Requirements for applications for mark registration in Vietnam

Requirements for applications for mark registration in Vietnam (Internet image)

Regarding this issue, LawNet would like to answer as follows:

1. What is mark?

According to Clause 16, Article 4 of the Law on Intellectual Property 2005, amended in 2009, mark means any sign used to distinguish goods or services of different organizations or individuals.

2. Requirements for applications for mark registration in Vietnam 

Requirements for applications of industrial design registration in Vietnam are specified in Article 24 of Circular 23/2023/TT-BKHCN as follows:

(1) The application for mark registration must meet the general requirements for application documents specified in Articles 100 and 105 of the Law on Intellectual Property 2005, Appendix I of Decree 65/2023/ND-CP and instructions specified in Article 24 of Circular 23/2023/TT-BKHCN.

(2) The application must ensure consistency as prescribed in Clauses 1 and 4, Article 101 of the Law on Intellectual Property 2005. Each application is only required to register one mark for one or more goods and services.

(3) In case there is a basis (information, evidence) to doubt the authenticity of the information stated in the application or the information stated in the application is unclear, the National Office of Intellectual Property notifies the applicant to submit documents to verify or clarify such information within 02 months from the date the National Office of Intellectual Property issues the notice. The above documents may be the following documents:

- Documents proving the applicant's status:

(i) Business registration certificate, contract or other documents confirming the applicant's product manufacturing and service provision activities according to the provisions of Clause 1, Article 87 of the Law on Intellectual Property 2005;

(ii) Agreement and document confirming that the producer does not use the mark and does not object to the registration of the mark by the person conducting commercial activities of the producer's products according to the provisions of Clause 2, Article 87 of the Law on Intellectual Property 2005;

(iii) Decision or establishment license, organizational charter certifying the function and authority to manage collective marks, quality certification marks, marks certifying geographical origin of goods and services according to the provisions of Clauses 3 and 4, Article 87 of the Law on Intellectual Property 2005;

(iv) Agreement, business registration, documents related to mark registration of co-owners according to the provisions of Clause 5, Article 87 of the Law on Intellectual Property 2005;

(v) Documents certifying that the applicant enjoys the right to register a mark from another person according to the provisions of Clause 6, Article 87 of the Law on Intellectual Property 2005;

(vi) Agreement, written consent of the mark owner confirming the right to register the mark of the representative or agent according to the provisions of Clause 7, Article 87 of the Law on Intellectual Property 2005 and Article 6septies of the Paris Convention.

- Documents proving the applicant's representative status: original authorization document of the applicant; Documents certifying that the applicant's representative is the legal representative of the mark registration organization or a person authorized by that person; documents certifying that the applicant's authorized person meets the requirements to act as the applicant's representative as prescribed in Article 4 of this Circular;

- Documents proving the right to use or register a mark containing special signs as prescribed in Clauses 2, 4 and 7, Article 73, Point p, Clause 2, Article 74 of the Law on Intellectual Property 2005; Documents proving the use of trademarks, indications of origin, awards, medals or distinctive signs of a certain product shall not mislead or deceive consumers, and shall not cause misunderstandings or confusion;

- Documents proving priority rights;

- Documents to prove the control and certification functions of the organization registering the certification mark;

- Necessary information to clarify or confirm the contents stated in the regulations on the use of collective marks, regulations on the use of certification marks or in other single documents;

- Other appropriate documents to clarify the authenticity of the information in the application.

(4) Organizations with the right to register collective marks according to the provisions of Clause 3, Article 87 of the Law on Intellectual Property 2005 include:

- Cooperative alliances; cooperatives according to the provisions of the Cooperative Law, if members have independent production and business activities;

- Association according to the provisions of law on associations, if members of the association have independent production and business activities;

- Other collective organizations with 02 or more members established according to the provisions of law, in which members of that organization have independent production and business activities and have their own goods or services. .

(5) The organization that has the right to register a certification mark, as stipulated in Clause 4 of Article 87 of the Law on Intellectual Property 2005, is an organization with the function of controlling and certifying the characteristics (quality, origin, etc.) of goods or services bearing the mark. This organization can carry out the control and certification activities itself or delegate, lease, or authorize another organization to perform them in accordance with the functions prescribed by law. Alternatively, this authority may be recognized in the organization's business registration certificate, charter, establishment decision, or assignment decision, among others.

