In recent years, when the economic development speed is getting stronger and more competitive, the issue of trademark has been paid special attention by enterprises. Some enterprises have planned for themselves trademarks associated with certain products and services and have performed the protection registration right from the time those products and services are only present on documents, not yet sold or supplied on the market. This shows that enterprises have paid attention to the use of measures allowed by the law to ensure the right of enterprises to intangible assets, specifically intellectual property rights. Within the scope of this article, we will discuss trademark protection of foreign enterprise when doing business in Vietnam.

1. Conditions to register for trademark protection of enterprise in Vietnam

Basically, the conditions and procedure to register for trademark protection of foreign enterprise when doing business in Vietnam as well as enterprise in Vietnam is not different. If the trademark has been recognized for international registration under an international treaty to which Vietnam is a contracting party, the industrial property rights to this trademark shalll not go through the procedure of granting protection certificate in Vietnam. In the remaining cases, to be able to register for protection, that trademark shall ensure basic elements of:

• A visible sign in the form of letters, words, drawings, pictures, holograms, or a combination of these elements, represented by one or more colors or audible sign represented in the form of graphic;
• Ability to distinguish the product and service of trademark owner from those of other subjects.

2. Procedure to register for trademark protection

Step 1: Applying for registration of trademark protection directly or through legal representative in Vietnam. The dossier of trademark registration will include the following documents:

• Registration form according to prescribed form;
• Document, sample, information showing the registered trademark for protection;
• Authorization letter, if applying through the representative;
• Documents proving priority right, if there is a request for priority right;
• Documents of applying fee and charge.

Step 2: Waiting for the appraisal of form within 1 month, then depending on each case, the National Office of Intellectual Property (NOIP) shall:

• Informing the intention of refusing to accept valid application, clearly stating the reason and setting time limit for the applicant to correct deficiencies or making objections to the intention of refusing;
• Informing the refusal of accepting valid application if the applicant fails to correct deficiencies, unsatisfactorily correct deficiencies or does not have a reasonable objection to the intention of refusing;
• Issuing notice of acceptance of valid application or performing the procedure of granting protection certificate.

Step 3: Waiting for the appraisal of content of trademark registration application within 9-12 months from the date of publication of the application. After finishing the procedure of content appraisal, depending on each case of the application, the NOIP shall issue:

• Informing the intention of refusing to grant trademark registration certificate, the content of the notice shall record the reason and a period of 2 months for the applicant to explain as well as perform actions that the applicant considers necessary.
• Informing the intention of granting protection certificate and notice of fee and charge that the applicant shall pay.

It is noticed that the actual time can be extended longer because currently the number of dossiers received at the NOIP of Vietnam is quite numerous, not accounting trademark registration applications having objection, complaint from third party.

Step 4: The NOIP decides to grant protection certificate and records it in the National Register of Industrial Property, after the application owner has completed the payment of fee. 

The above are basic steps that the application owner will go through during the process of trademark protection registration. However, in the case that the process of trademark protection registration encounters the objection of the third party, the application owner has the responsibility of explaining and providing evidence to prove its compilation. The application owner shall notice that, the NOIP of Vietnam shall send notice to the address of the application owner (for the application owner is enterprise already presenting in Vietnam) or the representative of the application owner depending on each specific case. Therefore, the application owner shall closely monitor to ensure that the response of the application owner is within the time limit of the NOIP of Vietnam, past this time limit, the application owner loses the right to respond.

3. Some issues shall be noticed related to trademark protection

– What to do to avoid losing time when registering trademark protection in Vietnam

The answer is that you shall conduct a trademark search, accordingly you will base on the trademark together with industry groups, services to determine the possibility of success for trademark registration. In the case of realizing that the possibility of trademark registration is low, the application owner also has plan to adjust the trademark accordingly.

– How is the validity and validity extension of protection certificate calculated

Trademark protection certificate takes effect from the date of being granted and has a term of 10 years from the date of applying. The application owner is entitled to multiple extensions, 10 years each time. In order to be extended the validity of protection certificate, within 06 months up to the date that protection certificate expires, the protection certificate owner shall apply request form for extension. The request form for extension can be applied late but no later than 6 months from the date of protection certificate expires and the protection certificate owner shall pay an additional fee for the validity extension.  

– Is it allowed to transfer industrial property right

The enterprise is allowed to perform the transfer of industrial property right to other individual and organization, but the transfer of industrial property right shall be performed in the form of written contract. It is noticed that, industrial property right transfer contract is only valid when parties perform the registration at the NOIP of Vietnam.

– The case of amending, complementing protection certificate due to change in the name of the enterprise

If the enterprise is the protection certificate owner, when changing the name of the enterprise, the enterprise has the right to request the NOIP to amend the information on protection certificate. Dossier of request to amend protection certificate due to the change in the name of the enterprise:

• Declaration requesting to amend the information on Protection Certificate (according to the Form 01-SDVB specified in Appendix C of Circular 16/2016/TT-BKHCN), clearly stating the request for recording the change in the name of the owner of Protection Certificate;
• Original Protection Certificate;
• Document confirming the change in the name (original or notarized copy of the determination of the change in the name; business registration license recording the change in the name; other legal documents proving the change in the name);
• Document stating in detail the amending content;
• Authorization letter (if the Application Owner adopts Representative organization);
• Documents of applying fee for amending Protection Certificate as prescribed;
• Decision on amending protection certificate shall be published by the state management agency on industrial property right on Industrial Property Gazette within the period of 2 months, from the date of issuance the decision.

The protection registration for Intellectual Property rights is the basis for recording legal right of intellectual property of the Enterprise. In the competitive context, the protection registration right from the beginning could help the Enterprise ensure the sustainability in using the trademark, image, invisible asset. The Enterprise also avoids the risk of being earned the right to register protection by competitors and this means that the Enterprise loses the right to use and owe intellectual property or gets entangled in unnecessary dispute.

Time of writing: 06/04/2023

The article contains general information which is of reference value, in case you want to receive legal opinions on issues you need clarification on, please get in touch with our Lawyer at info@cdlaf.vn

You can refer for more information:

• Reports that Investors shall perform in 2023
• Establishment of Enterprise in Vietnam, What Foreign Investors Need to Consider (Part 1)
• Establishment of Enterprise in Vietnam, What Foreign Investors Need to Consider (Part 2)
• Procedure for Foreign Investor to contribute capital, purchase shares in the enterprise in Vietnam.
• The enterprise with opening and using direct investment capital account
• Avoiding the risks when leasing the office in Vietnam – some recommendations
• Foreign Investors provide Employment Services in Vietnam
• Franchise in Vietnam (Part 1)
• Franchise in Vietnam (Part 2)
• Tax preference when trading business in service and software product in Vietnam
• 5 steps that Investors need to set up a business in Vietnam