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Trademarks are critical, intangible assets in the business world, intertwined with the selling of goods and services. They’re not just tools for trade; they’re the essence of a brand’s identity, setting businesses apart in a competitive market. To fully harness trademark rights, including transferring, franchising, or enforcing protection, a company must first traverse the legal minefield of registration. This process, overseen by specialized agencies, culminates in the issuance of a Trademark Registration Certificate. In this article, we will look at fundamental trademark principles. In addition, we will provide practical advice for businesses on the path to registering and protecting their trademarks.
1. Exploring the Spectrum of Trademarks
At its core, a trademark is a unique identifier, distinguishing the products or services of various entities. This broad umbrella includes several types, such as:
- Trademarks for goods and services: the classic symbols of trade.
- Collective marks: representing a group or association.
- Certification marks: signifying adherence to specific standards.
- Well-known trademarks: those with widespread recognition.
Vietnam’s entry into the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and the Vietnam-EU Free Trade Agreement (EVFTA) prompted a significant overhaul of its intellectual property laws. This led to the Vietnamese National Assembly enacting an amended Intellectual Property Law on June 16, 2022. This new legislation not only refines the definitions and procedures for trademark registration but also introduces sound marks into the fold. While comprehensive criteria for these sound marks are yet awaited, their inclusion is a big step forward.
2. Eligibility for Trademark Application Filing
In Vietnam, the right to file a trademark application is remarkably inclusive. Any individual or legal entity, irrespective of nationality, can apply, either directly or through a designated representative. Interestingly, trademark applications can also be filed in a collaborative effort by two or more applicants. This method leads to shared ownership of the registered trademark, which is advantageous for partnerships or joint companies.
3. Key Insights and Legal Nuances in Trademark Registration
a) The process to exclusive trademark protection concludes with the Intellectual Property Office of Vietnam issuing a “green card” or its electronic recording.
It’s a common misconception that trademark protection begins either at the application submission, upon notification of a valid application, or after receiving an intent-to-grant notice. In reality, legal protection and the right to enforce trademark rights kick in only after the trademark is officially registered and a Certificate of Trademark Registration is granted.
This certificate serves as a legal foundation, granting the owner the permission to administer, transfer, assign, and defend their trademark rights. The move from applicant to rightful owner is a watershed moment in the trademark journey. Notably, under Vietnam’s updated intellectual property laws, the shift towards electronic trademark registration certificates is evident. Physical copies are now secondary, provided only upon specific request at the time of application.
b) To qualify for protection, a trademark in Vietnam must satisfy two key legal criteria.
Firstly, it should be a visible sign such as letters, words, drawings, images, three-dimensional shapes, or a combination thereof, presented in color(s) or as a sound mark that can be graphically represented.
Secondly, the trademark must be distinctly capable of differentiating the owner’s goods or services from others. This distinctiveness can stem from unique elements or a combination that forms a recognizable whole. Moreover, the trademark must not fall under the scenarios outlined in Article 73 (ineligible for protection) and Article 74.2 (lack of distinctiveness) of the Intellectual Property Law.
c) A common misconception is that trademark registration in Vietnam guarantees global protection.
In reality, trademark rights are confined to the territory of the issuing Certificate of Trademark Registration. To secure rights in other markets, entities must file separate applications in each territory.
On the other hand, Vietnam’s participation in the Madrid system eases this process. This international system is a game-changer for businesses aiming to safeguard their trademarks across multiple countries. By filing application through Marid system in Vietnam, they can extend protection to numerous other member countries under these treaties. This streamlined approach is not only cost-effective but also a significant time-saver, simplifying the complex process of international trademark registration.
d) Vietnam operates on the “First to File” principle for trademarks.
This essentially means that the party who files the first trademark application has the upper hand. If multiple entities file for identical or confusingly similar trademarks for the same goods or services, the certificate is given to the application with the earliest filing or priority date, assuming all criteria are met. In cases when numerous applications have the same priority or earliest filing date, a protective title is issued only if all applicants agree. If no agreement is reached, none of the applications will be protected. As a result, timely filing is critical for securing your trademark and avoiding legal issues when presenting your goods and services to the market.
e) A common misconception is that a trademark registration certificate grants blanket protection.
In practice, the certificate’s protection is limited to the precise items or services stated on it. When registering, it is critical to precisely define the relevant goods or services, which must be classified according to the Nice Agreement’s international categorization. The Intellectual Property Office of Vietnam is using version 12-2024 of this classification as of January 1, 2024. Post-registration expansion of goods or services categories is conceivable, but requires careful study. It should be noted that failure to utilize the trademark for the registered categories for a continuous five-year period may result in calls for the trademark’s validity to be revoked for those unused categories.
f) It’s advisable to engage an intellectual property representative
People frequently fail to monitor the status of their trademark application. This can result in missed notifications by the Intellectual Property Office of Vietnam, resulting in missed opportunities to respond or act correctly within deadlines. It is advisable to hire an intellectual property representative to avoid such issues. They can efficiently manage and monitor your application, assuring prompt and suitable replies to judgments or notices by the Intellectual Property Office of Vietnam about the trademark application.
4. Trademark Registration Process in Vietnam
In Vietnam, the trademark registration journey, overseen by the Intellectual Property Office, unfolds in a series of carefully structured steps:
- Application Submission: Applicants or their appointed industrial property representatives must submit their trademark registration applications to the Intellectual Property Office.
- Formal Examination: Within one month of filing, the Intellectual Property Office conducts a formal examination of the application and decides on its validity.
- Application Publication: The Intellectual Property Office publishes the application within two months following its deemed valid acceptance.
- Content Assessment: This phase, lasting no more than nine months from the publication date, involves a thorough assessment of the application’s content. Following this, the Intellectual Property Office communicates its decision to either grant or refuse protection for the trademark.
However, the real-world timeline for evaluating a trademark application can extend far beyond these prescribed limits. In practice, it’s not uncommon for this process to span 2-3 years, depending on the complexity of the trademark, the specifics of each case, and any third-party objections or complaints during the evaluation period. This extended timeframe highlights the importance of patience and thorough preparation in the trademark registration process.
5. Navigating Trademark Status Checks and Strategic Brand Management
In the fast-paced world of strategic brand management, staying informed about the status of a trademark is crucial. Utilizing the right resources can provide a wealth of benefits for any business. Key platforms to explore includes Vietnam’s Digital Library on Industrial Property, World Intellectual Property Organization (WIPO) Trademark Lookup, and Vietnam Industrial Property Official Gazette.
Leveraging these resources can greatly enhance a business’s operational strategy. Potential advantages include:
- Evaluating Trademark Protectability: Assess the feasibility of a trademark before applying for registration.
- Avoiding Infringement: Steer clear of trademarks already protected by others.
- Challenging Competing Trademarks: Object to applications that infringe upon your marks or are strikingly similar.
- Monitoring Business Partners and Competitors: Stay updated on the trademark status of partners and keep an eye on potential or existing competitors.
- Managing Trademark Transfers and Assignments: Identify active trademarks suitable for transfer or assignment.
6. Conclusion
Trademarks are essential in building trust and a positive image among customers, clients, and partners. They are more than just symbols; they are strategic instruments that enhance a brand’s reputation and distinctiveness, allowing it to stand out in a crowded marketplace. Filing for trademark protection on time and properly from the start is more than a formality; it’s a wise move to gain a competitive advantage not just in Vietnam but also globally.