(6) Regulations on the use of collective marks and regulations on the use of certification marks must have the corresponding contents specified in Clauses 4 and 5 of Article 105 of the Law on Intellectual Property 2005. The applicant is responsible for ensuring that the information stated in the regulations is consistent with relevant legal provisions.

(7) Documents proving permission to register collective marks, certification marks containing place names, or other signs indicating the geographical origin of local Vietnamese specialties according to the provisions of Clauses 3 and 4, Article 87 of the Law on Intellectual Property 2005, including a document permitting use in accordance with the provisions at Point a and a map of the corresponding geographical area in accordance with the provisions at Point b of Clause 7, Article 24 of Circular 23/2023/TT-BKHCN.

- Document permitting the use of place names or other signs indicating the geographical origin of local specialties to register collective marks or certification marks containing such elements, issued by the following competent authorities:

(i) People's Committee of the province or centrally run city where the geographical area corresponding to the place name or other sign indicating the geographical origin of local specialties is located (in case the geographical area belongs to a locality);

(ii) All People's Committees of provinces and centrally run cities where there is a geographical area corresponding to a place name or other sign indicating the geographical origin of local specialties (in case the geographical area belongs to many localities).

- The map of the geographical area that corresponds to the geographic name or other indicative signs that indicate the geographical origin of local specialty products must fully reflect the information to the extent that the geographical region can be accurately identified and must be confirmed by the competent authority specified in point a of this provision.

(8) Determination of place names and other signs indicating the geographical origin of the product is carried out according to the following criteria:

- Signs indicating the geographical origin of a product are signs used for local products and have the meaning of indicating the geographical origin of the product (indicating that the product originates from that locality).

Signs indicating the geographical origin of a product are place names or local symbolic signs (images of typical local objects, such as symbols, maps, flags, coats of arms, landmarks, special local buildings, etc.), or it can be any other sign.

A place name can be a current or historical name or an official name or folk name of a geographical area that is being used to replace a current or widely known place name (determined according to administrative boundaries or geographical methods).

- A geographic name or distinctive symbol of a locality used for ordinary products (not specialty products) may or may not have the significance of indicating the geographical origin of the product, depending on the product and the actual use of the geographic name or distinctive symbol of the locality.

- Place names and local symbolic signs have the meaning of indicating the geographical origin of the product in the following cases:

(i) Being used for local specialties (special products, famous for certain characteristics, produced locally);

(ii) Being used for specific local crops and livestock and products processed from those crops and livestock;

(iii) Being used for products that exploit natural materials (coal, iron, steel, aluminum, cement, stone, salt, wood, etc.) locally;

(iv) Being used for products belonging to locally developed industries;

(v) Being used for specific services (reputable services associated with certain local characteristics;

(vi) Other cases are determined according to the product and the actual use of local place names and symbolic signs for the product.

- Place names and local symbols do not have the meaning of indicating the geographical origin of the product in the following cases:

(i) Has been used with a common and widely recognized mark function, i.e., gaining the meaning of indicating commercial origin (distinction) and losing the meaning of describing geographical origin, for example: Hanoi beer; Saigon beer;

(ii) The respective locality cannot be where the product is produced, e.g., Arctic tobacco, etc.

Place names and local symbolic signs that do not indicate the geographical origin of the product can be protected as regular marks without the need for permission from the local government.

- Geographic names and distinctive symbols of the locality widely known in general geography knowledge (e.g., names of provinces, cities, famous landmarks, scenic spots) that are used for ordinary products of the locality (including products that have business advantages but lack reputation or distinctive quality) and are used by many local businesses for their goods and services to describe the production location (but do not meet the criteria specified in points c and d of this provision) are signs that are not protected as marks but can be used as an additional element constituting a regular mark of corresponding organizations or individuals in the respective locality, provided that the geographic name is excluded from the scope of protection (not separately protected) and does not require permission from the local authorities.

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