Register for trademark protection by current law

Currently, many businesses are still not aware of the importance of using trademarks to distinguish their products from those of competitors and have not registered for protection, leading to the present status of being plagiarized by other companies. Therefore, the article Registering for trademark protection by current law will help us understand trademark protection and know about the necessary documents and procedures for effective implementation.

Why is it necessary to register for trademark protection?

Why is it necessary to register for trademark protection?

First of all, we need to know what a trademark is and the conditions to register for trademark protection. In the Law on Intellectual Property 2005 amended and supplemented in 2009, No. 36/2009/QH12 dated 19/06/2009 regulates: 

“Mark means any sign used to distinguish goods or services of different organizations or individuals”.

According to the provision of the Intellectual Property Law, a trademark is an identification sign to identify who is engaged in production, business or service provision in a particular industry. The registration of trademark protection will help businesses avoid the situation of being used by other businesses or other trademarks that are likely to confuse with their brand to do business for profit or conduct acts that are detrimental to your business.

The registration of trademark protection will help businesses be protected before the law, creating a legal basis to protect their legitimate rights against unauthorized use of the mark. Therefore, individuals, organizations and businesses need to register for trademark protection when they have all the conditions prescribed by law to limit adverse situations that may occur.

Conditions for trademark protection

Not all organizations or individuals who want to be granted a protection title by the state for their company’s mark can do so. The protection must first need the general conditions under Article 72 of the Law on Intellectual Property 2005 amended and supplemented 2022 No. 07/2022/QH15 dated June 16, 2022 as follows:

• It is a visible sign in the form of letters, words, drawings, images, holograms, or a combination thereof, represented in one or more colors or sound trademark that can be graphically presented.
•  It is capable of distinguishing goods or services of the mark owner from those of other subjects.

In addition, depending on the different types of marks, the law stipulates several other specific conditions and criteria that need to be met, such as: Well-known trademarks do not need to be registered for protection, just used, widely recognized and widely meet the conditions specified in Article 75 of the Law on Intellectual Property 2005 as amended and supplemented 2022.

Dossier of registration of trademark protection

According to Article 100 of the Law on Intellectual Property 2005 amended and supplemented 2022; Clause 7.1 Article 7 of Circular 01/2007/TT-BKHCN guiding the implementation of the government’s decree No. 103/2006/NĐ-CP of September 22, 2006, detailing and guiding the implementation of several articles of the law on intellectual property regarding industrial property, amended and supplemented by Circular 16/2016/TT-BKHCN, Circular 13/2010/TT-BKHCN and regulations of the National Office of Intellectual Property, the documents to be prepared are as follows:

• 02 Declaration for registration made according to form No. 04-NH Appendix A of Circular 01/2007/TT-BKHCN amended and supplemented by Circular 16/2016/TT-BKHCN;
• 09 sample marks attached (Article 37.5 of Circular 01/2007/TT-BKHCN);
• Copies of fee and charge receipts (for paying fees via post services or directly paying into the account of the National Office of Intellectual Property);
• According to Article 37.7 of Circular 01/2007/TT-BKHCN, in case a trademark registration application is a collective mark or a certification mark, in addition to the minimum documents mentioned above, the application must also contain the following documents:

o  Rules on the use of the collective mark/certification mark;

o  Explanation of particular characteristics and quality of the product bearing the mark (if the to-be-registered mark is a collective mark used for a product with unique characteristics or a mark for certification of the quality of a product or a mark for certification of geographical origin);

o  Geographical maps;

o The written permission for use of a geographical name or other geographical indications of local specialties for registration of collective or certification trademarks contained by the provincial People’s Committee as prescribed in Point 37.7 a of this Circular;

• Other documents (if any)

o  Power of attorney (if applying for notification registration through industrial property representation service organizations);

o Documents certifying the use of special signs (if the trademark claimed for protection contains symbols, flags, badges of domestic and international agencies and organizations, etc.);

o   Documents confirming the right to register;

o   Documents confirming the right to register from another person;

o Documents proving the right of priority (if the application has a claim for priority right).

Process of registration of trademark protection

Process of registration of trademark protection

According to Article 11 of Circular 01/2007/TT-BKHCN amended and supplemented by Circular 16/2016/TT-BKHCN, Trademark registration applications will be submitted to the National Office of Intellectual Property and processed according to the following process:

• Receipt of applications;
• Formality examination of applications;
• Publication of valid applications;
•  Substantive (ex-officio) examination of applications;
• Grant of or refusal to grant protection titles;
• Official registration and publication of decisions on the grant of protection titles.

There are general procedures when registering for trademark protection in Vietnam. However, for an international trademark registration application designating Vietnam, the order and procedures for handling are specified separately in Clause 6, Article 41 of Circular 01/2007/TT-BKHCN amended and supplemented by Circular 16 2016/TT-BKHCN.

Therefore, when performing the registration of trademark protection, we need to determine the specific documents and procedures necessary to avoid the situation of incomplete preparation of documents as well as identifying the wrong process that leads to time-consuming as well as prolonging the time limit for trademark registration.