Conditions for trademark to be protected in Vietnam

Siglaw would like to provide information about those conditions through the article below:

1. Conditions for trademark to be protected in Vietnam

Trademarks that want to be protected in Vietnam need to meet the following conditions:

Firstly, a visible sign in the form of letters, words, drawings, images, including holograms or a combination of them, represented by one or more colors. This condition is understood that the mark must be perceived and perceived by the human eye, thereby distinguishing the goods and services containing this mark from other goods and services.

However, the law also stipulates that if a mark contains the following signs, it is not protected as a trademark:

• Signs identical or confusingly similar to national flags and emblems of other countries.

• Signs identical or confusingly similar to symbols, flags, badges, abbreviations and full names of state agencies, political organizations, socio-political organizations or political organizations socio-professional, social organizations, socio-professional organizations of Vietnam and international organizations, without the permission of such agency or organization.

• Signs identical or confusingly similar to real names, nicknames, pseudonyms, images of leaders, national heroes, celebrities of Vietnam or abroad.

• Signs identical or confusingly similar to certification marks, inspection marks, or warranty marks of an international organization that such organization requests may not be used, unless this organization itself registers the products such as a certification mark.

• Signs that mislead, confuse or deceive consumers about the origin, features, uses, quality, value or other characteristics of goods or services.

Secondly, the mark must be able to distinguish the goods and services of the mark owner from the goods and services of other subjects. A mark is considered to be distinctive if it is made up of one or several recognizable and memorable elements or from many elements that combine into a recognizable and memorable whole and does not belong to the following categories.

• Simple geometric figures and figures, numerals, letters and words in uncommon languages, except where such signs have been widely used and recognized as a mark.

• Conventional signs, symbols, drawings or common names of goods or services in any language that have been widely used, frequently and known to many people.

• A sign indicating time, place, production method, type, quantity, quality, nature, composition, use, value or other characteristics that are descriptive of goods or services, except where the sign has acquired distinctiveness through use prior to the filing of the trademark application.

• Signs describing the legal form and business field of the business entity.

• A sign indicating the geographical origin of goods or services, unless such sign has been widely used and recognized as a mark or registered as a collective mark or  a certification mark prescribed in Law on Intellectual Property 2005.

• The sign is not an associate mark identical or confusingly similar to a registered mark for identical or similar goods or services on the basis of an application with an early filing date or priority date than in the case of an application for a priority right, including a trademark application filed under an international treaty to which the Socialist Republic of Vietnam is a contracting party.

• A sign that is identical or confusingly similar to another person's registered trademark for identical or similar goods or services for which the registration of such mark has been terminated for less than five years, unless the the force is terminated because the mark is not used under the provisions of point d, clause 1, Article 95 of Law on Intellectual Property 2005.

• Signs identical or confusingly similar to a well-known mark registered by others for goods or services identical or similar to goods or services bearing a well-known mark or registered for dissimilar goods or services, if the use of such sign may affect the distinctiveness of the well-known mark or the registration of the mark is intended to take advantage of the reputation of the well-known mark.

• A sign identical or similar to a trade name being used by another person, if the use of such sign may cause confusion among consumers about the origin of goods or services.

• A sign that is identical or similar to a protected geographical indication if the use of such sign may cause consumers to misunderstand the geographical origin of the goods.

• The sign coincides with a geographical indication or contains a geographical indication or is translated or transcribed from the geographical indication being protected for wine or spirits if the sign is registered for use in wine, spirits that do not originate from the geographical area bearing the geographical indication.

• Signs identical with or not significantly different from another person's industrial design shall be protected on the basis of an industrial design registration application with a filing date or priority date earlier than the filing date or priority date of the trademark registration application.

• For well-known trademarks, if the mark meets the conditions specified in Article 75 of Law on Intellectual Property 2005, it will be considered a well-known trademark and automatically protected without registration.

A sign identical or confusingly similar to another person's mark has been widely used and recognized for identical or similar goods or services prior to the filing date or priority date in the case where the application is filed. enjoy the right of priority.

2. Legal basis

• Law on Intellectual Property 2005.

• Decree 103/2006/ND-CP.

• Circular 01/2007/TT-BKHCN.

• Circular 18/2011/TT-BKHCN.

• Circular 13/2010/TT-BKHCN.

• Circular 05/2013/TT-BKHCN.

• Circular 16/2016/TT-BKHCN.