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.

The costs of registration of trademark depend on how many classes of goods or services are covered in the application and the number of goods or services of each class. In addition, the costs also depend on the convention priority rights claimed and objections raised during the examination by the NOIP.

Payment for the costs can be made at the time of filing and granting. Application fees including fees for filing, claiming priority right (if any), publication, conducting search and substantive examination are often paid at the filing date. Granting fees including fees for granting a certificate, registration and publication of trademark are paid upon being invited by the NOIP in a notification of result of substantive examination.

According to the Vietnamese trademark law, a trademark may be invalidated under the following circumstances:

• The trademark holder submits a written declaration of abandonment to the NOIP;
• The term has not been extended;
• The trademark holder (natural person) dies and he has no successor, or a legal entity liquidates and there is not a legatee;
• Lack of use of the trademark within 05 consecutive years before the time of filing of request for non-use invalidation;
• The holder of the collective/certification mark uses the mark in breach to the collective/certification mark regulations.

For the invalidated trademarks, the rights conferred by the registration are considered terminated from the date of taking the decision on invalidation.

CANCELLATION OF TRADEMARKS

Trademark registration can be canceled by any interested person upon filing of an application for cancellation to the NOIP. The person requesting the cancellation must prove that:

• The right to file the trademark application had not belonged to the applicant; or
• Any of distinctiveness requirements were not fulfilled at the time the trademark was registered. In this case, cancellation request should be filed within 05 years from the date of registration.

Any cancelled registrations for trademark is regarded as not valid from the date of registration.

Where the grounds for invalidation or cancellation of the trademark exist in respect of the part of goods/services for which the trademark is registered, the registration will be canceled in respect of this part only.

An assignment contract must include at least the following contents:

• The full names and addresses of the contracting parties;
• Identification of trademarks;
• Term of payment including price;
• Obligations and rights of the contracting parties.

There are three types of licenses, namely exclusive, non-exclusive and sub-license. The content of license contract at least includes:

• The full names and addresses of the contracting parties;
• Identification of trademarks;
• Type of license;
• Scope of license, in particular, the territorial limits and the rights of use;
• Termination of the contract;
• Term of payment including price;
• Obligations and rights of the contracting parties.

The assignment/license contracts is only effective to a third party upon recordal of these contracts with the NOIP.

To protect his exclusive rights, the trademark holder should himself or via a trademark agent implement trademark watch, identify trademark counterfeits and infringing goods, thereby decide whether, how and when to take action against the infringers for example:

• Sending a polite warning letter requesting the alleged infringer to stop infringement acts; or
• Performing the trademark right enforcement measures including administrative, civil, criminal and border measures.

The following measures are provided to ensure the respect and defense of the exclusive rights of the trademark holder.

Administrative measure

In order for the administrative measure to be taken, the right holder must file a request for handling of the infringement to the following administrative competent authorities:

• The Science and Technology Inspectors;
• The Market Management Bureaus;
• The Customs;
• The Police;
• The People’s Committees at district and provincial level.

Upon examining the legal evidences provided by the right holder, the authorities might force infringers to stop their acts of infringement. And depending on the nature and gravity of the infringement, the above authorities will impose administrative remedies and penalties including:

• Warning;
• Monetary fine;
• Complementary remedies such as seizure of infringing goods and any material, suspension of business activities; and
• Restoration remedies such as destruction or disposal outside the channels of commerce of infringing goods in such a manner as to avoid any harm to the right holder, delivery out of Vietnam or re-export of infringing goods after having removed infringing elements.

In addition, the right holder can require the administrative authorities to apply preventive measures as:

• Temporary hold of related individuals or the goods, means and implements used for such infringement;
• Search of related individuals, the place where infringing goods, means and implements are stored.

Civil measure

Competent Courts for civil proceedings are:

• The People’s Courts at district level (including the Civil Courts);
• The People’s Courts at provincial level (including the Civil Courts and the Economic Courts); and
• The Supreme People’s Court (including the Civil Court and the Economic Court).

The civil remedies may be obtained through a suit including:

• Forced to desist from an act of infringement;
• Forced to make a public rectification or apology;
• Forced to perform a prescribed civil obligation;
• Forced to remove the signs of infringement from infringing goods to be circulated for non-commercial purposes;
• Forced to destroy or dispose outside the channels of commerce of infringing goods in such a manner as to avoid any harm to the right holder; and
• Forced to compensate for infringement damages.

Where appropriate, in particular where infringement is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed, the following provisional judicial measures can be applied.

• Seizure;
• Attachment;
• Sealing, prohibition of changing status or displacing; and
• Prohibition of transferring ownership.

The damages can be calculated on spiritual and physical damages of plaintiff, for example the lost sales or profits and reasonable expenses for prevention and restoration from such damages etc. as a result of the defendant’s infringement.

Criminal measure

Criminal remedies in accordance with the criminal laws and regulations are applied for any person who infringes intellectual property rights having factors that constitute a crime or commits a repeat offense after being subject to administrative remedies for IPR.

Competent criminal courts are:

• The People’s Courts at the district level;
• The People’s Courts at the provincial level; and
• The Supreme People’s Court.

The remedies available includes:

• Warning;
• Monetary fine;
• Non-detained re-education;
• Imprisonment; and
• Prohibition from holding an official position or conducting a business within a certain period.

Border measures

The right holder has the right to request the Customs Office to take the following border control measures to prevent IP-related imports and exports of infringing goods.

• Suspension of customs procedures for suspected infringing goods; and
• Supervision to detect infringing goods.

The right holder should, himself or via his IP representative, lodge an application to the General Department of Vietnam Customs, local Customs Departments, or customs Sub-departments. In the application, the right holder should provide adequate evidence of a prima facie infringement of his IPR and supply a sufficiently detailed description of the goods to make them readily recognizable by the Customs Office. The right holder should also provide documents proving his IP rights (i.e. certified copies of the certificates of trademark registration) and deposit a sum of money in cash or in the form of bank guarantees.

The term of suspension of customs procedures is 10 working days. This term may be prolonged up to 20 working days provided that an additional equal amount of money is deposited.