Trademark

TRADEMARK DEFINITION

1. Trademark is any sign used to distinguish goods or services of different organizations and individuals.
2. Collective mark is a mark used to distinguish goods or services of members from those of non-members of an organization that is the owner of the mark.
3. Certification mark is a mark licensed by its owner to other organizations, individuals to use for their goods or services in order to certify characteristics in respect of origin, materials, raw materials and methods of goods production or methods of services supply, quality, accuracy, safety or other characteristics of such goods or services.
4. Associated marks are marks that are registered by the same owner, identical or similar to each other and are used for identical or similar or inter-related goods and services.
5. Well-known mark is a mark widely known throughout territory of Vietnam.

1. Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors;
2. Being capable of distinguishing goods or services of the mark owner from those of other subjects.

1. Signs identical with or confusingly similar to national flags or national emblems;
2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations or socio-professional organizations or international organizations, unless permitted by such agencies or organizations;
3. Signs identical with or confusingly similar to real names, alias, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries;
4. 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 those organizations;
5. Signs which cause misleading or confusion or deceive consumers as to the origin, properties, intended utilities, quality, value or other characteristics of goods or services.  

• Avoid infringing upon industrial property rights with respect to protected IP objects of the others;
• Assessment of the protection ability of IP objects (inventions, industrial designs and trademarks…);
• Oppose to the granting that do not meet the protection requirements, even after they have been granted a Protection Title;
• Avoid unnecessary costs for researching & studying the known technical solutions;
• Identify and evaluate technology for purchasing, licensing and transferring technology; alternative technologies;
• Capture available solutions to technical problems;
• Searching for ideas for further technological innovation;
• Monitoring activities of the current and potential competitors in the future;
• Finding the right market; obtaining valid IPR to assign, purchase …

• Searching databases on the internet;
• International Classification (IPC, Locarno, Nice, Vienna)
• Keyword Search table;
• Special optical discs;
• IP Official Gazette;
• National Register;

• • Before the NOIP issues a decision (refusing to accept a formality application, refusing to grant a protection title or a decision to grant a protection title…), the applicant can amend the application by himself or at the request of the NOIP.

• • Before the NOIP issues a decision (refusing to accept a formality application, refusing to grant a protection title or a decision to grant a protection title…), the applicant may request the NOIP to record the change of application owner on the basis of transfer, inheritance, or decision of a competent authority.

• • Before the NOIP issues a decision (refusing to accept a formality application, refusing to grant a protection title or a decision to grant a protection title…), the applicant may request or may be requested by the NOIP to split the application. The split application bears the new application number and is given the filing date of the original application or the priority dates of the original application (if any).
  • In case of split of trademark application, in which the original application has yet finished its results of substantive examination, the applicant must pay fees and charges as the initial new registration application.
  • For the original application, the applicant needs to amend the application; the NOIP shall announce the split of the application.
  • The split application is examined in accordance with the procedures that have not been completed for the original application.

• Mark registration Certificates shall have the validity beginning on the granting date and expiring at the end of 10 years counted from the filing date and renewable indefinitely for consecutive terms of 10 years
• In order to renew the trademark validity, within 06 months until the expiry date,  the trademark holder must submit a request for extension. The application for renewal may be submitted late, but no later than 06 months from the date of expiration of the protection title, and the holder must pay an additional late renewal fee.

• Protection Titles duplicate is made in case the industrial property rights are jointly owned, the Protection Titles is granted to the first owner in the list, other joint owners can request to issue duplicates and must pay a service fee for the issuance of copies.
• Protection Titles re-issuance is made in case the original copy is lost damaged, torn, dirty, faded to the point of unusable, disassembled, and unable to keep the seal.

• Protection Titles amendment is made when there is a change in information about the name/address of the Protection Titles owner; change information about the author's name and nationality; change of owner of the Protection Titles (transfer of ownership due to inheritance, inheritance, merger, division, consolidation...).
• The request to record change of IP representative organization, request to narrow the protection scope: modify some small details but do not significantly change the trademark template; request reduction of one or several products or services.
• If a narrowing of the scope of protection is requested, a re-examination must be carried out. Time limit for re-examination of inventions is not exceeding 06 months. In complicated cases, the time limit for appraisal must be extended; however, it must not exceed the time limit for the first appraisal.

• Assignment of an industrial property right means the transfer of ownership right by the industrial property owner to another organization or individual. The assignment of an industrial property right shall be conducted in the form of written contract. The assignment contract is only valid when it is registered at the NOIP.
• In case of collective marks or certification marks assignment: Documents proving the right to file, Regulations on use of the collective mark or certification mark of the transferee must comply with regulations.

• Licensing of an industrial property object means the permission of the industrial property owner given to another organization or individual to use the industrial property object within the scope of the owner’s use right. The licensing of an industrial property object shall be conducted in the form of written contract.
• The licensing contract of industrial property object shall be effective as agreed by the parties, but shall only be effective to a third party upon registration with NOIP.
• According to the CPTPP Agreement: "The licensing contract to use an industrial property object is valid according to the agreement between the parties and is legally valid for a third party regardless of its registration at the NOIP".

• Its owner has not paid the due fees for the maintenance or renewal as prescribed;
• Its owner has declared to relinquish the rights conferred by the Protection Title;
• Its owner has no longer existed or the owner of a Mark registration Certificate has no longer engaged in business without a lawful successor;
• The mark has not been used by its owner or his licensee without justifiable reasons for a term of 5 consecutive years prior to a request for termination of validity, except the use is commenced or resumed at least 3 months before the request for termination;
• The owner of a Mark registration Certificate in respect of a collective mark  fails to supervise or ineffectively supervises the implementation of the rules on using collective mark;
• The owner of a Mark registration Certificate in respect of a certification mark violates the rules on using certification mark or fails to supervise or ineffectively supervises the implementation of such rules;
• The geographical conditions attributable to the reputation, quality or characteristics of the product bearing a geographical indication have changed resulting in a loss of the reputation, quality or characteristics of the product.

• The applicant for registration neither has right to registration nor has been assigned such right (with regard to inventions, industrial designs, layout-designs and marks);
• The subject matter of industrial property failed to satisfy the protection conditions at the grant date of the Protection Title.

• The appeal can be filed via IP representatives, or directly at NOIP office, or NOIP representative office in HCM City, Danang City.
• By mail.

• Within 10 days from the date of receipt of the appeal, the authority person to settle the appeal must examine the application according to the requirements on the form and issue a written notice to the complainant about the fact that the appeal is valid and accepted or not, stating the date of acceptance or stating the reasons for not acceptance of the application.
• The appeal will not be accepted if they fall into one of the following cases:

• Based on arguments and evidences provided by the complainant and related parties, the authorized office must issue an appeal settlement decision within the time limit as prescribed by law on complaints.
• Before issuing the decision, the authorized office informs the complainant and the relevant party about the arguments and evidence of the other party used to settle the complaint as well as the conclusion of the appeal settlement.

6.3. Publication
The decision of appeal settlement shall be published in the IP Official Gazette within 2 months from the date of signing the decision.