Experience in trademark registration in Vietnam

Currently, there are many businesses, organizations and individuals who have seen the importance of trademark registration and have registered very early, but they do not follow the process, procedures and security conditions. trademark protection, the instructions to the application for trademark protection were changed for various reasons.

In this article, we will share with you our experiences when registering for trademark protection in the most effective way.

MỤC LỤC BÀI VIẾT

1. What is the trademark?
2. What is trademark registration?
3. How to register for trademark protection?
4. What does a trademark registration file include?
5. Trademark registration experience
6. Trademark registration service of CIS Law Firm

1. What is the trademark?

According to wikipedia, a trademark is a name, term, design, image or other sign that distinguishes an organization or a product from its competitors in the eyes of consumers. Signs can be signs, logos, designs, slogans, etc. affixed to product packaging, product labels, or the product itself.

According to the American Marketing Association: A brand is a name, term, design, symbol, or any other feature that identifies one seller’s goods or service as distinct from those of other sellers.

According to World Intellectual Property Organization: Although the term “brand” is sometimes used as a synonym for a “trademark”, in commercial circles the term “brand” is frequently used in a much wider sense to refer to a combination of tangible and intangible elements, such as a trademark, design, logo and trade dress, and the concept, image and reputation which those elements transmit with respect to specified products and/or services. Some experts consider the goods or services themselves as a component of the brand.

First of all, a trademark is understood as a sign, according to which:

This sign can be a name, term, logo, symbol or any other sign.
This sign is used to identify a product or service or identify many products and services of the Enterprise or Company;
This sign helps to distinguish products and services of this Enterprise or Company from the products and services of other Enterprises or Companies.
This sign is often affixed to goods, signs, packages, transaction papers, websites, fanpages, business vehicles, etc.

So, the ultimate purpose of trademarking is differentiation, whereby businesses build trademarks so that consumers can recognize their products and services, and accordingly, keep them always using them. Its products and services.

So, you must maintain and protect that distinction, not to let consumers confuse with other trademarks. However, what if someone intentionally confuses consumers? What you should do to protect and protect your trademark, see the content below.

2. What is trademark registration?

You want to trademark the recognition and distinction of your products or services from others, that is, you want to monopolize the trademark, whereby no one can use the same or similar trademark with the trademark. Then you must register for trademark protection (also known as trademark protection).

According to regulations, trademark registration is the registration for exclusive protection of the use of that trademark in production and business activities, and prohibits others from using your trademark to name their trademark.

To register for trademark protection, you need to prepare documents as in Section 3 below and follow our process, which I guide in Sections 4 and 5 in this article.

If your trademark meets the protection conditions, you will be granted a protection title by a competent State agency, this paper is called a Certificate of Protection.

3. How to register for trademark protection?

In order for your trademark to be protected, you must carry out the procedure for trademark protection including the following steps:

Steps 1: Submit registration form;

Steps 2: The National Office of Intellectual Property examines the form (1 month from application submission);

Steps 3: The National Office of Intellectual Property publishes the application (Valid applications will be published within 2 months from the valid date);

Steps 4: The National Office of Intellectual Property appraises the content ( 09 months from the date of application publication);

Steps 5: The National Office of Intellectual Property grants protection titles/refuses to grant titles

trademark-registration-process — Trademark registration process

4. What does a trademark registration file include?

A trademark registration dossier includes:

Registration form (Download).
05 logo samples need to be registered (size 80 x 80 mm).
Copy of fee and fee payment voucher (in case of payment of fees and charges via postal service or directly into the account of the National Office of Intellectual Property).
Authorization letter (if applying through a representative).
Documents proving priority right, if priority is claimed.

5. Trademark registration experience

CIS Law Firm has just mentioned a full, detailed dossier and procedure for trademark protection registration, and looking at it, you can see that it is quite easy to do. If you follow it, you will definitely be able to submit your application.

However, if you can file, your Trademark will be protected? Not so. Your trademark is only protected when it meets a lot of conditions, accordingly, the Law Firm will share with you some experience of trademark protection registration.

