Register exclusive trademarks for products of tobacco, electronic cigarettes in Vietnam?

1. What are exclusive trademarks for products of tobacco, electronic cigarettes?

Exclusive trademarks for products of tobacco, electronic cigarettes are unique marks that differentiate products of tobacco, electronic cigarettes of one company from other companies or individuals in the market. Marks that used as exclusive trademarks can be expressed in one or more colors; in the form of texts, slogans, images, drawings or combinations of all these elements.

Exclusive trademarks for products of tobacco, electronic cigarettes are usually classified into Class 34 of the Nice Classification. Class 34 contains mainly tobacco and articles used for smoking, as well as certain accessories and containers related to their use; in particular:

- Tobacco substitutes, not for medical purposes;

- Flavourings, other than essential oils, for use in electronic cigarettes, oral vaporizers for smokers;

- Herbs for smoking;

- Snuff;

- Certain accessories and containers related to the use of tobacco and articles for smoking, for example, lighters for smokers, ashtrays for smokers, tobacco jars, snuff boxes, cigar humidors.

This Class does not include some products as below:

- Tobacco-free cigarettes for medical purposes;

- Batteries and chargers for electronic cigarettes;

- Ashtrays for automobiles.

2. Why should you register exclusive trademarks for products of tobacco, electronic cigarettes in Vietnam?

Manufacturing and distributing products of tobacco or electronic cigarettes are conditional business area in Vietnam, only certain companies with legal licenses allowed to operate in this industry. Besides, according to Vietnamese law, products of tobacco can only be consumed in Vietnam when they have been protected by intellectual property rights in Vietnam. Therefore, companies should carry out the procedures of trademark registration for these types of product in order to do business as well as to receive huge advantages as below:

- Make the products recognizable. Customer can distinguish products of one company from products of other companies in the market.

- Protect trademarks from being copied or used by other companies, organizations or individuals without the consent of trademark owner.

- Competent state agencies will have a legal basis to handle activities of trading fake or counterfeit goods.

- Prevent other entities in the market from registering a trademark that is similar or identical to the exclusive trademark.

- Create more profit for the trademark owner from licensing or transferring the trademark to other entities.

3. How to register exclusive trademarks for products of tobacco, electronic cigarettes in Vietnam?

According to the intellectual property law, a dossier of trademark registration for products or services includes the documents as below:

- Declaration of Trademark registration (02 copies according to the prescribed form);

- Trademark samples (05 copies, the size of each sample is 80mm x 80 mm);

- List of services and/or goods that attached by the trademark;

- Letter of authorization (if any);

- Receipt of stage fees and charges (if any);

4. Process of exclusive trademark registration for products of tobacco, electronic cigarettes in Vietnam

Normally, a process of trademark registration in Vietnam shall go through the following procedures:

First stage: The trademark search (optional)

There are two ways to conduct the trademark search: preliminary search and advanced search. Preliminary search is the trademark search based on the digital library provided by the competent state agency, the searching time is short (from 01 day to 3 days) but the result often has a low accuracy rate (around 60%). About the advanced search, the trademark will be searched by the experts in the field of intellectual property at the competent state agencies, based on the trademark registration records in the real-time, the searching time is from 3 days to 7 days but the result of this method usually has a high accuracy (about 90%).

Second stage: The application submission

The trademark application dossier can be submitted directly to the office of NOIP in Ha Noi or to the NOIP’s representative offices in Da Nang or Ho Chi Minh city. In addition, the dossier can also be submitted to the above offices via post office or couriers.

Third stage: Application form assessment

In this stage, the exclusive trademark application will be assessed formally by the NOIP to conclude whether the application satisfies formal requirements such as necessary documents; classifying, right to apply, etc. This stage takes about 01 month to 02 months since the date of application submission.

Fourth stage: Publication of application

If the application is valid, the NOIP will publish the information of the valid trademark application on the Industrial Property Gazette within 2 months since the date of the decision of a valid application. The published information shall include the trademark sample, list of goods/services that the trademark is used for and the information of applicant/trademark owner and the representative organization (if any).

Fifth stage: Application content assessment

In this stage, the exclusive trademark application will be assessed by the NOIP to conclude whether the trademark causes confusion with other protected trademarks and whether it satisfies all the conditions for the protection. This stage takes about 09 months to 12 months since the date of trademark publication.

Sixth stage: Issuance of the protection title

The competent state agency will issue a protection title for the trademark owner within about 01 month from the date the applicant pays the fees and charges fully and properly as prescribed by the intellectual property law.

5. Where to register exclusive trademarks for products of tobacco, electronic cigarettes in Vietnam?

According to the Vietnamese intellectual property law, foreign companies, organizations or individuals can only register their trademarks in Vietnam if they register through an official industrial property representative organization.

From August 2017, Minh Khue Law Firm has been approved by the NOIP to operate as an official industrial property representative organization in Vietnam with the representative code is 226. Our Intellectual Property Department will counsel clients on provisions of law and carry out the procedure of registration for trademarks 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.

6. Contact to register exclusive trademarks for products of tobacco, electronic cigarettes 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