Does a trademark in Vietnam need proof of use after successful registration?

The holder of a trademark in Vietnam does not need to provide proof of use following the receipt of the certificate. The trademark must, however, be used in practice. In the event of a request from a third party, the owner must demonstrate how they have used the trademark in Vietnam by demonstrating that the holder has engaged in trade using the trademark, such as advertising, setting up storefronts, and particularly supplying customers with their goods or services. The trademark's effectiveness will be terminated upon request from a third party if it has not been used for 3 consecutive years by either the owner or their licensee without a valid reason.

What are the rights of trademark holders after successfully registering a trademark in Vietnam?

The holder's trademark in Vietnam is protected for ten years following the filing date of the application. Furthermore, with the required paperwork, such as a power of attorney and the original certificate of registration, the holder may renew the protection certificate indefinitely, for a period of ten years at a time. There is a six-month grace period for registering if the renewable date has passed.

The owner of a trademark also has the ability to use it in Vietnam, oppose a later conflicting application, file a cancellation action against a later conflicting registration, file a lawsuit for trademark infringement against third parties that use their trademark in confusingly similar ways, grant licenses to other third parties to use their trademark, request that customs authorities seize their trademark in order to prevent the import of counterfeit goods, and seek damages for trademark infringement.

What is the procedure of trademark registration in Vietnam?

To ensure that they have a good chance of successfully registering their trademark in Vietnam, the holder should do a trademark search before applying. Following that, they ought to register the trademark in Vietnam as soon as they can. If there is no opposition, the registration process in Vietnam takes between 18 and 24 months on average.

However, if they have good cause, others may file an opposition against the holder's trademark within the period starting when the Trademark Office publishes the application in the gazette. Ultimately, the holder of the Vietnam trademark receives a protection certificate following the successful registration of the trademark without any opposition.

Trademark In Vietnam: What International Treaties Vietnam Is A Member?

Trademarks of foreign people and organizations entering Vietnam is a necessary component of global economic integration. Vietnam thus participates in international agreements and treaties in order to facilitate the registration of its trademarks.

In addition to the provisions of Vietnamese law, the integration has resulted in the regulation of trademark law in Vietnam by Treaties, Conventions, Bilateral and Multilateral Agreements, such as the Vietnam-US Bilateral Agreement, Paris Convention, Madrid Agreement, Nice Agreement, Vienna Agreement, and Protocol Relating to the Madrid Agreement. These agreements serve to protect Vietnamese trademarks domestically as well as internationally.

What are the rules of Trademark in Vietnam?

The foundation for an owner's rights to a trademark nowadays is "first to file" and "first to use," according to trademark laws in practically every country in the world. Therefore, in order for a trademark owner to ascertain the duration of their rights, it is imperative that they are aware of the trademark laws in their country.

Vietnam followed the "first to file" rule, which is also followed by many other nations like Laos, Cambodia, South Korea, Canada, Thailand, China, the EU, Indonesia, Japan, and the Philippines. This means that the first person to file a trademark application in Vietnam will have priority over anyone else, regardless of how long they use the trademark. Therefore, using a trademark does not establish your ownership of it.

What is a trademark in Vietnam?

Any symbol used to differentiate the goods or services of various companies or individuals is considered a trademark in Vietnam, and a trademark is eligible for protection if it meets the requirements listed below.

“It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; It is capable of distinguishing goods or services of the trademark owner from those of other subjects.”

When a trademark of an individual or an organization is protected, they shall have rights to deal with others who violate such trademark.

What is the procedure for trademark registration in Vietnam?

Step 1: Vietnam Trademark Search (Optional)

It's not required to search for trademarks. However, it is strongly advised that you carry out the trademark search to find out if your trademark is available before formally filing a new trademark in Vietnam.

Step 2: Vietnam trademark application

In Vietnam, the trademark process typically takes 16 to 19 months from the date of filing. In the event of an office action, the process could take longer.

Step 3: Certificate of Vietnam Trademark Registration

In Vietnam, the process of obtaining a trademark certificate will take one to two months.

Step 4: In Vietnam, pay the trademark fee

What are the fees for trademark registration in Vietnam?

