Trademark in VIETNAM
Bud & Prairie are profusely expert and experienced to advise and assist you with trademark related matters.
As you may be aware, registering and protecting a trademark in Vietnam is crucial for businesses to secure their brand identity and prevent unauthorized use. Here’s a detailed guide on how to register and protect a trademark in Vietnam:
- Understanding Trademarks
- Definition: A trademark in Vietnam is a sign used to distinguish the goods or services of one enterprise from those of others. This sign can be a word, name, symbol, logo, slogan, or any combination thereof.
- Types of Trademarks: In Vietnam, you can register various types of trademarks, including:
- Word Marks: Words, letters, or numbers.
- Figurative Marks: Logos or designs.
- Combined Marks: A combination of words and figurative elements.
- Three-Dimensional Marks: Shapes or packaging of products.
- Sound Marks: Though less common, sound marks can also be registered under specific conditions.
- Legal Framework
- Law on Intellectual Property: The main law governing trademark registration and protection in Vietnam is the Law on Intellectual Property (IP Law), which was enacted in 2005 and has been amended several times, most recently in 2022.
- Regulations and Guidelines: The Intellectual Property Office of Vietnam (IP Vietnam) is responsible for the examination and registration of trademarks.
- Requirements for Trademark Protection
- Distinctiveness: The trademark must be distinctive enough to distinguish the goods or services of the applicant from those of others.
- Non-Deceptive: The trademark must not be misleading, especially regarding the nature, quality, or geographical origin of the goods or services.
- Not Contrary to Public Order: The trademark must not violate social norms, public order, or morality.
- Availability: The trademark must not be identical or confusingly similar to an already registered trademark in Vietnam for the same or related goods/services.
- Trademark Registration Process
- 1. Trademark Search:
- Preliminary Search: Conduct a preliminary search to check if your trademark is already registered or pending registration. This can be done through IP Vietnam’s online database.
- Comprehensive Search: A more thorough search might be necessary, especially for businesses with significant investment in the brand. Local IP firms often provide this service.
- 2. Application Preparation:
- Required Documents: The application must include:
- Trademark Sample: A clear representation of the trademark.
- List of Goods/Services: A detailed list of goods or services for which the trademark will be used, classified according to the Nice Classification.
- Applicant’s Information: Details of the applicant, including name, address, and nationality.
- Power of Attorney: If an agent is filing on behalf of the applicant.
- Language: The application must be filed in Vietnamese. If any documents are in a foreign language, they must be translated into Vietnamese.
- Required Documents: The application must include:
- 3. Filing the Application:
- Submission: The application is submitted to IP Vietnam either directly, by post, or through an authorized representative.
- Filing Fees: The applicant must pay the official filing fees. The amount varies based on the number of classes and the complexity of the application.
- 4. Examination Process:
- Formal Examination: IP Vietnam first conducts a formal examination to ensure the application complies with all procedural requirements.
- Substantive Examination: This is a thorough examination to assess whether the trademark meets the criteria for registration (distinctiveness, non-deceptiveness, etc.). This process can take 9-12 months.
- 5. Publication:
- Gazette Publication: If the trademark passes the substantive examination, it is published in the Official Gazette for opposition. Third parties have 60 days from the publication date to file an opposition.
- Opposition Process: If an opposition is filed, IP Vietnam will consider the claims before making a final decision on the registration.
- 6. Registration and Issuance of Certificate:
- Trademark Registration Certificate: If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark is registered, and the applicant receives a trademark registration certificate.
- Validity: The trademark is valid for 10 years from the filing date and can be renewed indefinitely for subsequent 10-year periods.
- Renewal and Maintenance
- Renewal Process: The trademark owner must file a renewal application within 6 months before the expiry date. A grace period of 6 months is allowed, but late renewal fees will apply.
- Use Requirement: While there is no requirement to prove use at the time of registration, a trademark can be challenged if it is not used continuously for 5 years from the registration date.
- Enforcement of Trademark Rights
- Infringement Actions: Trademark owners can take legal action against infringers through civil, administrative, or criminal procedures. Remedies may include injunctions, damages, and the destruction of infringing goods.
- Customs Measures: Trademark owners can request the customs authorities to suspend clearance of suspected infringing goods at the borders.
- International Trademark Protection
- Madrid System: Vietnam is a member of the Madrid Agreement and the Madrid Protocol. This allows trademark owners to seek protection in multiple countries through a single international application, designating Vietnam as one of the countries where protection is sought.
- Foreign Applications: Foreign businesses can apply for trademark registration in Vietnam directly or through the Madrid System.
- Challenges and Practical Tips
- Language Barriers: Ensure accurate translation of your trademark and related documents into Vietnamese to avoid potential issues during the examination process.
- Cultural Sensitivity: Consider cultural nuances in Vietnam when choosing and designing your trademark, as some symbols or words might have unintended meanings.
- Engage Local Expertise: Working with a local IP attorney or firm can help navigate the complexities of trademark registration and enforcement in Vietnam.
Registering a trademark in Vietnam is essential for businesses looking to protect their brand in a rapidly growing market. By following the outlined process and taking necessary precautions, businesses can secure their trademarks and enjoy exclusive rights to their brand identity in Vietnam.
For further information, please do not hesitate to contact us at [email protected].
1. Patentability Search
Patentability search is also known as a novelty search, which helps identify whether or not an idea is novel and involves an inventive step (nonobvious). The most complete searches include all types of prior art to give an inventor or organization a comprehensive look at the technology landscape. A patentability search should be completed during the ideation phase, as well as prior to disclosure.
