1. First-to-File System

It's crucial to consider when to submit a trademark application. Certain nations follow the "first to file" rule, while others follow the "first to use" approach. The definition of "use" of a trademark differs from country to country. Even in cases when a third party can demonstrate prior use of the trademark, the "first to file" method confers rights to the initial applicant. When an unregistered brand is utilized as a trademark, the "first to use" system acknowledges it and grants the owner certain rights. The laws governing unregistered trademarks vary throughout jurisdictions. Countries that filed first outweigh those that used jurisdictions first. Nevertheless, this list could potentially alter in response to modifications to national laws.

Vietnam is a jurisdiction that follows the first-to-file rule, with the following contents:

Under Article 90.2 Law on Intellectual Property, there are 04 standards for being considered when applying this principle to the trademark.

Firstly, the trademarks being considered are identical or confusingly similar. Evaluating whether two trademarks are identical or confusingly similar is not made based on factors of structure, pronunciation, and meaning.

Secondly, trademarks being taken into account are registered for identical or similar products and services. Here, the duplication and similarity is evaluated according to factors of nature, purposes of use, and distributing channels.

Thirdly, whether trademarks being considered meet the conditions for protection or not. The “first-to-file” rule is applied only when all of the trademarks under consideration cover full standards for protection.

Furthermore, the earliest filing date, or priority date, is possessed by the mark in the valid application. The NOIP will evaluate only applications that are valid. When an application has a priority date, it indicates that Vietnam has either agreed to apply the provisions of an international treaty stipulating the priority right in Vietnam or is a party to the treaty, meaning that the application is considered to have been filed on the first earlier filing date for the same mark in that nation.

If multiple applications have the same filing date or priority date, only one application may be approved for protection by consent of all applicants, as stated in Clause 3, Article 90 of the Intellectual Property Law; if no agreement is obtained, all applications will be

2. What Can Be Trademarked

The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:

words;
names;
devices;
certain three-dimensional shapes (Often an application to register a three-dimensional shape encounters an objection that the mark is not capable of distinguishing the applicant’s goods. The likelihood of an objection’s being raised depends on the shape and the goods/services claimed)
colors (A single-color mark generally is considered not capable of distinguishing, and substantial evidence of use of the mark is required to secure acceptance, but combinations of colors generally are inherently registrable);
sounds;
trade dress/get-up (only trade dress/get-up with distinctive elements)
combinations of the above elements.

Other types of registrable trademarks in Vietnam

collective marks;
certification marks;
well-known marks;
sound marks

3. Types of Applications

In a first-to-file system like Vietnam's, where the earliest valid application secures trademark rights, there are two main types of applications you can choose between:

3.1. Individual Trademark Application:

Focuses on protecting a specific trademark for a particular good or service.
Suitable for brands used for one specific product or service category.
More cost-effective compared to class registration.
However, offers narrower protection, requiring separate applications for other categories.

3.2. Class Registration:

Covers a broader range of goods and services within a specific Nice Classification category.
Offers wider protection for brands associated with multiple product/service lines.
Requires careful selection of the relevant Nice Class(es) to ensure adequate coverage.
Can be more expensive than individual applications, depending on the chosen class(es).

Beyond these basic types, additional options might be available depending on the specific country's laws and regulations. Here are some potential variations:

Collective Marks: Used by an association of businesses to identify their members' goods or services.
Certification Marks: Indicate that goods or services meet certain quality standards, typically by an independent entity.

Choosing the right type of application:

The best option for you will depend on your specific needs and business goals. Here are some factors to consider:

Number of product/service categories you use the trademark for.
Budget for trademark registration fees.
Likelihood of expanding into new product/service lines in the future.
Specific legal requirements for certain goods or services.

It's always recommended to consult with a qualified trademark attorney who can help you choose the most effective and cost-efficient type of application for your unique situation.

4. Application Process

Step 1: Before proceeding to apply for trademark registration

- Conduct a trademark availability search: This is crucial to ensure your chosen mark is not already registered or applied for by another party. You could conduct the basic trademark search on the published website of The National Office of Intellectual Property (NOIP)

- Prepare and file the application: This involves completing the official Declaration of Trademark Registration form, providing the required documents, and paying the prescribed fees.

