PROCEDURE FOR REGISTRATION FOR TRADEMARK

In the context of today’s globalized economy, trademark registration has become extremely important, because it not only helps businesses protect their rights in the market but also affirms their own brands. The following article will guide in detail the procedure for trademark registration, helping you to capture information and complete the procedure easily.

What is a trademark?

According to the definition in Clause 16, Article 4 of the Law on Intellectual Property 2005 amended and supplemented in 2009 and 2019 (hereinafter referred to as the Intellectual Property Law), “A trademark means any sign used to distinguish goods or services of different organizations or individuals”. There are several types of brands as follows:

• Collective mark: means a mark used to distinguish goods or services of members of an organization which is the owner of such mark from marks of non-members of such organization.
• Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such mark.
• Integrated marks mean identical or similar marks registered by the same entity and intended for use on products or services that are of the same, similar, or interrelated type.
• A well-known mark means a mark widely known by consumers throughout the territory of Vietnam.

Conditions for a trademark to be protected:

Pursuant to Article 72 of the Intellectual Property Law on conditions for protected marks:

• A sign that is visible in the form of letters, words, drawings, images, including holograms, or a combination thereof, represented by one or more colors;
• Having the ability to distinguish the goods and services of the trademark owner from those of other subjects.

Note:

Before filing a trademark application, the company needs to perform an accurate trademark search to avoid the case where the trademark is identical or confusingly similar to previously registered trademarks.

• For national trademark search: http://iplib.noip.gov.vn/WebUI/WSearch.php
• For international trademark search: http://www.wipo.int/branddb/en/

Importance of trademark registration

• Protecting business interests: Registering for protection of trademarks helps businesses protect their intellectual property rights, avoiding copying and plagiarism.
• Increase brand value: A protected trademark will contribute to increasing brand value, attracting the attention of customers and partners.
• Market expansion: International trademark registration helps businesses easily access and expand overseas markets.

If not falling into the cases of invalidation of a trademark protection certificate, the trademark registration certificate is valid from the date of grant to the end of ten years from the date of filing the application, can be renewed for many consecutive times, every ten years (Clause 6, Article 93 of the Law on Intellectual Property).

Procedures for trademark registration:

Step 1: Prepare documents:

1. Copy of fee and fee payment voucher (in case of payment of fees and charges via postal service or directly into the account of the National Office of Intellectual Property);
2. Original Power of Attorney (if applying through a representative) ;
3. Original documents proving the right of registration if the applicant enjoys the right of registration from another person;
4. 02 Originals of the registration declaration (using form No. 04-NH Circular 01/2007/TT-BKHCN )
5. The origin of the trademark sample (05 samples of 80 x 80 mm size) and the list of goods and services bearing the mark;
6. Original documents proving priority right, if claiming priority right.

For a collective mark registration application, a certification mark must contain:

7. Regulations on the use of collective marks/certification marks
8. An explanation of the characteristic (or specific) nature and quality of the product bearing the mark (if the registered mark is a collective mark used for products with particular characteristics or is a quality certification mark). quality of the product or as a mark of geographical origin)
9. Map of the geographical area (if the registered mark is a mark certifying the geographical origin of a product, or a collective mark, a certification mark containing a place name or other sign indicating the geographical origin of a particular feature). local produce)
10. Map of the geographical area (if the registered mark is a mark certifying the geographical origin of a product, or a collective mark, a certification mark containing a place name or other sign indicating the geographical origin of a particular feature). local produce)

Note: The documents are power of attorney, documents proving the right to registration, documents proving the right of priority should be translated into Vietnamese from the beginning to facilitate the submission of documents, avoiding waiting for the management agency. State management of industrial property rights requests lead to extended processing time.

Fees:

As soon as the application is submitted, the applicant must pay the registration fee. Depending on the type of application for 1 group of products and services or many groups of products and services, the cost will be different. In general, the following fees will be included: Application fee, International classification of goods/services fee, Application publication fee, Publication of the decision to grant a Protection Title, Registration fee, Investigation fee research information for appraisal purposes,
Substantive examination fee, fee for assessment of priority right claim, fee for grant of trademark registration certificate.

Step 2: Submit your application

Applications can be submitted in person or by post to the headquarters of the National Office of Intellectual Property in Hanoi at 386 Nguyen Trai, Thanh Xuan District, Hanoi or 2 representative offices of the Department in Ho Chi Minh City. Ho Chi Minh: 7th floor, Ha Phan building, 17/19 Ton That Tung, Pham Ngu Lao ward, district 1, Ho Chi Minh city, and Danang: 3rd floor, 135 Minh Mang, Khue My ward, Ngu Hanh Son district, Da Nang city

For applicants who have digital certificates and digital signatures, have registered an account on the online application receiving system and have an account approved by the National Office of Intellectual Property to carry out transactions for registration of industrial property rights, they can: can apply online. However, in reality, the online application process has to go through quite a few processes. Therefore, Enterprises should apply the form of application directly or through the postal service.

Step 3: Get the result

From the date of receipt by the Department of Intellectual Property, the trademark registration application shall be considered in the following order:

• Formal examination of the application: 01 month (based on Clause 3, Article 1 of Circular No. 05/2013/TT-BKHCN)
• Announcement of application: within 2 months from the date of receipt of a decision on acceptance of a valid application (based on Clause 3, Article 110 of the Intellectual Property Law)
• Substantive examination: no later than 09 months from the date of publication of the application (based on point b, clause 2, Article 119 of the Intellectual Property Law). However, due to the overwhelming number of registrations, this time limit will usually be longer.

In case the trademark application is eligible for protection, the Department of Intellectual Property will issue a notice of granting a registration certificate to the owner. At the same time, send the Certificate of Business Registration to the enterprise by post.

Legal Basic:

Intellectual Property Law No. 07/VBHN-VPQH dated June 25, 2019

Circular 01/2007/TT-BKHCN of the Ministry of Science and Technology about guiding the implementation of the Government Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding the implementation of a number of articles of the Law on intellectual property regarding industrial property

Circular No. 05/2013/TT-BKHCN of the Ministry of Science and Technology about amending Circular No. 01/2007/TT-BKHCN dated February 14^th, 2007, guiding the implementation of the government’s decree No. 103/2006/ND-CP, elaborating a number of articles of the law on intellectual property applicable to industrial property, amended in the Circular No. 13/2010/TT-BKHCN dated July 30^th, 2010 and the circular No. 18/2011/TT-BKHCN dated July 22^nd, 2011

The registration of trademark protection not only helps businesses protect their rights but also increases brand value and expands the market. To complete the procedure smoothly, you need to understand the registration process, prepare all the documents and choose the right trademark. If needed, don’t be shy

Using the services of law firms or legal representatives will save you time and effort and ensure the accuracy of your records. Pham Consult with more than 7 years of experience in many fields will bring you enthusiastic, dedicated and professional consulting and support services in trademark registration.

PHAM CONSULT is always ready to accompany you in managing records and procedures for financial statements of your business.

PHAM CONSULT is a unit specializing in providing tax consulting services, financial consulting, accounting services, preparing and paying salaries. Customers can contact us via hotline: (84-28) 3930 2487 or Facebook communication channel if they need support.