A patentability search is conducted by examining published patents that relate to your own invention to figure out whether your idea has already been patented. You can also see similar inventions, allowing you to improve and refine your own invention without infringing on someone else’s patent. And you can do all this before you have spent many hours and thousands of dollars on an idea that you can’t patent.
2. Freedom to Operate Search
A freedom to operate search (often abbreviated as FTO) determines how similar your product is to existing patents, and therefore how likely you are to infringe on a patent by making and marketing your invention. You may also see this type of search called a patent infringement search or right-to-use search.
Completing an FTO search early in the innovation cycle helps R&D teams design around existing patents. Later on, the results of the search can identify whether you may need to license other patents to bring your product to market.
3. State of the Art Search
Completing a state of the art search (also known as a product clearance or patent landscape search) allows you to examine the literature related to a specific industry, rather than around a certain technology, which may be applicable across industries. Using a state of the art search helps businesses find competitors and existing products within their field. These insights allow researchers, engineers, and leaders to make strategic decisions at any point within the innovation cycle.
4. Invalidity Search
To assess the strength of a specific patent, companies will use an invalidity search. This is also called a validity search. The results of this search determine whether or not the patent holder can claim infringement. They can also be used to decide licensing fees or value. If an invalidity search finds evidence in the form of existing, yet undiscovered, prior art, the patent should not have been granted and is unenforceable. This type of patent search is completed after a patent is granted.
5. Evidence of Use Search
Some organizations actively seek out products that infringe on their patent rights. This type of search is called an evidence of use search. To find these products, an organization or inventor will review similar patents and look for evidence the patent is utilized in a way that infringes on the searcher’s rights. Evidence of use searches happen after a patent is granted and as it matures.
6. Search Database
There are several databases in which patent searching may be done. Many databases such as USPTO, Google Patents, Free Patents Online, esp@cenet etc. are freely available, while other databases such as ThomsonInnovation, Orbit, Patbase etc. are available on the basis of a subscription. Each of these databases varies in terms of at least one of the following: Data Coverage, Search Engine, Interface.
• Google Patent Search Database. The Google search engine has revolutionized how people use the Internet. …;
• Patentscope. Patentscope is a free database put out by the World Intellectual Property Organization (WIPO)…;
• The USPTO Database…;
• Espace European Database…
The following are some of the largest and most popular patent office databases.
• Canadian Patents Database (CIPO)…;
• DEPATISnet (DPMA)…;
• Espacenet (EPO)…;
• JP-PlatPat (JPO)…;
• PatentScope (WIPO)…;
• U.S. Patent Assignment Database (USPTO)…;
• U.S. Patent Center (USPTO)…;
• U.S. Patent Databases (USPTO).
However, an inventor or applicant can also conduct their own patent search. The inventor or applicant has the advantage of often being more familiar with the art to which the invention relates, including having an understanding of the common knowledge held by persons skilled in the art and the relevant terminology.
Patent drafting is a part of how to patent an idea and is the process of writing the patent description and claims. It is at the core of every patent application. When the patent is issued or allowed, the draft serves as the specification part of the document. The patent applicants have to be more aware that depending on how well the complete specification is drafted and how precisely and correctly the claims describe the invention or the imaginary ‘boundary” is set, the easier it will be to defend it against third parties.
Normally, a patent specification covers the following parts:
• Field of Invention: It generally discloses a field to which the invention generally relates.
• Background: It discloses existing devices or methods related to the field of invention, broadly known as prior art. Background generally discloses prior art and limitations or disadvantages associated with the prior art.
• Summary of Invention: It (i) discloses the objectives of the invention, (ii) generally lists distinguishing features and advantages of the invention for which protection is being sought, (iii) summarizes the main features of the invention to be claimed, and (iv) also includes a broader explanation of the invention and briefly mentions the solution provided by the invention.
• Brief Description of Drawings (if any): If the invention includes any drawings, then this section includes a description of the drawing briefly such that a reader can get an overview of what could be disclosed by the drawing. The drawings are to be prepared in separate sheets as per different guidelines of different jurisdictions. The drawing sheets are filed with the patent specification.
• Detailed Description of Invention: It explains the different features of the invention in detail. Detailed description should be written such that a skilled person in the art can understand the invention solely after referring to this description. All claimed features and their interconnections, if any, need to be explained. In other words, all the claimed features need to be well supported in the detailed description.
• Claim(s): Claims are the most important part of a patent draft. Claims decide the scope of the protection which would be awarded to the inventor when the patent is granted. Claims are broadly divided into two categories, independent claim, and dependent claim. Every patent draft or patent application must contain at least one independent claim. Claims tend to change in course of the examination (narrower in most cases than the originally filed claims.
• Abstract: It is a technical summary of the invention. Generally, the Abstract should disclose the invention sufficiently to enable a person to perform a search for anticipation. The publication of a patent application includes publication of the abstract and representative drawing, if any.
• Drawings: Not all specifications have drawings. Such drawings, if any, would be prepared and submitted to the Patent Office in separate sheets. Different jurisdictions have different rules for allowable drawing sheets.
The significance of patent drafting and its impact on the patent protection should be conveyed to the SMEs, start-ups and inventors along with the information on importance of the patent protection in general. They should be informed that in case of any opposition or challenging the validity of their patent by a third party, a poorly drafted patent will be easily invalidated.
An opposition proceeding is an administrative process available under the patent law of many jurisdictions which allows third parties to formally challenge the validity of a pending patent application (pre-grant opposition), of a granted patent (post-grant opposition).
Once the patent application is published, an opposition may be filed within a certain time period prescribed under the applicable law. The opponent shall state the grounds for opposition and submit any evidence. If no opposition is filed during that period, the substantive examination will be carried out.
In the meantime, an applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of examiners to IP Vietnam, having once paid the fee for such appeal.
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