What cannot be registered as trademark?

 A trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a trademark is such that does not create any brand for a product can't be trademarked. A trademark should not be a conflicting trademarks with others. It means the trademarks should not create confusion between two trademarks. 

In general:

Trademark protection in Vietnam 

-Generic words can't be trademarked. For example you can't trademark the words like TV, Fridge, scooter, car etc.

-The names of the cities and countries can not be trademarked.

-The names of Gods and Godesses and the names of religious books can not be trademarked. For example you can't trademark *Lord Ram* or *Ramayana*

-Surnames can not be trademarked under normal circumstances. For Example you can't trademark *Sharma*

-Names of Constitutional Posts or Government posts can't be trademarked. For examples you can't trademark *Prime Minister of Vietnam

-Words which denote illegal or Immoral acts can't be trademarked. For example you can't trademark *Let's cheat* or *Let's grope*

-Words which are prohibited under names and emblems act can't be trademarked. For example, you can't trademark the official sign of Government of Vietnam.

Hope this helps!

Source: Quora

ANT Lawyers - IP services in Vietnam located in the business centers of Hanoi, Danang, Ho Chi Minh city. We provide convenient access to our clients. Please contact our lawyers in Vietnam for Trademark registration services in Vietnam via email ant@antlawyers.vn or call our office at +84 28 730 86 529.

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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.  

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Trademark Consultant in Vietnam

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

It has been obvious that the protections of trademark have created significant value in intangible assets. Hence, the manufacturers of various products and service providers could establish and protect their identities and the identities of their products or services in the marketplace through the creation and protection of names, designs, logos, and explore strategies for protecting potentially valuable trademarks. Further, it is important to be ready to design an ongoing maintenance strategy to protect, extend, and maximize the value of trademarks, and discuss strategies for responding to possible trademark infringement if any.

ANT Lawyers IP practice helps you protect these valuable intellectual assets through trademark registration, oppositions, and other trademark protection resolutions in Vietnam.

Trademark consultant in Vietnam

In particular, ANT Lawyers IP practice offers client services as following:

-Trademark Availability Searches

-Trademark Watch Service

-Trademark Filings & Trademark Registration in Vietnam

-Renewals

-Recordals of Amendments, Assignments, Merger Agreements, Licences

-Filing Opposition & Responses

Our trademark attorneys in Vietnam will process client’s trademark registration by carrying out the following steps:

-Providing our clients with cost estimates for searching and filing applications

-Conducting comprehensive clearance searches including analysis about registration of the required trademarks and providing advice on the most appropriate and cost-effective method to obtain a clearance

-Preparing and filing trademark applications, including obtaining appropriate legalization of documents and translations (if applicable)

-Responding to objections raised by Registrars and potential third party oppositions

-Negotiating settlement agreements when necessary to overcome prior marks

-Obtaining a Certificate of Trademark Registration once your trademark is approved

-Recording changes in name and address of proprietor, assignments, licenses and renewals of trademarks

-Providing solutions for trademark protection in Vietnam.

If you are looking for an experienced IP services 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 Trademark in Vietnam.  

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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. 

 

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Should I hire a Trademark lawyer to file trademark application?

The answer is (almost always) “yes!”

Of the many reasons to hire a trademark lawyer for a Trademark (TM), here are few...

-The process can be time-consuming - particularly conducting an exhaustive search of existing trademarks and handling any office actions that come back. Experienced trademark and IP lawyers have successfully submitted many trademark applications, so they will be able to efficiently file your application, allowing you to focus your energy on other company matters.

Trademark protection in Vietnam

-A comprehensive search of trademarks often must go beyond the USPTO’s (already difficult/confusing to search) Trademark Electronic Search System. This would be extremely difficult to accomplish without an attorney and/or professional search. It is much more cost-effective to hire a lawyer up front, than to hire one to rectify problems when you either get an office action or realize your protection wasn't as robust or complete as you'd understood.

-A trademark lawyer can help you frame your application in the best possible way (by selecting appropriate categories/drafting how it is being used/deciding whether to apply for plain text or logo protection-among many other considerations), making it more likely that your application will be granted on the first try and obtain the maximum possible protection for your company.

-Finally, a trademark or IP lawyer can help you after the process is over to help you craft a long-term IP strategy.

Source: Quora

If you are looking for a high-quality, experienced lawyer to work on trademark issues for your company, you should check out ANT Lawyers to get in touch with some of the best. ANT Lawyers - IP services in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

We assist our clients in all steps of the prosecution phase of IP management.

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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.

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What Are Obligations of Using Patent and Trademark?

When applicants of invention or mark are granted patent or trademark certificate, they are obliged to use these subjects. The reason for this provision which is, the owner may not use patents or trademarks in practical causing difficulties for the person who would like to use the patent and trademark in reality but cannot register as others has already registered.

According to Article 136 Vietnam Law on intellectual property clearly regulated on obligations of ownerin using patent and trademark.

Firstly, to patent, the owner is be obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defence and security, disease prevention, and treatment and nutrition of the people or to meet other social urgent needs. When the needs stipulated in this clause arise but an invention owner fails to perform such obligation, the competent State body may license such invention to others without permission from the invention owner in accordance with the law.

Secondly, to trademark, trademark holder is obliged to use trademark continuously. Trademark used under a trademark use agreement by a transferee is also considered as an act of using the holder’s trademark. In case the trademark is not used continuously for five years or more, the Trademark Certificate of Registration shall be invalid.

Specifically, if the trademark holder or the person who is allowed to use the trademark do not use the trademark within continuous five years before the date of request to terminate the validity without reasonable reason, except the using starts or restarts at least 03 months up to date of having the termination of validity request.

If the client needs help with handling such complaint, our Intellectual property attorneys in Vietnam at ANT Lawyers will be of help.

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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.

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