005, supplied and amended in 2009 and 2019 (IP law):
- It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more color;
- It is capable of distinguishing goods or services of the mark owner from those of other subjects.
Besides, the marks also do not belong to these Article in 73 of the law, including:
- Signs identical with or confusingly similar to national flags or national emblems;
- Signs 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.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries;
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
In order to successfully register for protection trademark, it is necessary to carefully check the conditions permitted and not allowed on a mark, if the minimum conditions above are not satisfied, the Department will refuse to grant a title of trademark protection to the applicant.
Step 1. Check trademark validity
The applicant needs to check the validity of the trademark according to the criteria specified in the IP law. Specifically, about the marks and distinctiveness of marks
About marks: It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors.
About distinctiveness: A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of Article 74 of the IP law.
Applications must ensure unity, each application is only required to register one trademark for one or more different goods and services.
To check the above conditions, it is necessary to carry out the lookup procedure as follows:
Step 1.1: Group goods and services by classification (latest version Nice 11-2020), list fields by related groups.
Step 1.2: Determine if the trademark shows a mark of not being protected in the name of the trademark specified in Article 73 of the IP law.
Step 1.3: Identify the main mark and identification factors in the mark (including shapes and text).
Step 1.4: Conduct a lookup procedure
+ look up text (e.g. brand name *thong nhat*)
+ Look up shapes (according to Vienna classification)
+ look up product/service’s name
Data platforms to look up:
http://ipplatform.vipri.gov.vn/database/nhan-hieu – Ministry of Science and Technology
http://iplib.noip.gov.vn/WebUI/WLogin.php – National Office of Intellectual Property
Step 2. Prepare your application
After examining trademarks, assessing the possibility of granting protection of trademark, must prepare registration dossiers. The application consists of:
– Declaration requesting the grant of trademark registration certificate;
– Trademark sample: 06 samples
– Documents for payment of fees and charges
– Power of Attorney (if submitting applications submitted through industrial property representation service organizations)
– Documents confirming registration rights
– Documents confirming the enjoyment of registration rights from others if the applicant enjoys the registration right of another person;
– Regulations on use of certificates / collective trademarks (for applications for registration of certification mark / collective mark);
– Other supporting documents (if any).
Step 3. Submitting dossiers, paying fees
Applicants can apply paper directly to the receiving points of application of the National Office of Intellectual Property;
or submit your application by post;
or apply by online.
– Head office of National Office of Intellectual Property, address: 386 Nguyen Trai street, Thanh Xuan district, Hanoi city.
– Representative office of The National Office of Intellectual Property in Ho Chi Minh City, address: 7th Floor, Ha Phan Building, 17/19 Ton That Tung, Pham Ngu Lao Ward, District 1, Ho Chi Minh City.
– Representative office of The National Office of Intellectual Property in Da Nang City, address: 3rd Floor, 135 Minh Mang, Ngu Hanh Son District, Da Nang City
Fees and charges
– Application fee: 150,000 VND
– Inquiry fee for content appraisal: VND 180,000 for each subject in the application
– Content appraisal fee: VND 550,000 for each subject in the application
– Application publication fee: VND 120,000
– Appraisal fee + lookup from the 7th product 150,000 VND / product
Step 4. Get results
From the date of receiving by the Intellectual Property Office of Viet Nam, the trademark registration application is considered in the following order:
– Formal assessment: 01 month
– Publication of an application: within 02 months from the date the trademark registration application has a valid decision on acceptance of the application;
– Content assessment: not exceeding 09 months from the date of publication of the application.
Thus, after at least 01 year from the date of submission of valid dossiers, the applicant will receive the Trademark Registration Certificate.
Above is an article about trademark registration that KAV Lawyers very pleasure to send to you. If you have any questions or would like any further legal advices, please contact KAV Lawyers by the contact addresses below:
Phone: (+84) 28 6270 7075 or (+84) 949 761 861
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