How to Protect Your Trademark in Vietnam

Working - Saigon/HCMC: March 3, 2017

Trademark protection is one of the first steps to take on your way to an established business brand, in Vietnam or anywhere, really. There’s nothing worse than seeing your trademark violated and knowing that you don’t have a legal leg to stand on in court. Don’t let this happen to you! So, let’s start with the basics.

What Is a “Trademark”?

According to Vietnamese law, a trademark is

“any sign used to distinguish goods or services of different organizations or individuals.”

(Article 4.16 of the Law on Intellectual Property)

To put it simply, a trademark is firstly a “sign”, or, more precisely, a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, designed in one or more colours. Secondly, this sign is capable of distinguishing goods or services of the mark’s owner from those of another. Of course, what “distinguishing” means is a long (legal) story.

Is “Phu Dong Thien Vuong” distinguishable from “Phu Dong” (restaurants), and “Hao Hang” distinguishable from “Hao Hao” (instant noodles)? When seeing the trademark “X-Men” on shampoo bottles, do consumers think (wrongly) that these products are created by Marvel? People may have different opinions on this, as shown in disputes related to those trademarks.

Why Register Your Trademark?

A good trademark is an important property for any business. It’s a useful tool that helps clients and consumers identify the goods and services of your business. Creating a trademark means creating the name, image and brand of your business. Applying your trademark to your goods and services confirms and strengthens your position in the market.

One day, after working hard enough, you may also think of the commercial possibilities of the trademark itself by transferring the right to others to use or own it, like Pho 24’s or Highlands Coffee’s owners.

However, you can only do those things when your trademark is protected by the law – meaning after it has been successfully registered.

Trademark registration is also indispensable to mitigate risks arising from unfair competition of goods and service providers who want to take advantage of your reputation and position in the market.

For example, Vincom is a famous trademark in Vietnam. In 2010, the owner of this trademark brought a case against another real estate and finance company that registered the trademark “Vincon”, creating confusion among clients and violating the intellectual property (IP) rights of the original Vincom. Vincom won the case because it had wisely registered the trademark in 2005.

When May a Trademark Registration Be Refused?

In some cases signs will not be protected as marks. Typical examples may be found in Article 73 of Vietnam’s Law on IP:

- signs identical with or confusingly similar to national flags or national emblems

- signs identical or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese state agencies, political organisations and socio-political organisations, unless permitted by the organisations

- 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

A trademark registration may also be refused if it does not comply with the law and social ethics, and such a fact is beyond the perception and control of the business due to differences in culture, region or country.

Or when the sign is confusingly similar to a trademark of another business that successfully registered it before you in Vietnam – one of the most common causes of trademark registration failures.

Check the exceptions, the conditions of trademark protection as well as the potential of your mark to be protected, preferably with a professional law firm specialised in IP law, and register your trademark.

How to Register Your Trademark

Are you a Vietnamese organisation? A Vietnamese or foreign individual residing in Vietnam? A foreign organisation or individual with a production facility or business establishment in Vietnam? Then you can file applications directly or through a lawful representative in Vietnam.

If you choose to file directly, you can find lots of information in English on the National Office of Intellectual Property of Vietnam’s website. However, hiring a professional law firm specialised in IP matters, who will play the role of your “legal representative in Vietnam” for IP registration, is undoubtedly the simplest and often most cost-effective solution. Registering a trademark may take up to a year, so the sooner you start, the better.

A.G.L Consulting and Training Company (A.G.L Company) is an official industrial property agent under NOIP and has years of experience working with trademark registration for major businesses and appropriate authorities.

Address: 12/18 Dao Duy Anh, Phu Nhuan District

Website: www.agllaw.com.vn