Trademarks

We provide clients of all sizes with a full range of trademark services in Vietnam, including:

• General counseling;
• Conducting searches and opinions on the registrability and use of trademarks
• Preparation, filling, prosecution of trademark applications;
• Preparation, filing and pursuing applications for recognition of well-known trademarks;
• Opposition, appeal, cancellation, invalidation proceedings;
• Providing advices on and proceeding with the recordal of changes concerning pending trademark applications and granted certificates of trademark registrations;
• Opinions on trademark licensing/assignment;
• Negotiation, drafting and registration of trademark licensing/assignment agreements;
• Investigations and opinions on trademark infringements and disputes;
• Resolution of trademark infringements and disputes through arbitration and mediation;
• Dealing with trademark infringements through administrative remedies at the state IP enforcement competent administrative authorities (inspectorate, police agencies, market management agencies, custom offices, people’s committees);
• Civil and criminal litigation at courts against trademark infringements;
• Watching services;
• Renewal services;
• Advising o­n the use of registered trademarks;
• Providing opinions on and proceeding with the registration and maintenance of domain names and web hosting.

Our trademark team includes registered trademark attorneys, trademark agents and practitioners, who have degrees and advanced degrees in science, technology, law, economic, etc. Some of them worked for the leading IP law firms in Vietnam and have more than 25 years experience and expertise in trademark prosecution, enforcement and litigation before joining the firm.

We are located in the heart of Hanoi capital, about 6km away from the NOIP. This enables us to work and interview directly with trademark examiners and timely meets our client’s request.

We also have a good relationship and effective cooperation with state IP enforcement competent authorities to protect and enforce client’s IP rights in Vietnam.

All of the above advantages, with our computerized IP management system, are enable us to work in a wide range of technical fields and provide professional services to clients ranging from largest multinational to start-up companies in an efficient, reliable, responsive, and cost-effective manner.

For more information concerning trademark protection in Vietnam, please click to the desired section below or contact us.

Types of marks

• Trademarks, service marks, collective marks, certification marks, associated marks, all referred as “Trademarks”

Conditions for trademark protection

• To be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colors;
• To be capable of distinguishing goods or services of the mark owner from those of others.

Filling principle

• The “first to file” principle is applied for trademark protection in Vietnam;
• However, the “first to file” principle shall not apply to cases of well-known marks under the Paris Convention or those which have been widely used and recognized. In such cases, the priority will be given to the person who can prove that his trademark has been well-known or been widely used and recognized, without subject to the “first to file” principle.

Well-known marks

• Well-known marks are protected in Vietnam without subject to registration, under the Paris Convention of which Vietnam is a member. The following criteria shall be taken into account when considering whether or not a mark is well known:i) The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising;

ii) The territorial area in which goods or services bearing the mark are circulated;
iii) Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;
iv) Duration of continuous use of the mark;
v) Wide reputation of goods or services bearing the mark;
vi) Number of countries protecting the mark;
vii) Number of countries recognizing the mark as a well known mark;
viii) Assignment price, licensing price, or investment capital contribution value of the mark.

Priority

• Priority under the Paris Convention is applied in Vietnam, based on an earlier application for the same object filed in a foreign PC member country, or display of the same object in an officially recognized international exhibition held in Vietnam or a foreign PC member country;
• Priority under a bilateral agreement or the principle of reciprocity as to priority can also be applied.

Application and filing

• Each application can be filed for one trademark only. However, multi-class applications are possible in Vietnam, accordingly up to 45 classes of goods and services can be claimed under one application;
• The goods and/or services under the application must be classified according to the International Classification of Goods and Services under the Nice Agreement (currently the nice edition is applicable);
• For trademark applications claiming priority right under Paris Convention, the time limit for filing in Vietnam is 6 months from the filing date of the first filed application, or from the date the object was displayed at an exhibition;
• Trademark applications must be filed with the NOIP in Hanoi. Upon filling, the NOIP will return a Declaration for Trademark Application filed by the attorney, in which the filing number and filing date are clearly determined with the NOIP seal and signature;
• All applications of foreign applicants who are not resident or have not legal representative or real industrial/commercial establishment in Vietnam must be submitted through a licensed local IP agency like Tri Viet & Associates.

