When a foreign investor wishes to register a trademark in a different country, there will be a few things that they might need to notice. In fact, the same situation goes with the protection of foreign trademarks in Vietnam. Therefore, in this article, LSX will give you a brief on the issue.
- 2005 Intellectual Property Law
Definition of trademarks
Accordingly, trademarks are signs to distinguish goods, services of different organizations, individuals. In fact, signs used as trademarks must be visible signs in the form of letters, words, images, drawings, or a combination of such elements represented by one or more colors.
Conditions for registration of foreign trademarks
Hence the regulations of Intellectual Property Law, trademarks need to meet the following conditions:
- A visible sign in the form of letters, words, drawings, images, including holograms or a combination of such elements, represented by one or more colors
- Having the ability to distinguish goods and services of the mark owner from those of other subjects.
Thus, these conditions also go with foreign trademarks; in case foreign investors may want to protect them legally.
Non-protecable cases of trademarks
The following signs are non-protectable as trademarks:
- Signs identical or confusingly similar to national flags and emblems of other countries.
- Signs identical or confusingly similar to symbols, flags, badges, abbreviations and full names of state agencies, political organizations, socio-political organizations; or major organizations socio-professional management, social organizations, socio-professional organizations of Vietnam and international organizations; without the permission of such agency or organization.
- Signs identical or confusingly similar to real names, nicknames, pseudonyms, images of leaders, national heroes, celebrities of Vietnam or abroad.
- Signs identical or confusingly similar to the certification mark, inspection mark, or warranty mark of an international organization that such organization has requested must not be used; unless this organization register the mark as certification marks.
- Signs that mislead, confuse or deceive consumers about the origin, features, uses, quality, value or other characteristics of goods or services.
Dossier for registration of a collective mark, a certification mark
Basically, a dossier for registration, in this case, will contain the same document as a normal trademark. Yet, they will need to prepare for the following application:
- Regulations on the use of collective marks/certification marks.
- An explanation of the characteristic nature and quality of the product bearing the mark (in case the registered mark is a collective mark on products with particular characteristics or is a certification mark); quality of the product or as a mark of geographical origin).
- A map identifying the territory (in case the registered mark is a mark certifying the geographical origin of the product).
Process and time limit for application examination of trademarks
Firstly, the trademarks will go through a formal examination phase. Indeed, the formal examination is the evaluation of the validity of an application according to the requirements of the form, the object of exclusion, the right to file an application, etc.; in order to conclude that the application is valid or invalid. This stage will take around 01 month from the filing date.
Publication of valid applications
Secondly, a trademark registration application accepted as valid is published in the Official Gazette of SHCN within 2 months; following the date of acceptance as a valid application. The content of the announcement of the trademark application is information related to the valid application; stated in the notice of acceptance of the valid application, the mark sample, and the attached list of goods and services.
Thirdly, a trademark registration application that is valid is subject to substantive examination to assess the possibility of granting a trademark registration certificate; stated in the application under the protection conditions. In fact, the time limit for substantive examination of a trademark application is 9 months; from the date of publication of the application.
A collective mark is a mark used to distinguish goods and services of members of the organization that is the owner of the mark from those of organizations or individuals who are not members of such organization
Certification mark means a mark that the owner of the mark allows another organization or individual to use on the goods and services of that organization or individual to certify the characteristics of origin and raw materials; the manner in which the goods are manufactured, the manner in which the service is provided, the quality, accuracy, safety or other characteristics of the goods or services bearing the mark.
The time for substantive examination is 8 months from the date of publication of the application.