Registering trademark

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What is a trademark?

A trademark is a distinctive sign which distinguishes the goods or services produced or provided by one enterprise those of another.

In general, any distinctive words, letters, numerals, drawings, colours, pictures, shapes, logotypes, labels, or combinations of the above used to distinguish between the goods and services of different companies may be considered a trademark. In some countries, advertising slogans are considered to be trademarks and may be registered as such at national trademark offices. An increasing number of countries also allow for the registration of less traditional forms of trademark, such as three- dimensional signs (e.g. the Coca-Cola bottle or the Toblerone chocolate bar), audible signs (sounds, such as the roar of the lion that precedes films produced by MGM) or olfactory signs (smells, such as perfumes). But many countries have set limits as to what may be registered as a trademark, generally allowing only signs that are visually perceptible or can be represented graphically.

The main functions of a trademark are:

To enable consumers to identify a product (whether a good or a service) of a particular company so as to distinguish it other identical or similar products provided by competitors. Consumers who are satisfied with a given product are likely to buy or use the product again in the future. For this, they need to be able to distinguish easily between identical or similar products,

To enable firms to differentiate their products those of their competitors. Trademarks thus play a pivotal role in the advertising and marketing strategies of companies in defining the image and reputation of the company's products in the eyes of consumers

Also to provide an incentive to companies to invest in maintaining or improving the quality of their products in order to ensure that products bearing the trademark have a positive reputation.

What are the different types of marks?

Trademarks

Trademarks are distinctive signs used to distinguish the goods or services of one enterprise those of others.

Service Mark

A service mark is very similar in nature to a trademark. Both are distinctive signs; trademarks distinguish the goods of one enterprise those of others, while service marks distinguish the services of one enterprise those of others. Services may be of any kind, such as financial, banking, travel, advertising or catering, to name a few. Service marks can be registered, renewed, cancelled, assigned and licensed under the same conditions as trademarks.

Collective Marks

A collective mark is generally owned by an association or cooperative which itself does not use the collective mark but whose members may use it to market their products. The collective body which owns the mark exclusively grants its members the right to use it if they comply with the requirements fixed in the regulations concerning the use of the collective mark (e.g. quality standards, geographical origin). A collective mark may be an effective way of jointly marketing the products of a group of enterprises that may individually find it more difficult to make their individual marks recognized by consumers and/or distributed by the main retailers.

Certification Marks

Certification marks are given for compliance with defined standards, but are not confined to any membership. They may be used by anyone who can certify that the products involved meet certain established standards. In most countries, the main difference between collective marks and certification marks is that the former may be used only by a specific group of enterprises (eg. members of an association), while certification marks may be used by anybody who complies with the standards defined by the owner of the certification mark.

An important requirement for certification marks is that the entity that applies for registration be considered 'competent to certify' the products concerned. A famous example of a certification mark is the Woolmark, which can be used only on items that are proven to be made of 100% wool. For more on certification mark.

Well-known marks

These are marks that are considered to be well-known by the competent authorities of a given country.' 'Well-known marks' generally benefit stronger protection. For example, they will be protected even if they are not registered (or have not even been used) in a given territory. In addition, while marks are generally protected against confusingly similar marks only if used for identical or similar products, well-known marks are often protected against confusingly similar marks used even for unrelated products, if certain conditions are met. The main purpose of this stronger protection is to prevent companies free-riding on the reputation of a well-known mark and/or causing damage to its reputation and goodwill.

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Please kindly help fulfill following documents for filing process

The original Power of Attorney will be needed not later than 01 month the date of filing Vietnamese version. For non-PCT applications, if original Power of Attorney is not available at the filing time, the fee for late submitting the document will be charged by Vietnam National Office of Intellectual Property (NOIP).

Specifications of the invention/utility solution including the title, description, claims, abstract and drawings (if any) in English. Since it is compulsory to include Vietnamese version of the specifications in your first filing application dossiers in Vietnam, it would be appreciated to provide your instruction letter and English specification at the soonest for translation work. A good practice is 03 months before filing deadline.

Certified copies of priority documents (if you apply for priority under the Paris Convention) not later than 01 month the date of filing Vietnamese version date.

For PCT applications entering the Vietnam National Phase, apart the above documents, please kindly provide some extra documents: PCT publication, International Preliminary Examination Report (PCT/IPER/409) (if any), Notification of the Recording of a Change (PCT/IB/306) (if any), International Search Report (PCT/ISA/210)… For PCT applications, we can download the specification the WIPO database if you provide us with PCT application number or publication number.

Successful registration

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Working process

Step 1

Classification of objects for registration of intellectual property rights

Step 2

Identify the agency receiving the application for intellectual property registration

Step 3

Preparing documents for registration of intellectual property protection

Step 4

Submit application for registration at the registrar

Step 5

Receive an intellectual property registration certificate the authorities

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General knowledge

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Please kindly be reminded that

Term for PCT applications to enter the Vietnam National Phase is 31 months the priority date.

Deed of Assignment and the Vietnamese translation of the priority document is not compulsory, but may be required by the National Office of Intellectual Property case by case.

A request for substantive examination must be filed within 42 months for invention and 36 months for utility solution the first priority date.

It takes 01 month for formality examination the filing date and for substantive examination is 18 months the publishing date or the request date depending on if the request for substantive examination is filed before or after the publishing date.

Valid patent applications are published in the 19th month priority date or Vietnamese filing date (if no priority is claimed), or within 02 months the date of official acceptance of applications, depending on which date comes later. You should make a request for early publication to accelerate the examination process. However, the fee for early publication request will be charged accordingly.

A patent comes effect the granting date. The validity term of a patent is 20 yearsfor invention and 10 years for utility solution the regular filing date.