Register a trademark for architectural design and consulting services in Vietnam?

1. What is a trademark for architectural design and consulting services

A trademark is a recognizable sign, phrase, letter, or symbol that signifies a specific product/service and legally distinguishes it from all other products/services in the same category. A trademark exclusively recognizes a product/service as belonging to your company and identifies the company's ownership of the trademark.

Architectural design and consulting services belong to Class 42 according to the newest version of Nice Classification. In this article, we will provide information about the procedure of trademark registration of services in Class 42 in general and architectural design and consulting services in particular. Class 42 mainly consists of services relating to the theoretical or practical aspects of complex areas of operation, these services are carried out by real professional members such as architects, chemists, scientists, engineers, computer programmers, etc.

This group of services includes services of engineers and scientists performing assessments, estimates, research, reporting and consultancy in the fields of science and technology; computer and technology services to protect computer data, personal information, financial information and to detect unauthorized access to data and information; scientific research services for medical purposes; except for the following services:

- Business studies and assessments;

- Document processing and computer data file management services;

- Financial and budget assessments;

- Mining and oil extraction;

- Installation and repair services for computer;

- Services performed by professional members such as doctors, veterinary surgeons, psychologists;

- Medical treatment services;

- Design of garden plants;

- Legal services.

2. Why should you register a trademark for architectural design and consulting services

Architectural design and consulting service area is a growing market in Vietnam in recent years, competitiveness is also increasing accordingly. In a competitive market like this, the image and reputation (brand) of the company are important factors that decide the success of the company. There are many ways to build a brand for a company and registering a trademark at the competent state agency is one of the most effective ways. A registered trademark will make the services of your company are more recognizable in the market, it also helps your company in creating the trust of the customers in the company's brand as well as the service quality of the company, bring the company closer to the customers.

Besides, registering a trademark not only gives your company the exclusive rights to use the trademark but also allows you to prevent other entities from using a similar mark that can cause confusion for customers. Trademark registration will be the legal basis for identifying the owner of the trademark when there is any dispute relates to the use of the trademark. Any violation of other entities who want to use your company's trademark to get profit without your consent will be handled properly by the competent state agencies.

Another very important benefit of trademark registration is to make your company's trademark as an identifiable intangible property in the legal sense. A registered trademark can be priced and used as an asset to contribute to the capital of other companies. A trademark can also bring profit for the company from licensing or selling the trademark.

Although this is not a mandatory administrative procedure according to the intellectual property law, from the outstanding benefits as above, we always provide consultancy and encourage our clients to register their trademarks as soon as possible to secure the benefits and prevent potential troubles.

3. How to register a trademark for architectural design and consulting services

3.1. General requirements to register a trademark

A trademark shall satisfy the following requirements in accordance with the provision of Vietnamese Intellectual Property Law to be issued a Trademark Registration Certificate:

3.2. Components of a trademark registration application dossier

Normally, a trademark registration application includes the following documents and papers:

+ Application form to register a trademark in accordance with the provisions of law (02 copies);

+ Trademark sample with the size 80 x 80 mm (05 copies);

+ Documents that identify the legal right to submit the application of the applicant in case the applicant enjoy the rights from another entity;

+ Power of attorney (if any);

+ Payment receipts of the application fee.

3.3. Requirements of the application dossier

When preparing a trademark registration dossier, the applicants should pay attention to the following requirements:

- One trademark registration dossier is only for the registration of one trademark;

- All the documents must be in accordance with the prescribed forms, all the required information in the forms must be filled;

- All the documents shall be made in Vietnamese. If a document is made in another language, the document must be translated into Vietnamese;

- All the documents shall be drafted on A4-size papers, in the vertical direction (except for the separate pages such as drawings, images or tables can be presented in the horizontal direction);

- The documents must include the page number in Arabic numerals if it has more than one page;

- The application shall only use common words, all the symbols, measurement units, electronic fonts, spelling rules shall be in accordance with Vietnamese standards;

4. Process of registration of a trademark for architectural design and consulting services

The process of registration of a trademark for architectural design and consulting in Vietnam includes the following steps:

Step 1: Searching the trademark

This is not an official procedure in the process of registration of a trademark. The purpose of this step is to identify the chance of success of trademark registration prior to submitting the application. There are two methods to conduct the trademark search:

- Premilinary search: The preliminary trademark search normally takes from few hours to 3 days, depending on the group of services accompanied by the trademark and the complexity of the trademark. Although this method of search is fast and free, it has the disadvantage is low accuracy rate of the result (about 60%). There would be a trademark that is identical or similar to your trademark, published on the electronic database of the industrial property but has not been issued a certificate, in this case, your trademark will be identified as a duplication trademark.

