Currently, many businesses, organizations and individuals realize the importance of trademark registration and have registered very early. However, if you do not know the provisions of the law on trademark protection conditions, documents, procedures, ..., but do it yourself, the risk of the application being rejected is very large, due to many other reasons together. Therefore, there are many trademark owners who have chosen to authorize a professional organization as an industrial property representative to carry out trademark registration.
In this article, we will share with you about the roles, functions and advantages of authorizing CIS Law Firm as your trademark registration representative.
1. What is a trademark registration representative organization?
According to the provisions of Clause 1, Article 151 of the Law on Intellectual Property 2005 (amended and supplemented in 2009 and 2019):
| Article 151. Industrial property representation services
1. Industrial property representation services include:
a) Representing organizations and individuals before competent state agencies on the establishment and enforcement of industrial property rights;
b) Consulting on matters related to the procedure for establishing and enforcing industrial property rights;
c) Other services related to the procedure for establishing and enforcing industrial property rights.
Thus, a representative organization for trademark registration (also known as an industrial property representative organization) is an organization that advises, represents, and represents you on behalf of you to file a trademark registration, trademark modification, trademark, renewing the trademark, or responding to the notices of state agencies, handling trademark infringements, …
However, not all companies have the right to represent organizations and individuals to register trademarks, but only organizations that meet the conditions and are granted a license can perform registration services protect the trademark.
Article 154 of the Law on Intellectual Property 2005 (amended and supplemented in 2009 and 2019) has the following provisions:
|Article 154. Conditions for providing industrial property representation services
An organization that meets the following conditions may provide industrial property representation services in the name of an industrial property representation service organization:
1. Being an enterprise, cooperative, law-practicing organization, science and technology service organization established and operating in accordance with law, excluding foreign law-practicing organizations in Viet Nam;
2. Having the function of providing industrial property representation services as recorded in the Business Registration Certificate or Operation Registration Certificate (hereinafter referred to as the Business Registration Certificate);
3. The head of the organization or the person authorized by the head of the organization must satisfy the conditions for industrial property representation service practice prescribed in Clause 1, Article 155 of this Law.
In addition, Article 155 of the Law on Intellectual Property 2005 (amended and supplemented in 2009 and 2019) has the following provisions:
| Article 155. Conditions for industrial property representation service practice
1. Individuals are allowed to practice industrial property representation services if they satisfy the following conditions:
a) Possessing an industrial property representation service practice certificate;
b) Acting for an industrial property representation service organization.
2. Individuals who satisfy the following conditions shall be granted industrial property representation service practice certificates:
a) Being a Vietnamese citizen with full civil act capacity;
b) Permanently reside in Vietnam;
c) Having a university diploma;
d) Having directly worked in industrial property law for five consecutive years or more or directly appraised various types of industrial property registration applications at a national or international agency in charge of property rights; industrial property for five consecutive years or more or have graduated from an industrial property law training course recognized by a competent authority;
dd) Not being civil servants or public employees working at state agencies competent to establish and ensure the enforcement of industrial property rights;
e) Having passed the examination on industrial property representation held by a competent authority.
3. The Government shall specify training programs on industrial property law, examination of industrial property representation professions, and grant of industrial property representation service practice certificates.
Thus, trademark registration is a conditional business line. In order to provide this service, such organization must have a holder of an Industrial Property Representative Card (Industrial Property Representation Service Practice Certificate) and be recognized under the Decision of the National Office of Intellectual Property:
2. Why should a representative organization register a trademark?
Not all trademarks applying for registration are approved for protection, but such marks must fully meet the conditions and standards for protection as prescribed in order to be granted a Trademark Registration Certificate. trademark protection):
♦ The most rejected trademark cases are:
♦ Trademarks are descriptive words, images and drawings;
♦ The trademark is identical or similar to the registered trademark of another person;
Do not track the status of the application, so do not reply, do not pay the fee on time.
Therefore, it is better to minimize the risk of trademark rejection when registering or dealing with trademark-related issues, you should authorize a representative organization that is fully qualified to practice, experience and expertise to help you register your trademark.
In case the trademark owner is a foreign organization or individual who wants to register for trademark protection in Vietnam, according to Clause 2, Article 89 of the Law on Intellectual Property 2005 (amended and supplemented in 2009 and 2019):
|Article 89. Method of filing an application for registration of establishment of industrial property rights
2. Foreign individuals who do not permanently reside in Vietnam, and foreign organizations and individuals that do not have production or business establishments in Vietnam, shall submit applications for registration of establishment of industrial property rights through their lawful representatives in Vietnam.
This regulation is guided in detail at Point b, Clause 3.2, Article 3 of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 (amended in 2010, 2011, 2013 and 2016):
|3. Representative of the applicant
3.2 The following organizations and individuals may represent the applicant:
b) For organizations and individuals specified in Clause 2, Article 89 of the Intellectual Property Law: industrial property representation service organizations (as authorized by the application owner).
Thus, for foreign organizations and individuals that do not permanently reside in Vietnam, have no head office or establishment in Vietnam, but want to apply for trademark registration, they must go through an industrial property representative organization.
3. CIS Law Firm is a professional trademark registration organization
CIS Law Firm is an intellectual property representative organization with full licenses, certificates and functions to represent organizations and individuals before competent State agencies on the establishment, protection and enforcement of rights. for trademarks.
4. Trademark registration service at CIS Law Firm
– With more than 13 years of establishment and operation, CIS Law Firm has a team of lawyers and experts who are all well-trained and specialized in the field of Intellectual Property, possessing many professional qualifications in Property. intellectual property granted by the National Office of Intellectual Property of Vietnam (NOIP) and the World Intellectual Property Organization (WIPO).
– Before registration, all trademarks are evaluated by CIS Law Firm lawyers and experts before submitting the application for registration in order to save maximum time and costs for customers.
According to statistics of the National Office of Intellectual Property, only about 30-40% of the registration dossiers are approved for protection and granted a diploma, the remaining 60-70% are waiting for the applicant to explain the legal objection. due to the Department's refusal prior to the final refusal decision. In recent years, more than 90% of the results of trademark registration applications at CIS Law Firm have been successfully granted protection titles:
– CIS Law Firm has consulted for many domestic and foreign clients, from startups or even established businesses:
In addition to the careful preparation and professionalism of the dossier, one of the reasons contributing to the success of the registration of intellectual property in general and of trademarks in particular is the good relationship with the partners. Competent state agency has been built by a team of lawyers at CIS Law Firm over the past 13 years. CIS Law Firm always values and builds the necessary relationships to support clients' requests in the fastest, most convenient and most effective way.
For questions about trademark registration, please contact the information below:
INTELLECTUAL PROPERTY DEPARTMENT - CIS LAW FIRM