Register exclusive trademarks for printing services or other material-treating services in Vietnam?

1. What are exclusive trademarks for printing services or other material-treating services?

Exclusive trademarks for printing services or other material-treating services are unique marks that are expressed in the form of characters, words, images or combinations of those elements and used to differentiate printing services or other material services provided by a company from services of other companies in the market. These marks can be designed in one or more colors.

Exclusive trademarks for printing services or other material-treating services shall be classified into Class 40 of Nice Classification which mainly includes services that are not included in other classes of Nice Classification, rendered by the mechanical or chemical processing, transformation or production of objects or inorganic or organic substances, including custom manufacturing services. For the purposes of classification, the production or manufacturing of goods is considered a service only in cases where it is affected for the account of another person to their order and specification. If the production or manufacturing is not being performed to fulfill an order for goods which meet the customer's particular needs, requirements, or specifications, then it is generally ancillary to the maker's primary commercial activity or goods in trade. If the substance or object is marketed to third parties by the person who processed, transformed or produced it, then this would generally not be considered a service. The Class particularly includes:

- Services relating to transformation of an object or substance and any process involving a change in its essential properties (for example, dyeing a garment);

- Services of material treatment which may be present during the production of any substance or object other than a building, for example, services which involve cutting, shaping, polishing by abrasion or metal coating;

- The custom manufacturing of goods to the order and specification of others (bearing in mind that certain offices require that the goods produced be indicated), for example, custom manufacturing of automobiles.

This Class does not include certain particular services as below:

- Repair services;

-certain customization services, for example, the custom painting of automobiles

2. Why should you register exclusive trademarks for printing services or other material-treating services in Vietnam?

The market of printing and material-treating services normally is the market of small and medium companies. These companies usually do not pay enough attention to the image of the companies. Therefore, there are very few companies care about the trademark protection for their services, the number of companies that actually registered trademarks for this type of services is even smaller. Minh Khue Law Firm always encourages our clients to carry out the procedure of trademark registration as soon as possible because of the following benefits:

- Create the impression for the services of the companies, thus attracting more customers and increase the revenue for the company.

- Protect the trademark of the companies from being unauthorizedly used or copied by other entities in the market, thus enhance the position of company in the market.

- Establish the legal basis to ask the competent state agencies to handle infringements of competitors and protect the trademark.

- Bring more revenue for the company by licensing or selling the registered trademark to other companies, organizations or individuals if it becomes a famous trademark.

3. How to register exclusive trademarks for printing services or other material-treating services in Vietnam?

According to the Vietnamese intellectual property law, in order to register exclusive trademarks for printing services or other material-treating services, the applicant should prepare the dossier with papers as below:

- 02 copies Trademark registration form according to the form prescribed by law;

- 05 Trademark samples (80mm x 80 mm in size);

- List of goods/services that use the trademark;

- Power of attorney (in case of registering through representative);

- Receipt of payment of applying charges (in case of paying fees and charges via postal services or directly pay into accounts of the National Office of Intellectual Property);

4. Procedures to register exclusive trademarks for printing services or other material-treating services in Vietnam

Exclusive trademarks for printing services or other material-treating services usually are processed through the following procedures:

Stage 1: Trademark search

There are two ways to search a trademark:

- Preliminary search: A preliminary search of trademark is conducted base on the database that was published by the National Office of Intellectual Property (NOIP) and the World Intellectual Property Organization (WIPO). The processing time is quick (from 1 day to 3 days) though the result may be sometimes incomplete and inaccurate.

- Advanced search: An advanced search is conducted by the experts in the field of intellectual property at the competent state agencies. The searching time takes from 3 days to 7 days and the result usually is more accurate and complete (about 90%) than the first way of search.

Stage 2: Trademark application submission

The trademark registration application dossier often is submitted to the office of NOIP in Ha Noi or to representative offices of NOIP in Da Nang or Ho Chi Minh city. If the application cannot be submitted directly in the above offices, it can still be submitted indirectly via post office or couriers to the office of NOIP in Ha Noi.

Stage 3: Assess the form of the application

The competent state agency will officially review the trademark registration applications after receiving the trademark registration application in order to assess whether the application is valid or invalid, thus issuing a notice of acceptance of a valid application if the application meets the conditions. This assessment takes from 01 to 02 months from the submission date.

Stage 4: Publication of trademark registration application

Within 2 months from the date of acceptance of a valid application, the trademark registration application will be published on the Industrial Property Gazette, the published information includes the trademark sample, list of goods/services accompanied by the trademark and the information of applicant and the representative organization (if any).

Stage 5: Assess the content of the application

After publishing the trademark application, the NOIP will review the content of the application in order to assess the ability of the trademark to be issued the protection title under the conditions of protection and the scope of protection. This final assessment takes from 09 months to 12 months from the date of publication.

Stage 6: Issuance of the certificate

If the application meets all the requirements as prescribed by law and the applicant has paid the issuing fees fully and properly, the competent state agency will issue the trademark registration certificate for the corresponding trademark and record it in the National Register of Industrial Property.

5. Where to register exclusive trademarks for printing services or other material-treating services in Vietnam?

In order to register exclusive trademarks for printing services or other material-treating services in Vietnam, foreign companies and individuals have to apply the trademark registration application through an official industrial property representative organization in Vietnam.

Since 2017, the NOIP has certified Minh Khue Law Firm as an official industrial property representative organization in Vietnam with the representative code is 226. The Intellectual Property Department of Minh Khue Law Firm has helped many domestic as well as foreign clients to successfully register many exclusive trademarks for products and services in Vietnam.

Minh Khue Law Firm’s office address: Room 2007, C2 building, Vincom Tran Duy Hung, Trung Hoa ward, Cau Giay district, Ha Noi city.

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 submitted 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 printing services or other material-treating services that were registered by Minh Khue Law Firm:

VHC J.S.C Trademark

Class 40: Printing services; print photos; print on silk; print drawing template.

6. Contact to register exclusive trademarks for printing services or other material-treating services in Vietnam

Please contact: Minh Khue Law Company Limited

Address: Room 2007, C2 building, Vincom Tran Duy Hung, Trung Hoa ward, Cau Giay district, Ha Noi city.

Phone number: + 84986 386 648 - Lawyer: To Thi Phuong Dzung

Email: dung@luatminhkhue.vn

Best Regards,

Intellectual Property Department - Minh Khue Law Company Limited