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Vietnam trademark registration: steps and first-to-file
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Vietnam trademark registration works on a first-to-file basis. The business that files first for a mark usually gets the right to it. Using a name for years does not decide the matter. A filing date does. If you plan to sell in Vietnam, file early.
This guide explains the rule, the steps and the time limits in plain terms. It reflects the Law on Intellectual Property of 2005, as amended in 2009. It is general information, not legal advice.
What first-to-file means
Article 90 of the law covers two businesses that file for the same mark, or for marks so alike that people could confuse them, for the same kind of goods or services. In that case, the certificate goes to the valid application with the earliest priority date or filing date.
The rule has a plain effect. A foreign company that has traded under a name for years can still lose it in Vietnam if a local party files first. The law gives the right to the earliest valid filer, so waiting is the main risk.
The law also says who may register a mark. Article 87 lets organizations and individuals register marks for goods they produce or services they provide.
Source: Law on Intellectual Property, consolidated text No. 19/VBHN-VPQH of 18 December 2013 (Article 90), English translation published on LuatVietnam.
What can be registered
Article 72 sets two basic conditions. The mark must be a visible sign. That can be words, letters, drawings, images or a mix of these, in one or more colors. It must also be able to tell your goods or services apart from those of others.
Article 73 lists signs that cannot be protected. These include signs that look like national flags or emblems, or like the names or images of national leaders and heroes. They also include signs that mislead buyers about the origin or quality of goods.
Article 74 deals with distinctiveness. A mark needs elements that are easy to notice and remember. Simple shapes, common names and signs that only describe the goods are not distinctive. A mark that is confusingly similar to an earlier registered mark, or to a widely known mark, also fails.
Before you file, search for earlier marks in the same field. A close match to an earlier mark is a common reason for refusal.
Source: Law on Intellectual Property, consolidated text No. 19/VBHN-VPQH of 18 December 2013 (Articles 72 to 74), English translation published on LuatVietnam.
How to file
You file with the state intellectual property office. The application is in Vietnamese. It must include a power of attorney if an agent files for you, proof of your right to file, proof of any priority claim and the fee receipts. Article 100 lists these items.
Article 89 sets a rule for foreign applicants. A foreign individual who does not live in Vietnam, or a foreign company with no business site there, must file through a lawful representative in Vietnam. Local businesses may file on their own or use a representative.
A simple checklist helps:
- Search for earlier marks that look or sound like yours.
- Choose the goods and services you want covered.
- Prepare the mark, the application and the power of attorney.
- File, pay the fees and keep the receipt that shows your filing date.
Your filing date matters most, because it decides who is first.
Source: Law on Intellectual Property, consolidated text No. 19/VBHN-VPQH of 18 December 2013 (Articles 89 and 100), English translation published on LuatVietnam.
What happens after you file
The law sets time limits for each stage. Article 119 gives one month from the filing date to check that the application is in proper form. Article 110 says a marks application is published within two months after it is found valid.
Article 112 lets any third party send written opinions to the office after publication, until a decision is made. This is how outside parties can raise a problem with your mark.
Then comes the content review. Article 119 allows nine months from publication for a mark. If the office finds the mark meets the rules, it grants the certificate. If not, it refuses. A refusal is not always final, because a re-examination takes two thirds of the first time limit.
Add these limits up and a straight path takes well over a year. Delays happen, so plan for more time than the law states.
Source: Law on Intellectual Property, consolidated text No. 19/VBHN-VPQH of 18 December 2013 (Articles 110, 112, 114 and 119), English translation published on LuatVietnam.
How long protection lasts
Article 93 says a mark registration lasts for 10 years from the filing date. It can be renewed for further terms of 10 years each, with no stated limit on how many times. Article 94 says the owner must pay an extension fee to renew, and the government sets the fee rates and procedures.
A registered owner can stop others from using the mark without permission. Article 129 treats the use of an identical sign on identical goods as infringement. It also covers a similar sign on similar goods when buyers are likely to be confused.
Registration also asks for use. Article 95 says a mark can lose its validity if the owner or a licensee has not used it, without a good reason, for five years in a row before someone asks to end it. Plan to use your mark in Vietnam.
Source: Law on Intellectual Property, consolidated text No. 19/VBHN-VPQH of 18 December 2013 (Articles 93 to 95 and 129), English translation published on LuatVietnam.
Practical steps to protect a brand
File before you launch, hire staff or sign a distributor. Do not wait for sales to start. Ask a local representative to run a search and to check the classes of goods and services for your plans.
Keep the filing receipt and the date. Use the mark in business so it is not open to a non-use claim. Watch the published marks of others, because Article 112 gives you a voice before a decision is made.
First-to-file rewards the quick. A small early step costs far less than a fight over a brand name later.