FAQs

Vietnam is a first-to-file jurisdiction. In other words, that means that the first party to file a trade mark application in Vietnam will be the one to whom the National Office of Intellectual Property (NOIP) will issue a trade mark registration. Thus, unlike some countries (called “first-to-use” jurisdiction) where trade mark rights can arise from simply using the trademark, trademark rights in Vietnam arise only upon registration with Vietnam’s National Office of Intellectual Property (NOIP).

For this reason, investors are specially recommended to obtain trademark registration in Vietnam as soon as possible despite they plan manufacturing/ doing business in Vietnam or not yet, where Vietnam adopt the Firs-to-File principle.

According to Article 125.5 of Intellectual Property Law, using trademark in Vietnam means the performance of the following acts:

a/ Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;

b/ Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

c/ Importing goods or services bearing the protected mark.

According to Article 5 C-2 of Paris Convention, use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.

However, there is no specific provision provided for alternation of distinctive characters OR change the nature of trademark OR change mark substantially regarding trademark in Vietnam but it depends mostly on the examiner.

In case Registrant’s mark is a combined of word and symbol and the owner use one element as an independent mark, would such kind of use constitute proper trademark use in Vietnam depends on would it alter the distinctive of registered mark or not. However, in practice, it is recommended to use the same mark as the registered one since Vietnam Trademark Office examines the difference very strictly.

As per the Vietnam IP Law, the court shall, on a request from any interested party, may order the cancellation of Trademark registration in Vietnam if it is proven that the trademark has not been seriously used for 5 consecutive years unless:

–  Where the use of trademark in Vietnam is commenced or resumed at least 3 months before the request for cancellation.

– The owner of the trademark proves that non-use was for reasons beyond his control such Import restrictions and other governmental procedures that are imposed of goods and services distinguished by the Trademark.

Therefore, we recommend that the owners should continuous use their trademark in Vietnam after they is being protected.

To show that a trademark in Vietnam has in fact become distinctive, you will need to file evidence in a statutory declaration explaining:

– An explanation of origin, history and time of continuous use of the mark in Vietnam and other countries;

– Number of nations in which the mark has been registered or recognized as a well-known mark in Vietnam and other countries;

– List of goods and services bearing the mark in Vietnam and other countries;
– The territorial area in which the mark is circulated, turnover from products sold or services provided;

– Quantity of goods and services bearing the mark manufactured or sold;

– Property value of the mark, price of assignment or licensing of the mark and value of investment capital contributed in the form of the mark in Vietnam and other countries;

– Investment in and expenses for advertising and marketing of the mark in Vietnam and other countries, including those for participation in national and international exhibitions;

– Infringements, disputes and decisions or rulings of the court or competent agencies;

– Surveyed number of consumers knowing the mark in Vietnam and other countries through sale, purchase, use, advertisement and marketing;

– Rating and evaluation of reputation of the mark in Vietnam and other countries by national or international organizations or the mass media;

– Prizes and medals awarded on the mark in Vietnam and other countries;

– Results of examinations held by intellectual property examination organizations.