MARK

I. CONCEPT

Mark means any sign used to distinguish goods or services of different organizations or individuals.

  1. Types of marks
  • Collective mark means a mark used to distinguish goods or services of members of an organization which is the owner of such mark from marks of non-members of such organization.
  • Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such mark.
  • Integrated marks means identical or similar marks registered by the same entity and intended for use on products or services which are of the same, similar or interrelated type.
  • Well known mark means a mark widely known by consumers throughout the territory of Vietnam.
  1. Right to register marks
  • Organizations and individuals may register marks to be used for goods they produce or services they provide.
  • Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.
  • Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or signs indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.
  • Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or signs indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.
  • Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions:

           – This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners;

           – The use of this mark causes no confusion to consumers as to the origin of goods or services.

  • Persons having the registration right the above provisions, including those having filed registration applications, may assign the registration right to other organizations or individuals in the form of written contracts, bequeathal or inheritance under law, provided that the assigned organizations or individuals satisfy the relevant conditions on the persons having the registration right.
  • For a mark protected in a country being a contracting party to a treaty which prohibits the representative or agent of a mark owner to register such mark and to which the Socialist Republic of Vietnam is also a contracting party, this representative or agent is not permitted to register the mark unless it is so agreed by the mark owner, unless a justifiable reason is available.”
  1. Trademark holders

Trademark use under a trademark use agreement by a transferee is also considered an act of using the holder’s trademark. In case the trademark is not used continuously for five years or more, the Trademark Certificate of Registration shall be invalidated in accordance with Article 95 of this Law.”

  1. Use of a mark

Means the performance of the following acts:

  • Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;
  • Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;
  • Importing goods or services bearing the protected mark.

 II. CONDITIONS FOR PROTECTION OF MARKS

  1. A mark shall be eligible for protection when it satisfies the following conditions
  • It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours.
  • It is capable of distinguishing goods or services of the mark owner from those of other subjects.
  1. Signs ineligible for protection as marks
  • Signs identical with or confusingly similar to national flags or national emblems.
  • Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
  • Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
  • Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
  • Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

 

III. REGISTRATION PROCEDURE MARKS

  1. Composition profile

In order for a marks protection registration application to be accepted by the NOIP, an organization or individual must submit at least the following documents:

  • Declaration for registration according to form No. 04-NH Appendix A of Circular No. 01/2007/TT-BKHCN
  • Samples of the mark (05 samples of size 80 x 80 mm) a list of goods or services bearing the mark
  • Fee and charge receipts.
  • Power of attorney (is filed through a representative);
  • Documents certifying the lawful right of registration (in case the applicant enjoys the right to file from another person)
  • Documents evidencing the right of priority (if the patent application has a claim for priority right).
  1. Processing marks registration applications

From the date of receipt by National Office of Intellectual Property, marks registration applications are considered in the following order:

  • Formality examination of applications
  • Publication of valid applications
  • Substantive (ex-officio) examination of applications
  • Grant of or refusal to grant protection titles
  • Official registration and publication of decisions on the grant of protection titles.