5.1. Registered trademarks are descriptive

One of the common cases that cause the trademark application to be denied a protection title is when the trademark is only descriptive.

Regarding the description of the trademark, Clause 2, Article 74 of the Intellectual Property Law 2005 was amended and supplemented in 2009 and 2019 as follows:

“Article 74. Distinguishing Ability of Trademarks

2. A mark is considered indistinguishable if it is a sign in one of the following cases:

b) Conventional signs, symbols, drawings or common names of goods or services in any language that have been widely used, frequently, and known to many people;

c) Signs indicating time, place, production method, type, quantity, quality, nature, composition, use, value or other descriptive characteristics of goods or services, except where the sign has acquired distinctiveness through use prior to the filing of the trademark application;

d) Signs describing the legal form and business field of the business entity;”

To concretize the above content, Clauses 39.3 and 39.4, Article 39 of Circular No. 01/2007/TT-BKHCN amended in 2010, 2011, 2013 and 2016 also have provisions on the following text and figure signs to be considered as is not able to distinguish:

39. Substantive examination of a trademark registration application

39.3 Evaluation of the distinguishing ability of written and numerical signs (hereinafter referred to as “literary signs”) according to the provisions of Clause 2, Article 74 of the Intellectual Property Law:

e) A word or a set of words used in Vietnam as the common name of the related goods or services;

g) A word or a set of words containing the content describing the goods or services bearing the mark, such as a sign indicating the time, place, and geographical origin (except for cases where the mark is registered as a trademark). a mark certifying the geographical origin of goods or a collective mark), production method, type, quantity, quality, and nature (unless the registered mark is a mark certifying the quality of goods or services), composition, use, value of goods or services;

h) A meaningful word or set of words describing the legal form, business field of the trademark owner;

…

39.4 Evaluation of distinctiveness of signs in the form of drawings or images (hereinafter referred to as “visual signs”) according to the provisions of Clause 2, Article 74 of the Intellectual Property Law

d) Drawings and images depicting the goods or services bearing the mark; location, production method, geographical origin, type, quantity, quality, nature, composition, utility, value or other characteristics of the goods or services bearing the mark;”

So, when carrying out trademark registration procedures, if your trademark only includes a descriptive element, it will usually be refused protection by the registration agency.

Here are some examples to give you an idea:

– “Frog porridge shop” will be considered descriptive if you register for the restaurant service;

– “Natural Stone” will be considered descriptive if you register for the production of stone products, purchase and sale of stone products;

– “TV Entertainment” will be considered descriptive if you subscribe to the entertainment service.

5.2. Trademark identical/similar

Another common case in which you often get stuck when registering a trademark is: a trademark is refused to grant a protection title because it is identical or confusingly similar to another’s trademark that has been filed before.

Regarding the identical and similar trademarks, Clause 2, Article 74 of the Law on Intellectual Property 2005 which was amended and supplemented in 2009 and 2019 provides as follows:

“Article 74. Distinguishing Ability of Trademarks

2. A mark is considered indistinguishable if it is a sign in one of the following cases:

e) The sign that is not an associated mark is identical or confusingly similar to a registered mark for identical or similar goods or services on the basis of an application with a filing date or priority date; earlier in the case of an application for a priority right, including a trademark registration application filed under an international treaty to which the Socialist Republic of Vietnam is a contracting party;

h) A sign that is identical or confusingly similar to another person’s registered trademark for identical or similar goods or services for which the registration of such mark has been terminated for less than five years, unless The validity period is terminated for the reason that the mark is not used according to the provisions of Point d, Clause 1, Article 95 of this Law;”

Clauses 39.8 and 39.9, Article 39 of Circular No. 01/2007/TT-BKHCN amended in 2010, 2011, 2013 and 2016 specifically guide the above contents as follows:

39. Substantive examination of a trademark registration application

39.8 Evaluation of the confusing similarity of the sign requesting registration with another mark

a) In order to assess whether the sign requested for registration stated in the application is identical or confusingly similar to another mark (hereinafter referred to as the “control mark”), it is necessary to compare the structure of the same. structure, content, pronunciation (for word signs), meaning and form of expression of signs (for both text and pictorial signs), and at the same time, it is necessary to conduct comparison of goods and services. services bearing the mark with goods or services bearing the control mark as prescribed at this point.