Protection term

• A Certificate of Trademark Registration shall be effective from the granting date and last for 10 years from the filing date, and can be renewed for indefinitely for each consecutive 10-year term.

Formality Examination

• All trademark applications will be subject to formality examination, which will take place within 01 months from the date at which all the required documents are completely filed (the date may be the filing date or the date of completely supplementing documents);
• During the formality examination stage, amendments or supplements to the filed application can be made, provided that they must not expand the scope (volume) of protection or change the nature of the subject;
• If the formality requirements are met, an official Notification of Acceptance will be issued by NOIP to applicant, in which official filing date, official filing number, name and address of applicant, priority date … are clearly determined and certified. To the contrary, the NOIP will reject the application with a Notification of Refusal of Acceptance or, where appropriate, notify and request the applicant to rectify the deficiencies.

Publication of accepted application

• All trademark applications which have been accepted as to formality by NOIP will be published in Official IP Gazette, Volume A.

Substantive examination

• All trademark applications which have been accepted as to formality will be subject to substantive examination;
• During the substantive examination stage, amendments or additions can be made to the filed application, provided that they must not change the nature of the trademark, or extend the scope (volume) of protection claimed;
• Time limit for substantive examination is 9 months from the date of acceptance of the application.

Grant and publication of certificate

• Upon expiry of the substantive examination stage, if the trademark is found not to be registrable, a Notification of Substantive Examination Result will be issued by NOIP to the applicant for amendments or corrections. Time limit for responding to the NOIP action is within 2 months from the date of issue, failure to do so will result in officially rejection of the application with a Notification of Refusal of Granting Certificate issued by NOIP;
• If the trademark is found to be registrable, a Certificate of Trademark Registration will be granted under a Decision for Granting Certificate of Trademark Registration;
• All granted Certificate of Trademark Registration will be published in the IP Gazette, Volume B.

Renewal

• To renew the validity of a certificate, the trademark owner must apply for renewal and pay the renewal fee within 6 months before the expiry of the preceding validity year;
• Renewal request may be filed late within a 6-month grace period, subject to a fine of 10 percent of the renewal fee for each month overdue.

For registration of a trademark

+ Information

• Full name, address and nationality of the applicant; 
• Description of the trademark: meanings, colors claimed and English translation and/or transliteration into Roman letters if the trademark comprises words not in English;
• List of goods/services to be covered by the trademark and class(es) of the respective goods/services according to the International Classification (if known);
• Paris Convention Priority data (if any): country, application number and filing date of the original foreign application from which priority is claimed, or
• Place where the trademark was exhibited, the name of the exhibition, and the date on which the trademark was first exhibited, for claiming exhibition priority (if any)

+ Documents

• Fifteen (15) specimens of the trademark, with a size not larger than 80mm x 80mm and not smaller than 15mm x 15mm;
• A Power of Attorney from the applicant (required at filing, a fax copy is acceptable provided that the original is submitted within 01 month from the filing date). Notarization and/or Legalization are/is required. General Power of Attorney is acceptable for filing various trademarks in the name of the same applicant;
• A certified copy of the document attesting to the legal existence of the entity, e.g. the Business Certificate, or the Certificate of Incorporation (required at filing, a fax copy is acceptable provided that the original is submitted within 01 month from the filing date); 
• A certified copy of the earlier application plus the sworn English translation thereof (if the application is not in English), or of the Exhibition Certificate (applicable where the Paris Convention Priority is claimed – required within 01 month from the filing date); 
• A certified copy of the regulations concerning the use of the mark if the mark is a collective one (required at filing); 
• Documents evidencing the origin or the prize(s) awarded, if the trademark contains such ones (required within 01 month from the filing date).

