Trademark is an important factor for consumers to distinguish goods and services of different individuals or organizations. Therefore, the state must protect trademarks and deter other individuals/organizations from using and counterfeiting trademarks. So, what are the procedures for trademark registration? Let’s find out in this article with LSX Law firm.
- Law on Intellectual Property 2005 amended and supplemented in 2009;
- Decree 131/2013/ND-CP;
- Decree 105/2006/ND-CP
Trademark is a special sign (tangible and intangible) to identify a product, goods, or services produced or provided by an individual or an organization. It holds the manufacturer’s reputation on the packaging of goods to confirm the quality and origin of the product.
Regardless of the name, the essence of the trademark registration procedure is an administrative procedure at the National Office of Intellectual Property to register for trademark protection, protect the legitimate rights and interests of the owner, avoid the case of other entities using, counterfeiting, imitating the trademark.
I. What do you need to know before the Procedures for trademark registration
1. Who is entitled to register the trademark?
So, there are 2 objects that can register a trademark (in the dossier on the registration of trademark ownership)
- Enterprises, business households.
Note: To register a trademark, Business registration is not required (establishment of a business or household business). According to the law, an individual can still register as the owner of any unregistered trademark.
2. Group of trademark registration
Presently, there are 45 groups specified in the Nis 11-2018 List of goods and services. When an individual/organization registers a trademark for a group, the state will protect the monopoly within that group.
So Individuals/organizations depend on their industry of activity to determine the group. Because this is the right of an individual/organization, an individual/organization can register one trademark for one or more groups based on their needs and capabilities.
3. Conditions on registered trademarks
Additionally, Trademarks must not be identical or similar to other marks already registered at the National Office of Intellectual Property of Vietnam or identical or similar to well-known trademarks.
4. Benefits upon registration and term of protection of registered trademarks
When registering for trademark protection, individuals/organizations have the following legitimate rights and interests: The
- Attach the letter “R” (Registered) to your trademark.
- Trademark protection for up to 10 years after the end of 10 years, if there is a need to continue using it, then extend it for the next 10 years. (The trademark is registered for protection once and renewed many times).
II. Trademark registration procedures at the National Office of Intellectual Property
1. Dossier for carrying out trademark registration procedures
To carry out trademark registration procedures, the documents include:
- Declaration declaration declaration sign the trademark (02 copies);
- Trademark samples (05 samples of size 80 x 80 mm) and list of goods and services bearing the mark;
- Power of Attorney (if applying through a representative);
2. Agency incharge of the Procedures for trademark registration
The Receiving and processing agency is the Vietnam Intellectual Property Office. The National Office of Intellectual Property is in Hanoi and has representative offices in Da Nang and Ho Chi Minh City.
Then, After receiving the application, the individual/organization will receive 01 original application with the application’s seal, application number and priority date of the National Office of Intellectual Property of Vietnam.
Additionally, priority date means that the individual/organization that filed the trademark application first will be given priority for protection first. In case another individual/organization submits an application for registration of a later mark similar to a previously registered trademark, it will not be protected by the state.
3. Order and time limit for processing dossiers
Trademark registration dossiers are processed at the National Office of Intellectual Property according to the following order and time:
Step 1: Formal examination
The assessment of the validity of application according to the requirements on the form, on the object of exclusion, on the right to file, pay the fee, etc. to make a conclusion that the application is valid or invalid. The formal examination time is 1 month from the date of application.
- If the registration application meets the conditions, the NOIP will notify the acceptance of the valid application and publish the application.
- If the registration application does not meet the conditions, the NOIP will issue a Notice of not accepting the application and request the enterprise to amend it. The applicant makes amendments as required and submits the revised dispatch to the NOIP.
Step 2: Notifying the organization/individual that the Trademark is valid.
So, the Trademark registration application is accepted as valid and will be published in the Official Gazette within 2 months from the date the application is accepted as valid.
Also, The published content is the information related to the valid application stated in the notice of acceptance of the valid application, the trademark sample, and the attached list of goods and services.
Step 3: Substantive examination:
A valid trademark registration application is subject to substantive examination to assess the possibility of granting a trademark registration certificate to the object stated in the application under the conditions of protection.
According to the law, the time limit for substantive examination of a trademark application is 9 months from the date of publication of the application.
4. Receiving the results of the trademark registration procedures
in accordance with the law, the entire process takes 12 months. However, in practice, this time is often much longer. Normally, it takes 18-24 months for a trademark to receive a protection title.
Then, After completing the appraisal process, the NOIP will send the “Notice of grant of Protection Title” to the address registered on the Declaration.
At this time, the individual/organization must go to the National Office of Intellectual Property to pay the Protection Title Fee (updated in the Notice). In case the fee is overdue, the state agency will refuse to grant the protection title.