- In-depth trademark search: The in-depth search normally takes a longer time than the preliminary trademark search (from 3 days to 7 days). When using this method of search, specialists in the field of intellectual property will review your trademark and provide consultancy. The advantage of this method compares to the preliminary search is that you will receive the result with higher accuracy rate (up to 98%). From the result, the applicant can know whether the trademark needs to be modified before submitting it officially to the competent state agency.

Step 2: Submitting the trademark registration application

The National Office of Intellectual Property (NOIP) is the only competent state agency in Vietnam to issue the Trademark Registration Certificate.

The applicant can submit the application directly to the NOIP in Hanoi or through representative offices of NOIP in Da Nang and Ho Chi Minh city. The processing time of this method of submission is only one morning or afternoon.

The applicant can also submit the trademark registration application by post. The submission time of this method depends on your location and the delivery time of the post office.

Step 3: Examining the application form

After receiving the trademark registration application, the NOIP will examine the application in terms of formal requirements within 01 month to 02 months.

In this stage, the NOIP conduct the examination and decide whether the trademark registration application is valid or invalid application. If the application is valid, the NOIP will issue a decision of valid application.

Step 4: Publishing the trademark registration application

After issuing a decision on acceptance of a valid application, the NOIP will publish the trademark in the Industrial Property Gazette within 2 months, the published information includes the trademark sample and class of products/services accompanied by the trademark.

Step 5: Examining the content of the application

The processing time of this step is about from 9 months to 12 months.

In this step, the NOIP will conduct the examination to decide whether the trademark satisfies all the protection criteria set by law. If the trademark satisfies all the protection criteria, the NOIP will issue a decision of the issuance of Trademark Registration Certificate to the Applicant. If the trademark does not meet the protection criteria, the NOIP will notify the applicant about the examination result. The Applicant will have 2 months to respond to this Notice.

Step 6: Receive the Trademark Registration Certificate

After receiving the Notice of Certificate Issuance, the applicant shall pay the licensing fee as soon as possible. Trademark Registration Certificates will be issued within 1-2 months from the date of the applicant pay all the licensing fee fully and properly.

5. Where to register a trademark for architectural design and consulting services

The foreign company wants to register a trademark for architectural design and consulting services in Vietnam has to apply through an industrial property representation organization according to the provisions of Vietnamese laws. Minh Khue Law Firm is a high-quality and reputable legal industrial property representative in Vietnam and many foreign companies have come to Minh Khue Law Firm to proceed this procedure. Minh Khue Law Firm was certified by the NOIP in August 2017, with the representative code is 226, to carry all the procedure of registration of trademarks in Vietnam for domestic as well as foreign companies and individuals.

Foreign companies and individuals can directly contact Minh Khue Law Firm for consultancy on the process and procedures of registration of trademarks for architectural design and consulting services in Vietnam.

The Intellectual Property Department of Minh Khue Law Firm will counsel and carry out all the procedure for you, please contact: MINH KHUE LAW FIRM CO., LTD

The person in charge of the Intellectual Property Department of Minh Khue Law Firm:

Lawyer: To Thi Phuong Dzung

Email: dung@luatminhkhue.vn ;

Phone number: + 84986 386 648

The dossier will be filed in: National Office of Intellectual Property of Vietnam, address at: 384-386 Nguyen Trai street, Thanh Xuan Trung ward, Thanh Xuan district, Hanoi.

You can refer to some trademarks for architectural design and consulting services that were registered by Minh Khue Law Firm:

BIMIC Trademark

Class 42: Architectural services; architectural consulting; set up construction drawings; set up industrial drawings; interior design; Interior design.

Trademark of Smartrealtors And Partners Real Estate Limited Company​

Class 42: Interior design; industrial design; interior design, architectural consulting.

LE DUONG Trademark

Class 42: Architectural services; set up construction drawings; interior design; industrial design; art graphic design; interior design.

6. Contact to register a trademark for architectural design and consulting services