For renewal of a trademark registration

• A Power of Attorney from the Owner (required at filing). Notarization and/or Legalization are/is required; 
• The original Certificate of Trademark Registration (required at filing).

For recognition of a well known mark

• A Power of Attorney from the Applicant. (required at filing, a fax copy is acceptable at filing provided that the original is submitted within 01 month from the filing date). Notarization and/or Legalization are/is required; 
• A certified copy of the Business Licence (required at filing); 
• 12 samples of the mark to be recognized as being well-known (required at filing); 
• Documents and information proving that the mark is well-known.  They should include, but not limited to, those which clearly show:

i) The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.
ii) The territorial area in which goods or services bearing the mark are circulated.
iii) Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.
iv) Duration of continuous use of the mark.
v) Wide reputation of goods or services bearing the mark.
vi) Number of countries protecting the mark.
vii) Number of countries recognizing the mark as a well known mark.
viii) Assignment price, licensing price, or investment capital contribution value of the mark.

For recordal of an Assignment Agreement

+ Minimum-required contents of an Assignment Agreement

• The identity of the Assignor and Assignee (full name and address);
• Details of the IP objects to be assigned (information on granted trademark registration);
• Price of the assignment and term of payment;
• Rights and obligations of each party;
• Conditions for amendment, termination and invalidation of the Agreement;
• Method for settlement of disputes;
• Date and place of signing;
• Signatures of the parties or of their authorized representatives with the full names and position of the signatories. These signatures must be duly notarized.

+ Documents required for recordal of an Assignment Agreement

• A Power of Attorney from the Assignee and Assignor (required at filing, a fax copy is acceptable provided that the original is submitted shortly thereafter). Notarization and/or Legalization are/is required;
• The original Trademark Registration Certificate;
• A notarized copy of Business Licence/Investment Licence (if the Assignee is a Vietnamese entity);
• Two original or certified copies of Assignment Agreement duly executed by both parties with the signatures verified by Notary Public, including appendix or appendices (if any) and their Vietnamese translations;

+ Notes

• The Assignment Agreement must be recorded with the National Office of Industrial Property of Vietnam (NOIP) to be legally effective and enforceable in Vietnam. 
• The request for recordal of the Assignment Agreement should be submitted within 60 days from the signing date.
• For those agreements to which one party is a Vietnamese entity which is State-owned or State-funded, the agreements shall be subject to approval by the Ministry of Science and Technology (MoST) before being recorded by the NOIP. 
• If the Agreement is executed in English only, the Vietnamese translation of the Agreement is required. The Vietnamese translation must be certified by a Notary Public in Vietnam. Tri Viet & Associates can provide translation service.
• The Assignment Agreement must be affixed with Corporate Seals or certified by Notary Public.
• A standard form of Assignment Agreement containing minimum-required provisions will be provided upon request.

For recordal of a License Agreement

+ Minimum-required contents of a License Agreement

• The identity of the Licensor and Licensee (full name and address);
• Details of the IP objects to be assigned (information on granted trademark registration);
• Scope of the License including: type of license (exclusive or non-exclusive); object(s) of license (Certificate of Trademark Registration); territory of license (Vietnamese territory or part thereof); term of license (within the term of validity of the corresponding Certificate of Trademark Registration). In case of a sub-license, the scope of the sub-license must fall within the scope of the corresponding exclusive license.
• Price of the License and term of payment;
• Rights and obligations of each party;
• Conditions for amendment, termination and invalidation of the Agreement;
• Method for settlement of disputes;
• Date and place of signing;
• Signatures of the parties or of their authorized representatives with the full names and position of the signatories. These signatures must be duly notarized.

