Intellectual Property in Vietnam: How to protect your Trademark?

As Vietnam’s economy has been deeply integrated with its participation in various free trade agreements so as to promote trade, it is imperative for foreign investors to consider on registering their trademarks in the territory to obtain an independent and exclusive right of use which may be used to challenge infringements and counterfeits by third parties in Vietnam. In another words, trademark registration is a necessary tool for a foreign investor to protect its brand and commercial reputation.

As next, a trademark can be defined as a sign to distinguish goods and services of different organizations and individuals. To be protected under the Intellectual Property Law of Vietnam, foreign enterprises should ensure that their trademarks are:

· Visible

Signs used as trademarks must be visible signs in the form of letters, words, images, drawings, or a combination of those elements expressed in one or more colors. However, in Vietnam, trademarks based on sound and scent are not recognized.

· Distinctive

A trademark can be considered as “distinctive” if it is made up of one or several easily recognizable and memorable elements or a series of recognizable and memorable elements, except for some specific elements such as simple geometric figures and figures, numbers, letters, words in uncommon languages and other elements specified under the Clause 2, Article 74 of Intellectual Property Law 2005. Furthermore, the trademark shall not be identical or similar with prior trademarks already registered or filed for registration in Vietnam.

Additionally, foreign enterprises should also take into consideration some signs that are not protected under the Intellectual Property Law 2005, for examples: signs that are resemble to national flags, emblems, full names of state agencies and organizations without authorization or signs that mislead, confuse, or deceive consumers about the origin, features, uses, quality, value or other characteristics of goods or services.

In terms of registration, trademark owners have two options: (1) Either directly file an application for the registration of the trademark in Vietnam at the local authority (i.e, the National Office of Intellectual Property – NOIP); or (2) Designate Vietnam within the claimed geographical scope of protection of an international trademark, as allowed by the Madrid Protocol: however for this it is required that the trademark has been priorly filed or obtained in another State member of the Madrid Protocol.

In both cases, NOIP will still perform a formal and substantial assessment of the trademark application in compliance with the Vietnamese laws.

Non-resident individuals and entities (including foreign companies), do not have the right to independently file a registration request for their trademarks in Vietnam, even if these trademarks have already been registered in third countries. Particularly, the National Office of Intellectual Property (NOIP) mandates the involvement of a local professional for the application submission process for those who are not established or residing in Vietnam.

According to Article 93 of Intellectual Property Law 2005, after approval, trademarks are protected for a period of 10 years from the date of receipt of the application and may be renewed indefinitely.

Before using the trademark in Vietnam, it is advisable to obtain a valid registration so as to avoid the risks such as use might be deemed unlawful due a rejection in the application (i.e., by reason of the existence of a prior similar trademark, or by reason of violation of the substantial requirements for trademark registration). It is therefore advisable to instruct local attorneys to conduct preliminary searches before the filing of the trademark.

Additionally, it is recommended to separately file for registration of the text trademark and the logo, so that it reduces the risk of objections on the grounds of similarity with previously filed trademarks, which is difficult to assess for logos.

In conclusion, registering trademarks is a crucial step for foreign entities to secure legal rights, navigate the market, and obtain the right to challenge counterfeits and other infringements in Vietnam. Due to the peculiarities of the local regulations and the requirement for foreign-based applicants to appoint a local representative to be responsible for the application, it is recommended to entrust a reliable professional operating in Vietnam.

In D’Andrea & Partners Legal Counsel we have authored innovative publications exploring Vietnam, produced in order to provide foreign investors and businesses with more practical guidance on how to do business in Vietnam, as it requires a specific context of the economic and legal framework of the country, including the Intellectual Property protection.

Disclaimer:

The above content is provided for informational purposes only. The provision of this article does not create an attorney-client relationship between D’Andrea & Partners and the reader and does not constitute legal advice. Legal advice must be tailored to the specific circumstances of each case, and the contents of this article are not a substitute for legal counsel.