SBLAW would like to present the trademark Examination Procedure in Vietnam as follows:
(1) Filing the application
The application for a mark registration must be filed directly or by mail, to the National Office of Intellectual Property of Viet Nam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.
Organizations, individuals of Viet Nam, foreign individuals permanently residing in Viet Nam and foreign organizations and individuals having a production or trading establishment in Viet Nam may file applications for a mark registration either directly or though a lawful representative in Viet Nam.
Foreign individuals not permanently residing in Viet Nam, foreign organizations and individuals not having a production or trading establishment in Viet Nam shall file applications for a mark registration through a lawful representative in Viet Nam.
Foreign applicants can obtain a mark registration in Viet Nam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Viet Nam through the Madrid Agreement or the Madrid Protocol or both of them.
Ø The first-to-file principle
Viet Nam has adopted the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same mark, the registration may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date, the registration may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a mark registration.
Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.
Formality examination
An application for a mark registration filed with the NOIP shall be subject to formality examination for evaluating its validity.
The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.
(2) Request for correction and amendment
Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.
Ø For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.
Ø For an application failing to meet formal requirements, the NOIP shall send to the applicant:
a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of two (02) months from the date of notification for the applicant to give opinions or correct errors.
(3) Refuse to accept the valid application
If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.
Applicants and all organizations and individuals having rights and interests directly related to decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with the decision within 90 days from the date the person having the right to complaint receives the notice.
Within 10 days from the date of receipt of a complaint about the notice of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.
Upon the expiration of the time limit for settlement of the complaint about the decision or notice concerning the application for mark registration (the 1st complaints) by the NOIP, if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP, the complainant or person having rights and interests directly related to those decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate a lawsuit at court.
(4) Publication of the application
Within 2 months as from the date the application is accepted as formally valid, it will be published in the Industrial Property Official Gazette for oppositions and comments of third parties. Applicants shall pay a fee for such publication.
(5) Substantive Examination
The purpose of substantive examination of mark applications is to assess the eligibility of objects claimed in the application under the requirements and corresponding protection scope. An examination will be carried out by examiners of the NOIP within 9 months from the date of publication.
If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.
(6) Notification of substantive examination results
On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:
Ø a notice on its intended refusal to grant a mark registration, clearly stating the reason(s) for refusal and setting a time limit of three (03) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements. (the applicant may request prolongation of the above time limit), if the signs claimed in the application fails to satisfy the protection conditions;
Ø a notice on its intended refusal to grant a mark registration, clearly pointing out errors and setting a time limit of three (03) months from the date of issuance of the notice for the applicant to justify or correct errors. (the applicant may request prolongation of the above time limit), If the signs claimed in the application satisfy the protection conditions but the application still contains errors;
Ø a notice on its intended grant of a mark registration and request the applicant to pay the fee as referred to in the Item (9), if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit above.
(7) Notification of refusal
If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.
When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.
(8) Notification of intention to grant a mark registration and request to pay fee
If examiners judge that the application fulfills the requirements, NOIP will issue a notification of its intention to grant the mark registration and request to pay fee for the issue of a mark registration to the applicant.
(9) Issue the Mark Registration Certificate
Within 10 days after applicant pays fully and on time the prescribed fees and charges, the NOIP shall carry out the procedures for granting the Mark Registration Certificate.
(10) Entry into the National Register of Industrial Property and publication of the Mark Registration Certificate
The Mark Registration Certificate shall be recorded in the National Register of Marks and the decision on granting the mark registration shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicant pays a publication fee.
For the international mark registered through the Madrid system, the NOIP shall, if accepted for protection, issue and publish a decision on acceptance for protection of an internationally registered mark in its Industrial Property Official Gazette. At the request of an internationally registered mark owner, the NOIP issues a certificate of protection in Viet Nam of the internationally registered mark.
Note:
(1) For an application for international mark's registration designating Vietnam, the NOIP shall conduct the substantive examination of the application according to the procedures applicable to mark registration application filed directly with the NOIP. Within 12 months after the International Bureau issues the notice, the NOIP shall make a conclusion on protectability of the mark.
(2) Procedures for mark international registration applications originating in Vietnam: the procedures for processing mark registration applications will also apply to the processing of mark international registration applications at the NOIP.
(3) Rights to well known marks are protected and belong to proprietors of those marks without any registration procedures. If a well-known mark is recognized according to civil procedures or under a recognition decision of the NOIP, that well-known mark shall be recorded in the list of well-known marks kept at the NOIP.
(4) As from the date an trademark registration application is published the Industrial Property Official Gazette until prior to the date of decision on the grant of a Mark registration Certification, any third party shall have the right to present opinions to the NOIP in relation to the grant or refusal of a Mark registration Certification in respect of the application. Such opinions must be given in written form and be accompanied by materials or must specify the source of information used for proving.
