How to protect your trademark in Vietnam?

How to protect your trademark in Vietnam?

In Vietnam, trademark registration is the first step in obtaining trademark protection. A trademark opposition may be filed to prevent a mark application that is pending from being granted. Litigation is the last option for resolving disputes involving trademark protection in Vietnam.

A trademark is a sign that helps separate one company's goods or services from those of others. Products and services trademarks play a crucial role in the expansion of the business, alongside patents and industrial designs. A trademark connects a business and its clientele. Customers will be more likely to use goods or services if the trademark is strong. The infringement of a trademark is inevitable when the trademark is well-known and has significant economic benefits from the sale of goods or services.

The owner of a trademark has two options for registration: either directly register a trademark in Vietnam by filling out a registration application with the Vietnam NOIP, or use Madrid's system to seek protection in Vietnam. In accordance with Vietnam's intellectual property law, the trademark owner must prepare, apply for registration, and pay a fee for the first option. If a trademark needs to be protected in multiple countries, such as Vietnam, the owner can register it using Madrid's system.

The trademark owner must assess the degree of infringement and damage in each location where a trademark violation occurs in order to select appropriate solutions. In the beginning, the owner of a trademark may protect themselves by requiring the trademark violator to stop their violations, apologise, and make amends. Owners of trademarks have the right to seek compensation in the event of damage. If negotiations or mediation fail, the trademark owner can use a settlement mechanism or submit a denunciation application to the Vietnam NOIP and ask the appropriate state agencies to handle acts of infringement. Acts of infringement may necessitate litigation. In general, civil litigation proceedings are more complex than arbitration proceedings. Civil litigation takes precedence when the trademark owner requires a court decision to end trademark infringement. In the remaining cases, arbitration is the better option because it is less expensive, takes less time to settle, and is more adaptable.

The client company's competitive advantage is heavily reliant on trademarks. Through trademark registration, oppositions, and other trademark protection resolutions in Vietnam, ANT Lawyers' IP service in Vietnam assists you in securing protection for these priceless intellectual assets.

 

Read More

Trademark protection in Vietnam

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

 

Trademark protection in Vietnam

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year. Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

Trademarks are an important part of client company’s competitive edge. ANT Lawyers, IP service in Vietnam helps you protect these valuable intellectual assets through trademark registration, oppositions, and other trademark protection resolutions in Vietnam.  

 

Read More

Intellectual Property and Trademark Registration Services in Vietnam

 

In Vietnam, many businesses today have not paid sufficient attention to trademark protection. Only when their trademarks would be infringed by other companies or competitors, they really concern to protect their trademarks and business through trademark registration, trademark opposition or take further actions. Such situation will negatively impact the business financially.

Trademark Registration services in Vietnam

Trademark rights will be protected within the national territory, therefore when a trademark has been registered in Vietnam, it will be protected in Vietnam. If one company wishes their trademarks to be protected in other countries, it could:

-Directly register in each country or

-Register via the Madrid International registration by filing a single application which indicates the registrations at respective countries.

If registered under the Madrid International, firstly, trademarks must have been submitted trademark applications or have registered in Vietnam, depending on whether the country for protection is under the Madrid Protocol or the Madrid Agreement.

Law on Intellectual Property and its related documents could also be referred to for further information.

ANT Lawyers’ services in the field of trademark registration advice covers:

-Look-up, assess and consult possibilities to register trademark in Vietnam and abroad;

-Represent clients in applying for certificates of trademark registration, record modification, extend degree of trademark protection in Vietnam and abroad;

-Evaluate the effectiveness of the certificate of trademark registration in Vietnam and the possibility of trademark rights violation;

-Implement of the protected trademark rights: investigate, monitor, negotiate, seek arbitration or initiate a lawsuit or request other competent agencies for handling of infringement in Vietnam and abroad;

-Negotiate, draft, evaluate and register the of changing trademark ownership in Vietnam and abroad;

-Advise on building strategies, brand development;

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

Read More

Why Investor Needs to Protect Trademark in Vietnam?

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

 

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the trademark protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the Trademark process and will work closely with you as you apply for your IP.

 

Read More

When and How to Register Trademark to Protect IP Rights

Considering trademark registration activities, the subject holder must comply with certain conditions to fulfill its trademark registration rights.

According to Article 13.1 Law on Intellectual Property amended in 2009:

-Organizations and individuals may register marks to be used for goods they produce or services they provide.

Register trademark in Vietnam

-Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.

-Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

-Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

-Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: i) This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; ii) The use of this mark causes no confusion to consumers as to the origin of goods or services.

If the subject falls into one of the cases mentioned above, they will have the right to register the mark at the National Office of Intellectual Property. After the subject condition has been met, consideration should be given to the condition that a mark can be protected as a trademark. In particular (i) It is a visible mark in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; (ii) It is capable of distinctive goods or services of the mark owner from those of other subjects.

However, there are some exceptions even when the mark satisfies those two conditions. For example, marks identical with or confusingly similar to national flags or national emblems; or marks identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations shall not be protected as a trademark.

In order to register for protection of a trademark, the registrant should pay attention to the subject matter and the conditions for the trademark to be protected in order to avoid being refused at the registration authority because of the failure to meet the conditions for the subject or the conditions for protection.

IP Attorney at ANT Lawyers – a Law Firm in Vietnam, a licensed IP agent in Vietnam shall be providing the advice to client to help the clients evaluate and file registration for trademark, patent, copyright and other IP related services

Read More

Legal consequences of the trademark with origin in Vietnam and designation EU registered under Madrid system after Brexit

After 47 years being a member of EU, UK officially left EU on January 31, 2020. This is an almost half of century relationship, thus, there would be a number of arising confusion as well as the issue which is in need of negotiation to complete the process including trademark registration with origin from Vietnam.

 

Trademark protection in Vietnam

UK is the member of Madrid system from Dec 1st, 1995, concurrently, EU has also officially become a member of this system since Oct 1st, 2004.  According to the international trademark searching Madrid Monitor, there are 292 Vietnamese trademarks registered internationally designated EU which include both the trademarks during the examination period and granted certificate.

How is the fate of these trademarks after Brexit?

According to the guidance from Intellectual Property Office of UK (“IPO”), the owner or applicant of the trademark which submitted according to the Madrid system and designated EU need to note the following points:

International trade mark registrations protected in the EU (“EUTM”) under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021. According to Brexit Agreement, IPO will create a system: “comparable UK trademark” in relation to each international (EU) trade mark designation. In case EUTM are still in the examination period, the applicant has the right to register that exact trademark in UK in the transition period from January 1st, 2021 to September 30th, 2021. In details:

Firstly, to the trademarks which has been protected, UK will:

-Be recorded in UK registration system;

-The recorded trademark will have the same legal status as the trademark protected according to UK law;

-Keep the submitting of the application as EUTM;

-Keep the priority date according to the Madrid system or seniority date according to UK law;

-Be recognized as independently existing trademark according to UK law and may be challenged, assigned, licensed or renewed separately from the original international registration.

However, it is noted that: (i) the Comparable trademarks will be created at no cost to the holder of the international trademark, except a minimal administrative burden will be placed upon the rights holder (ii) the applicant will not receive the trademark certificate, however, they could be searched for the trademark at GOV.UK.

Secondly, for the EUTM which are still in examination phase:

In case EUTM are still in examination phase, on January 1st, 2021, the applicant has the following rights:

-Apply the trademark application in UK for EUTM during the transition, nine months from January 1st, 2021 until September 30th, 2021 as mentioned above;

-Keep the earlier filing date as EUTM;

-Enjoy other international priority claim effecting on EUTM in accordance with the seniority claim according to UK law.

However, it is noted that when applying the EUTM during the examination phase according to the UK trademark system then:

-The trademark applied in UK must be the same with the trademark in EU application which submitted previously;

-Goods/services required to protect of the trademark must be the same or included in the scale of EUTM.

In case the application submitted into UK does not satisfy the above criteria, the application would not enjoy the priority date or the priority claim of EUTM.

The application after having been submitted within that period and satisfies the criteria will be deemed as UK application and be examined according to UK law.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP. We routinely match inventors with experienced IP attorneys for a free consultation on our platform and offer a money back guarantee. 

 

 

Read More

What is a Trademark?

A trademark is a type of intellectual property. A trademark also commonly known as a trademark, trade-mark or a mark. A trademark consists of a recognizable sign, design, or expression which identifies products or services of a particular company and helps in distinguishing the products from those of others. The symbols ® ‘the registered trademark symbol’ and ™ ‘the trademark symbol’ are generally used to indicate trademarks; the former is only for use by the owner of a trademark which is registered.