+ Documents required for recordal of an License Agreement

• A Power of Attorney from the Licensor and Licensee (required at filing, a fax copy is acceptable provided that the original is submitted shortly thereafter). Notarization and/or Legalization are/is required;
• A certified copy of the Trademark Registration Certificate;
• A copy of the Certificate of Recordal of the corresponding exclusive Agreement (if the Agreement to be approved is a sub-agreement);
• A notarized copy of Business Licence/Investment Licence of the Licensee (if the Licensee is a Vietnamese entity);
• Two original or certified copies of License Agreement duly executed by both parties with the signatures verified by Notary Public, including appendix or appendices (if any) and their Vietnamese translations;

+ Notes

• The License Agreement must be recorded with the National Office of Industrial Property of Vietnam (NOIP) to be legally effective and enforceable in Vietnam. 
• The request for recordal of the License Agreement should be submitted within 60 days from the signing date.
• For those agreements to which one party is a Vietnamese entity which is State-owned or State-funded, the agreements shall be subject to approval by the Ministry of Science and Technology (MoST) before being recorded by the NOIP. 
• If the Agreement is executed in English only, the Vietnamese translation of the Agreement is required. The Vietnamese translation must be certified by a Notary Public in Vietnam. Tri Viet & Associates can provide translation service.
• The License Agreement must be affixed with Corporate Seals or certified by Notary Public.
• A standard form of License Agreement containing minimum-required provisions will be provided upon request.

For recordal of chage of name and/or address

• A Power of Attorney from the Certificate Owner (required at filing). Notarization and/or Legalization are/is required;
• A notarized Declaration on Change of Name and/or Address by the Owner, or a certified copy of Official Record on Change of Name and/or Address (required at filing);
• Original Certificate of Trademark Registration (required at filing).

• Australian Trade Marks Databases — Find information concerning registered marks, and pending trademark applications in Australia, courtesy of IP Australia, the Australian Intellectual Property Office.
• Brazilian Trademark Database — A searchable database of registered and pending trademarks in Brazil.
• Canadian Trade-Marks Database — Search the textual version of the Canadian trademark database FREE, courtesy of the Canadian Intellectual Property Office.
• Chinese Trademark Database — A searchable online database featuring 1.8 million Chinese trademark records, courtesy of the China TradeMark Office [Note: this is a fee-based service].
• European Community Trademark Database — A searchable database of registered Community Trade Marks, and pending applications for CTM registration.
• French Trademark Database — A searchable database (in French), of trademarks registered or applied for in France, courtesy of the Institut National De La Propriete Industrielle.
• German Trademark Database — A fee-based trademark database containing 770,000 German trademark records, from 1894 to the present.
• Hong Kong Trade Mark Database — A searchable database of Hong Kong trademark registrations and pending applications.
• Japanese Trademark Database — Conduct trademark searches within Japan’s trademark database at this site, sponored by the Japanese Patent Office
• New Zealand — Intellectual Property Office of New Zealand (IPONZ) and New Zealand Trademark Database — New Zealand trademark (and patent) information — including free trademark searches in the IPONZ database.
• Russian Trademark Database — A fee-based, subscription-only database of Russian marks, from the Federal Institute of Industrial Property. One may obtain limited, free access by typing in “guest” as both the user name and password. However, the trademark database is available only in Russian (patent databases are available in English).
• South Korea Trademark Database — A searchable database of marks registered and pending in South Korea, from KIPRIS, the Korea Industrial Property Rights Information Service.
• Spanish Trademark Database — A searchable, Spanish-language database of registered and pending marks in Spain, from the Ministry of Industry, Tourism, and Commerce.
• Swedish Trademark Database — A fee-based, searchable database, with information concerning marks registered in Sweden, courtesy of PRV.
• Swiss Trademark Database — A searchable database of marks registered in Switzerland, courtesy of The Swiss Federal Institute of Intellectual Property.
• United Kingdom Trademark Database — Obtain status information for pending trademark applications, and details regarding registered marks, at this site, sponsored by the United Kingdom Patent Office.
• Vietnamese Trademark Database — A searchable database of registered and pending trademarks in Vietnam, courtesy of the National Office of Industrial Property.