Step 2: Apply at the National Office of Intellectual Property

After preparing the documents as well as the expected scope of protection, you can apply the dossier to the Intellectual Property Department. Once the application is filed, a trademark application will go through the following steps:

- Formality appraisal: As the name suggests, the formality appraisal will aim to check the validity of the application according to the formality requirements, the right to apply, the subject of exclusion, and the payment of fees. The NOIP will then decide whether the application is formally valid or not. If it is not appropriate, it will issue a Notice of Intention to reject the formally valid application and request the application owner to amend it accordingly.

- Publication of the application: After a decision has been made to accept a formally valid application, the application will be published in the Industrial Property Official Gazette for other parties to know within 2 months from the date of the Decision of acceptance.

- Appraisal of application content: This is the most important part, so the legal deadline is also the longest. At this stage, the Trademark registration application is evaluated for protection conditions according to the law on trademarks. Those protection conditions include potential reference, self-distinctiveness ability, ability to distinguish from reference, and distinguishing elements. This lookup is done on the Intellectual Property Office's software and is notoriously complex, to ensure a very low error rate. Therefore, the time to perform this step is also the longest among the stages in this step, ranging from 9 - 12 months.

Step 3: Final Results

- Decision Making: Regardless of whether the application passes the Substantive Examination step or not, one of two Decisions will be made, approval or rejection. In case of approval and full payment of fees, the National Office of Intellectual Property will issue a Decision to grant a Protection Title, publish it in the Industrial Property Official Gazette, and record it in the National Register of Industrial Property.

- After receiving notice of intention to grant a protection title, according to law, the applicant shall pay the granting fee.

5. Professional Assistance:

Consider professional assistance as an investment in your peace of mind, success, and overall well-being. It's like hiring a highly skilled guide to navigate the often complex and winding terrain of life's challenges. Just as you wouldn't attempt to climb Mount Everest without proper training and support, there are situations where tackling problems alone can be risky and even counterproductive.

Imagine a professional as your expert Sherpa, equipped with the knowledge, experience, and tools to help you conquer whatever peak you're facing. Here's a closer look at the invaluable benefits of seeking professional assistance:

1. Expertise and Experience: Professionals have dedicated years honing their skills and accumulating a wealth of knowledge in their specific field. They've seen it all, from common roadblocks to intricate nuances, and can leverage this expertise to tailor solutions that fit your unique needs. Think of them as having a mental map of the terrain, highlighting shortcuts, identifying potential dangers, and ensuring you reach your destination efficiently and safely.

2. Objectivity and Clarity: When we're emotionally invested in a situation, it's easy to get clouded by bias and lose sight of the bigger picture. Professionals, however, bring an objective perspective, free from emotional entanglements. They can analyze the situation rationally, identify underlying issues you might miss, and offer clear, unbiased advice that steers you toward the most effective course of action.

3. Efficiency and Time-Saving: Time is a precious commodity, and trying to navigate complex issues alone can be a significant drain on your resources. Professionals, on the other hand, have the knowledge and systems in place to handle tasks quickly and efficiently. They can handle the legwork, research, and heavy lifting, freeing up your valuable time and energy to focus on what truly matters.

4. Increased Confidence and Reduced Stress: Taking on challenges alone can be daunting, leading to stress, anxiety, and even feelings of helplessness. By seeking professional assistance, you offload some of the burden and gain access to valuable guidance and support. This can significantly reduce stress levels, boost your confidence, and empower you to tackle challenges with renewed optimism and motivation.

5. Access to Specialized Resources and Networks: Professionals often have access to specialized resources and networks that you might not be aware of. This could include legal documents, industry insights, or even potential partners or collaborators. By tapping into their network, you open doors to new possibilities and increase your chances of success.

Remember, seeking professional assistance is not a sign of weakness; it's a proactive step towards achieving your goals and living a more fulfilling life. It's like investing in a personal coach who pushes you to be your best, celebrates your wins, and helps you overcome hurdles along the way. So, the next time you're facing a challenge that seems insurmountable, remember, you don't have to go it alone. Consider seeking professional assistance, and unlock the potential for greater success, reduced stress, and a more empowered you.

6. Conclusion

Trademark registration in Vietnam is a valuable investment for businesses aspiring to succeed in this dynamic market. By understanding the legal framework, application process, and key considerations, you can strategically protect your brand, fostering consumer trust and securing a competitive edge in Vietnam.