b) A sign is identical with a control mark: a sign is considered to be identical with a control mark if such sign is identical to the control mark in terms of structure, content, meaning and form of expression.

c) A sign is considered to be confusingly similar to a control mark if:

(i) That sign is so close to the reference mark in structure and/and content or/and pronunciation and/and meaning or/and form of expression that it misleads consumers that the two the object is one, or the object is a variant of the other, or the two objects have the same origin;

(ii) The sign is only a transcription or translation of the meaning from the reference mark if the reference mark is a well-known mark.

39.9 Evaluation of similarity of goods and services

a) Two goods or two services are considered to be identical (of the same type) when those two goods or two services have the following characteristics:

(i) Having the same nature (composition, structure…) and the same function and purpose of use; or

(ii) Having nearly the same nature and the same functions and purposes of use;

b) Two goods or two services are considered similar when the two goods or two services have the following characteristics:

(i) Similar in nature; or

(ii) Similar in function, purpose of use; and

(iii) Marketed through the same commercial channel (distributed by the same method, sold together or side by side, in the same type of store…);

c) A good and a service are considered similar if they fall into one or more of the following cases:

(i) There is a relationship between them in nature (goods, services or raw materials, parts of goods or services are composed of other goods or services); or

(ii) There is a functional relationship between them (to fulfill the function of a good, one service must use the other, or they are often used together); or

(iii) There is a close relationship between them in terms of the method of implementation (this goods or service is the result of the use and exploitation of the other goods or services…).

Here are a few examples to get an idea of where trademark are confusingly similar:

Similar in pronunciation:

Similar in meaning:

Similar in form of expression:

5.3. Follow profile

When you apply for trademark registration, your application will go through the same steps as we have outlined in Section 3 of this article.

On average, the time it takes for the National Office of Intellectual Property to consider protecting your Trademark usually lasts quite a long time, about 18-24 months. And now, the notices of results sent to you by the NOIP are mainly sent by post and in case the application has problems, there is a fixed time limit for reply (2 months for the period of time). formal appraisal, 3 months for the period of substantive examination or payment of the license fee). If you do not receive the notice or by the time limit set, you do not respond to the notice of the National Office of Intellectual Property, the application for trademark registration will be refused.

There are still some very special exceptions, for example: objective obstacles or errors that are not your fault, such as due to the covid epidemic, so you have to isolate social distance, not reply on time. notices… Of course, you need to have sufficient evidence to substantiate and present for review by the registry.

6. Trademark registration service of CIS Law Firm

So, in order for your Trademark to be protected, it is necessary to see if your trademark name fully meets the above conditions. However, this is really difficult, because you must have specialized knowledge and skills to be able to do it. Therefore, we recommend that you find an experienced Industrial Property Representative for their assessment.

In addition, when you authorize a unit that is an Industrial Property Representative organization such as a CIS Law Firm, the Industrial Property Representative is considered your legal representative and is allowed to work directly with the agency. registration authority when there are any problems with the application.

International Copyright Law Firm (CIS Law Firm) is an Industrial Property Representative Organization certified by the National Office of Intellectual Property of Vietnam. Our lawyers and experts have received intensive training in Intellectual Property from the National Office of Intellectual Property and the World Intellectual Property Organization (WIPO), We have the capacity and experience to support friend:

Search information related to the trademark;
Advice on the possibility of registration and use of Trademarks;
Consulting on completing documents and implementing trademark protection registration procedures;
Carrying out procedures for objections, complaints and invalidation of trademark registration certificates;
Renewal of validity of the certificate of registration of trademark protection;
Record changes to the trademark registration certificate;
Consultancy on registration of transfer of intellectual property rights for Trademarks;
Manage the Trademark registration dossier until the final result is available, proactively update the status of the application and promptly respond to the Registrar’s comments.