Register trademark in Vietnam

The trademark can be owned by:

-An individual,

-Business organization,

-Or any legal entity

When a trademark is registered, it confers an exclusive right to the owner to use the registered trademark. Thus it can be said that the trademark can be used by his owner exclusively, or it can be used by a person licensed for use in return of valid consideration.

Complete assignment

In this type of assignment, all the rights are completely transferred by the owner to the assignee.

The assignee has got all the rights including rights such right to further transfer and right to earn royalties.

Partial assignment

In this type, the assignment of the trademark is made to the assignee, but with respect to only some of the goods/ services, the transfer of ownership of the trademark is restricted to specific goods or services only. The rights are not transferred completely.

Assignment with goodwill

In this type of assignment, there is also a transfer of goodwill of the product with the trademark. In this, the valuation of goodwill is calculated differently in the agreement.

Assignment without goodwill

 In this type of assignment, goodwill of the product is not transferred along with the assignment of the trademark; in this, the owner of the brand restricts the rights of the assignee and does not allow him to use such trademark of the brand for the products being used by the assignor. Such an assignment is also referred to as a gross assignment.

When can a Trademark be assignerd?

A trademark can be assigned in the following situations

The Death of the Trademark Owner

Whenever the owner of the trademark i.e. the assignor dies, its ownership is passed on to the successors of the previous owners in a will or intestate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

Sale of Business

 Intellectual properties are assets for the company, just like all properties, even the trademark can be sold with the company. Provided it is registered under the company’s name. If a party acquires trademark rights of a company by acquiring a business with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.

Change of the owner of businesses

When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.

Change in Form of Business

Whenever a business plan on changing its form of business or its business structure an assignment is a boon for those businesses.

If you are looking for an experienced trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark.

Read More

What happens if I have a trademark without registering?

Trademark registration provides protection and exclusive rights to the owner of a Trademark in relation to his goods and services used commercially.

Trademark registration services in Vietnam 

A Trademark differentiates the identity and brand name of a business and separates the goods and services of a business from that of other similar goods or services in the market.

If your Trademark is not registered, it can be easily infringed upon by someone. In such case, you cannot file an infringement suit, but only claim remedy for passing-off. Passing off in trademark is when infringement of an unregistered trademark happens. The mark is not only deceptively similar to the trademark of other company but also creating confusion for the customers, which ultimately results in damage to the business of company.

Legal Remedy In Case Of Passing Off

The trademark owner can file a suit in district court/ High Court within the local limits of the jurisdiction, where the person instituting actually and voluntarily resides or carries on business or personally works for gain.

Where the passing off does not involve the use of trademark or where there is no sale of goods, the suit may be filed in a subordinate judge’s court or a court of superior to it. The plaintiff in a suit for passing off must be the owner of an unregistered trademark which has acquired reputation in relation to some goods or the owner of the goodwill in a trade name, or get-up relating to some goods or business or profession.

The defendant in the suit must be a person who has passed off or whose activities are likely to pass off his goods or business as the goods or business of the plaintiffs. Passing off actions may be instituted by many plaintiffs in a representative capacity provided there is a common interest, common grievance and a remedy beneficial to all. The rules governing the preparation of the plaint and the subsequent proceedings are the same as in any other suit and are governed by the Code of Civil Procedure.

If you are looking for an experienced Trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark. We routinely match inventors with experienced Trademark attorneys for a free consultation on our platform and offer a money back guarantee.

Read More

What are The Advantages of Trademark Registration?

A Trademark is essentially a brand name. Ít mây comprise of a word, name, combination of words or names or a symbol used to identify and also differentiate goods/ services produced/ provided by one seller from those offered by other sellers. It is also used to indicate source of the commodities.

Trademark in Vietnam

Trademarks allow you to protect your company’s name, and to specify which types (classes) of goods and services your company’s trademark should be applied to. For example, coffee mugs vs. outdoor apparel. It’s important to point out that trademarks are intangible assets, and can be bought, sold or licensed.

Other Advantages of Registering a Trademark:

-It grants the right to use the registered trademark symbol: ®;

-It grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary damages;

-It acts as a bar to the registration of another confusingly similar mark;

-Ability to have the customs service block the importation of goods bearing an infringing mark; and

-It may serve as the basis for an international trademark application.

If you’re considering registering for trademarks then you should hire a competent Trademark Lawyers in Vietnam who will make sure everything is protected from the get-go. Feel free to visit ANTLawyers.vn for this. We’re a legal marketplace that makes it easy for entrepreneurs to hire and work with quality, vetted lawyers.

Read More