How many mark specimens must be included in the application for mark registration in Vietnam?

How many mark specimens must be included in the application for mark registration in Vietnam?

As prescribed in Point 37.5 Section 5 of the Circular 01/2007/TT-BKHCN (amended by Clause 8 Article 1 of the Circular 18/2011/TT-BKHCN, in addition to the trademark specimen attached to the written declaration, the application must be enclosed with 05 identical trademark specimens that satisfy the following requirements:

a) A mark specimen must be clearly presented with the dimensions of each element of the mark ranging between 8 mm and 80 mm, and the entire mark must be presented within a mark model of 80 mm x 80 mm in size in the written declaration;

b) For a mark being a three-dimensional figure, the mark specimen must be accompanied with a photo or drawing showing the three-dimensional disposition and may be accompanied with a descriptive specimen in the projection form;

c) For a mark involving a claim for protection of colors, the mark specimen must be presented with the very colors sought to be protected. If the protection of colors is not claimed, the mark specimen must be in black and white.

As regulations above, the application must include 05 identical trademark specimens and satisfy other requirements.

What are requirements for written declarations included in the application for mark registration in Vietnam?

As prescribed in Point 37.4 Section 5 of the Circular 01/2007/TT-BKHCN (amended by Article 1 of the Circular 16/2016/TT-BKHCN, an applicant shall submit two written declarations, made according to a set form (not printed herein), with the following attentions:

a) The section of mark description in the application must clearly indicate the type of mark sought to be registered (common mark, collective mark, association mark, certification mark);

b) If the mark sought to be registered is an association mark, the applicant shall clearly indicate associated elements being marks or goods or services according to the following provisions:

(i) If associated elements are marks (similar to another mark of the very applicant used for the same goods or service or used for similar goods or services), the applicant shall clearly indicate a mark considered substantial among those association marks (if any). If one or several of those marks have been registered or stated in the previously filed applications, the applicant shall clearly indicate the serial numbers of the protection titles and the previously filed applications;

(ii) If associated elements are goods or services (a mark used for similar or interrelated goods or services), the applicant shall clearly indicate a goods or service considered substantial among those goods or services (if any). If one of those goods or services has been previously registered or stated in a previously filed application, the applicant shall clearly indicate the serial numbers of the protection title and previously filed application;

(iii) If the applicant fails to specify a substantial trademark or a substantial goods or service, then all trademarks and all goods or services related to the trademark stated in his/her application shall be considered independent from one another. The distinctiveness of the trademark stated in the application must be assessed in accordance with general regulations on distinctiveness assessment that are specified in Point 39 of this Circular.

c) For a certification trademark, the applicant shall provide a brief description of the nature of the goods or services, which is certified by the trademark in the form (including origin, raw materials, methods of producing goods and providing services, quality, accuracy, safety or other nature of the goods or services bearing a trademark.

d) The declaration must contain the mark specimen and a written description of the mark according to the following provisions:

(i) If the mark consists of many elements, those elements and their combinations must be clearly indicated. If the mark contains configuration elements, contents and significance of those elements must be clearly defined;

(ii) If the protection is claimed for a colored mark, such a claim must be clearly stated and colors on the mark must be named;

(iii) If the mark contains letters, words or expressions in languages other than Vietnamese, their pronunciations (transliterated into Vietnamese) must be clearly annotated and their meanings (if any) must be translated into Vietnamese;

(iv) If the mark contains numerals other than Arabic and Roman numerals, those numerals must be transliterated into Arabic numerals.

e) The section List of goods and services bearing the mark in the written declaration must be divided into groups in accordance with the International Classification of Goods and Services under the Nice Agreement published by the NOIP in the Industrial Property Official Gazette.

Above are requirements for written declarations included in the application for mark registration in Vietnam.

What are requirements for regulations on use of collective marks and certification marks in Vietnam?

As prescribed in Point 37.6 Section 5 of the Circular 01/2007/TT-BKHCN (amended by Article 1 of the Circular 16/2016/TT-BKHCN, a regulation on use of a collective mark and a regulation on use of a certification mark must have relevant contents specified in Clauses 4 and 5, Article 105 of the Intellectual Property Law and clarify the following matters:

a) Brief information on the mark, the mark proprietor and goods and services bearing the mark;

b) Conditions for the mark registrant to license the mark and conditions for termination of the right to use the mark;

c) Obligations of the mark user (assuring the particular quality and characteristics of a goods or service bearing the mark, submitting to the control of the mark registrant, paying the mark management charge, etc.);

d) Rights of the mark registrant (controlling compliance with the regulation on use of the mark, collecting the mark management charge, suspending the mark use right of a person who fails to satisfj the conditions specified in the mark use regulation, etc.

e) Mechanism of licensing, control and inspection of use of the mark and assurance of the quality and reputation of goods and services bearing the mark;

g) Dispute settlement mechanism.

h) List of members using collective trademarks.

Use of collective marks and certification marks in Vietnam must satisfy above requirements.

Best regards!