In the process of international trade, foreign legal entities and investors pay great attention to trademarks. When participating in a foreign market, many disputes can arise from trademark relations, resulting in losses for the owners. On this background, a protection title is the only way to protect their products sufficiently. In this article, LSX would like to give you an insight into: “Forms of trademark registration for foreigner in Vietnam”
- Law on Intellectual Property 2005, amended 2019
- Circular 01/2007/TT-BKHCN
Rights to register trademark under the Law on Intellectual Property
Article 87. Right to register marks
- Organizations or individuals shall have the right to register marks to be used for goods they produce or services they provide.
- Organizations or individuals lawfully trading in products produced by others shall have the right to register marks for such products, provided that the producers neither use such marks for their products nor object to such registration.
- Collective organizations lawfully established shall have the right to register collective marks to be used by their members under the regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations having the right to register them shall be collective organizations of organizations or individuals engaged in production or trading in relevant localities.
- Organizations with the function of controlling and certifying quality, properties, origin, or other relevant criteria of goods or services shall have the right to register certification marks, provided that they are not engaged in production or trading of such goods or services.
- Two or more organizations or individuals shall have the right to jointly register a mark to become its co-owners on the following conditions:
a/ Such mark is used in the names of all co-owners or used for goods or services which are produced or dealt in with the participation of all co-owners;
b/ The use of such mark causes no confusion to consumers as to the origin of goods or services.
- Persons having the registration right defined in Clauses 1, 2, 3, 4, and 5 of this Article, including those having filed registration applications, may assign the registration right to other organizations or individuals in the form of written contracts, bequeathal or inheritance according to law, provided that the assigned organizations or individuals satisfy the respective conditions on the persons having the registration right.
- For a mark protected in a country being a contracting party to a treaty which prohibits the representative or agent of a mark owner to register such mark and to which the Socialist Republic of Vietnam is also a contracting party, then such representative or agent shall not be permitted to register such mark unless it is so agreed by the mark owner, except where a justifiable reason is available.
The above provision does not distinguish foreign subjects from Vietnamese subjects. In explanation, foreigners and foreign legal entities have full right to register trademark in Vietnam.
Protection title of trademark
After applying for trademark registration successfully, the applicant shall receive a certificate of trademark registration for the registered mark. As a result, the law will protect the mark as well as the owner by its protection title.
Protection titles shall have their validity throughout the Vietnamese territory.
Certificates of registered marks shall have a validity starting from the grant date.
Renewal of trademark
It will expire at the end of 10 years after the filing date. The owner can renew it for many consecutive terms, each of 10 years.
In order to have the validity of a certificate of registered mark prolonged, its owner shall have to pay a validity prolongation fee. The government shall provide the fee rates and procedures for maintaining or prolonging the validity of protection titles.
Termination of validity of protection titles
Cases of terminating the validity of protection title:
a/ Its owner fails to pay the validity maintenance or prolongation fee as prescribed;
b/ Its owner declares to relinquish the industrial property rights;
c/ Its owner no longer exists or the owner of a certificate of registered mark no longer engaged in business activities without any lawful heir;
d/ The owner or his/her licensee do not use the mark without justifiable reasons for 5 consecutive years before a request for termination of validity, except where the use commenced or resumed at least 3 months before the request for termination;
e/ The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulation on use of collective marks;
f/ The owner of a certificate of registered certification mark violates the regulation on use of certification marks or fails to supervise or ineffectively supervises the implementation of such regulation;
Where the owner of a protection title declares to relinquish industrial property rights provided for at Point b above, the state management agency in charge of industrial property rights shall decide to terminate the validity of such protection title from the date of receipt of the owner’s declaration;
Organizations and individuals shall have the right to request the state management agency in charge of industrial property rights to terminate the validity of protection titles in cases specified at Points c, d, e, and f above, provided that they have paid fees. Based on the result of the examination of requests for termination of validity of protection titles and involved parties’ opinions, the state management agency in charge of industrial property rights shall issue decisions on termination of validity of protection titles or notify the refusal to terminate the validity of protection titles.
Forms of trademark registration for foreigner in Vietnam
Article 89 of the Law on Intellectual Property 2005, amended 2019 provides for forms of registration for the establishment of industrial property rights as follows:
Article 89. Modes of filing registration applications for the establishment of industrial property rights
1. Vietnamese organizations and individuals, foreign individuals permanently residing in Vietnam, and foreign organizations or individuals having production or business establishments in Vietnam shall file applications for registration of establishment of industrial property rights either directly or through their lawful representatives in Vietnam.
2. Foreign individuals not permanently residing in Vietnam, foreign organizations, or individuals having no production or business establishments in Vietnam shall file applications for registration of establishment of industrial property rights through their lawful representatives in Vietnam.
3. Submit an application for registration of the establishment of industrial property rights in paper form to the state management agency in charge of industrial property rights or in electronic form according to the online filing system.
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This article contains information about “Forms of trademark registration for foreigner in Vietnam”. In recent years, we have supplied effective legal advice to businesses and individuals at reasonable prices and with efficient results. We always update and keep our operations and services in line with the law by adhering to legal principles. If you need any further information from the firm’s solicitors, please contact LSX Law firm: +84846175333 or Email: firstname.lastname@example.org
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Frequently asked questions
Firstly, the registration applicant has neither had nor assigned the right to register a mark.
Secondly, the subject matter of industrial property fails to satisfy the protection conditions at the time the protection title granted.
Firstly, a sample of the mark and a list of goods or services bearing the mark.
Secondly, regulation on use of collective marks or regulation on use of certification marks.
Firstly, the organization or individual being the mark owner.
Secondly, conditions for using the mark.
Thirdly, characteristics of goods or services certified by the mark.
Fourthly, methods of evaluating characteristics of goods or services and methods of controlling the use of the mark.
Lastly, expenses paid by the mark user for the certification and protection of the mark, if any.