The fees in Vietnam vary and on a step-by-step basis:

- Official charges for filing application: VND 150,000/ 01 application;
- Fee for publication of application: VND 120,000/ 01 application;
- Fee for the trademark search for the substantive examination process: VND 180,000/ 01group of goods or services;
- Fee for the trademark search from the 7th good or service onwards: VND 30,000/ 01 good or service;
- Fee for formality examination: VND 550,000/ 01 group of goods or services;
- Fee for formality examination from the 7th good or service onwards: VND 120,000/ 01 good or service.

Who can register a trademark?

Under the current Law on Intellectual Property of Vietnamese (article 87) 2005 amended and supplemented in 2009, 2019 and, 2022, there are five groups of subjects having the right to register trademarks.

Direct Creators/Producers: Organizations or individuals who manufacture or provide the services themselves.
Marketers: Organizations or individuals lawfully selling goods not produced by them.
Collective Organizations: Entities representing members for collective trademark registration.
Quality Controllers: Organizations certifying the quality, properties, or origin of goods/services.
Co-Owners: Two or more entities directly creating/producing goods/services, without confusing consumers.

What is Vietnam's classification system?

Vietnamese trademark registration is governed by the 12th Nice Classification.

All of the selected goods or services must be specified in the trademark application in accordance with Vietnam's Intellectual Property Law. It is not permissible to designate products or services under class headings or the broad meaning. As a result, the pertinent products or services, including abrasives (auxiliary fluids for use with ---), should be classified under the basic number category in the Nice classification.

The Vienna categorization system is used to categorize figure marks.

There are multi-class applications available, with cost savings expected to be between 10 and 20 percent.

Is the use of a trademark necessary for registration?

The applicant is not required to use or make any claims prior to registering a trademark. As a result, no proof of use needs to be provided.

However, a foreign entity or personnel can claim priority claim if they satisfy the following conditions:

Applicant Requirements: Be a citizen of a Paris Convention member country, reside in Vietnam or a member country, or have a production establishment there.
First Application: File the initial trademark application in a Paris Convention member country or Vietnam, including a section claiming priority rights.
Timeliness: Submit the registration application within six months of the first filing date.
Clear Claim: Explicitly state the claim for priority rights and provide copies of the first application certified by the receiving agency.
Fee Payment: Pay the full fee for claiming priority rights.

However, after a mark is registered, it is prone to cancellation if, for a continuous period of five years after registration, the mark has not been used by the owner or registered licensee for any goods or services for which it is registered without a valid reason, except use that started or continued at least three months before the date of the cancellation request

What is the duration and maintenance of the registration?

The exclusive rights certification of a trademark under Vietnam's intellectual property law takes effect after ten years and may be renewed indefinitely, with a ten-year interval between extensions. At the request of third parties, the certification of a trademark may be revoked or stopped if it has not been used for five years in a row.

Proof of use will include:

the number of consumers who are aware of the mark through the purchase or use of the goods or services bearing the mark or through advertising;
the territorial scope of circulation of the goods or services bearing the mark;
turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;
the period of continuous use of the mark;
widespread goodwill of the goods or services bearing the mark; and
value of assignment, licensing price or the value of investment capital contribution in respect of the mark.

Why should you register for a trademark in Vietnam?

Brand Protection: Trademark registration grants exclusive rights to use your brand within Vietnam, preventing unauthorized use and protecting your brand reputation. This is crucial in a rapidly growing market like Vietnam, where counterfeit goods and trademark infringement are common.
Market Entry and Expansion: A registered trademark strengthens your presence in the Vietnamese market and builds trust among consumers. It helps you establish your brand identity, differentiate yourself from competitors, and attract potential customers.
Legal Enforcement: With a registered trademark, you have the legal standing to take action against infringers, including seeking injunctive relief and damages. This deters potential imitators and protects your investment in your brand.
Licensing and Franchise Opportunities: Trademark registration allows you to license your brand to other businesses in Vietnam, generating additional income and expanding your market reach.
Business Valuation and Investment: A registered trademark can significantly enhance the value of your business, making it more attractive to investors and potential partners.
International Recognition and Trade Agreements: Vietnam's membership in various trade agreements, such as the CPTPP, provides additional protection and enforcement mechanisms for registered trademarks.
Growing Consumer Market: Vietnam boasts a rapidly growing and increasingly affluent population, offering immense potential for foreign brands. Registering your trademark early allows you to capitalize on this growing market opportunity.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.