Trademarks

Trademarks and Geographical Indications

• Conducting searches and determining the availability of trademarks
• Preparing, filing and prosecuting applications for trademark/geographical indication registration
• Renewal of registrations and investigating the validity of trademark registrations
• Invalidation and cancellation of trademark registrations
• Litigation to assert the rights to trademarks/geographical indications
• Negotiating and drafting trademark assignment and license agreements, and franchise agreements
• Recording trademark assignment and license agreements with the NOIP
• Performing trademark watches
• Prosecuting and defending trademark infringement lawsuits

Criteria of Registrability

A trademark is available for registration if it (i) is distinctive for the goods or services which the mark is applied for, and (ii) is not deceptive, or contrary to morality and public order.

Detailed regulations on the distinctiveness of a trademark are provided by Articles 74 of the Intellectual Property Law.

Besides regulations on unregistration of marks that are contrary to public order, morality or prevailing law under the civil code, Article 73 of the Intellectual Property Law stipulates signs cannot be used as trademarks as follows:

• Those identical with or confusingly similar to the national flags, national emblems;
• Those identical with or confusingly similar to emblems, flags, armorial bearings, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless permitted by such agencies or organizations;
• Those identical with or confusingly similar to real names, alias, pen names or images of leaders, national heroes or famous persons of Vietnam or foreign countries;
• Those identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations which require that their signs must not be used, except where such seals are registered as certification marks by those organizations;
• Those liable to mislead, confuse or deceive consumers as to the origin, functional parameters, intended purposes, quality, value or other characteristics of the goods or services.

Distinctiveness of marks

A mark shall be considered distinctive if it consists of one or several easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and not belonging whole the case is considered incapable of distinguishing as prescribed by law.

A mark shall be considered as indistinctive if it is a sign or signs falling into one of the following cases:

• Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such signs have been widely used and recognized as a mark;
• Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
• Signs indicating time, place and method of production, category, quantity, quality, properties, ingredients, intended utility, value or other characteristics, which is descriptive of goods or services, except where such signs have acquired distinctiveness through use before the filing of mark registration applications;
• Signs describing the legal status and business field of business entities;
• Signs indicating the geographical origin of goods or services, except where such signs have been widely used and recognized as a mark or registered as collective marks or certification marks as provided for in this Law;
• Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of registration applications with earlier filing dates or priority dates, as applicable, including mark registration applications filed under treaties to which the Socialist Republic of Vietnam is a contracting party;
• Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
• Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than 5 years, except where the ground for such invalidation is non-use of the mark according to Point d, Clause 1, Article 95 of this Law;
• Signs identical with or confusingly similar to another person’s mark recognized as a well-known mark which has been registered for goods or services which are identical with or similar to those bearing such well-known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well-known mark or the mark registration is aimed at taking advantage of the reputation of the well-known mark;
• Signs identical with or similar to another person’s trade name currently in use if the use of such signs may cause confusion to consumers as to the origin of goods or services;
• Signs identical with or similar to a geographical indication being protected if the use of such signs may mislead consumers as to the geographical origin of goods;
• Signs identical with, containing or being translated or transcribed from geographical indications being protected for wines or spirits if such signs have been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
• Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an industrial design registration application with the filing date or priority date earlier than that of the mark registration application.