Trademark is one of the factors that reflects the prestige and quality of goods and services and is also a sign used to distinguish goods and services of different individuals/organizations. As a result, the trademark is considered as one of the biggest intangible assets of an individual or organization. Therefore, many individuals and organizations are interested in procedures for registering protection of their trademarks at a competent state agency, including the process of granting a protection title.
The purpose of trademark search is to check whether trademark is similar or identical with other trademarks or not. The result of searching will show
- Possibility of registration of trademark; and
- Parts/Contents of trademark which need to be changed if the trademark is similar or identical with others.
The trademark search is the most important step in the registration process because trademark will be rejected and the applicant fee will not be returned if there is no expertise searching and evaluating the capability for protection and registration of trademark. Therefore, it is necessary to consult the lawyer specializing in Intellectual Property for registration of trademark.
The trademark search can be done on the online database of the NOIP at website: http://iplib.noip.gov.vn/WebUI/WSearch.php. However, the results taken from this website are for reference only because it is completely free. Bizlawyer is providing intensive study service on trademark which will make sure that the result from searching will be over-90% accurate
Step 2: According to provisions of 2005 Intellectual Property Law and guiding legal instruments, National Office of Intellectual Property (“NOIP”) will examine and verify an organization’s/individual’s trademark registration application in the following order:
Stage 1: Formal examination of the application
(1) Processing Time-limit: 01 month from the date of receipt of the application (Article 1.15 of 2009 Amended Intellectual Property Law)
The NOIP will check whether the application is eligible for conditions in terms of form, label sample, application owner, right to filing, classification of goods and services, etc. or not. If the application satisfies these conditions, the NOIP will issue a notice of acceptance of the valid application and publish it. The time limit for publication is 02 months from the date of such notice (Article 110.3 of the 2005 Intellectual Property Law).
Stage 2: Substantive examination of the application
- Processing Time-limit: 09 months from the date of the publication of the application (Article 1.15 of the Amended Intellectual Property Law 2009).
The NOIP shall assess the ability to grant a protection title for the individual’s/organization’s trademark after it considers conditions for trademark registration prescribed by law. If the application satisfies all these conditions, the NOIP shall issue a notice of intention to grant the protection title for its trademark.
If the application does not meet the conditions, the NOIP shall issue a notice of refusal to grant the protection title for the trademark. In case of disagreement with this decision of the NOIP, the applicant may complain about it in writing and provide evidence to prove that its trademark is eligible for being granted the protection title.
After the decision on granting the title, the individual/organization shall pay fee for granting the title and then receive the protection title. The time limit for granting the title is from 02 to 03 months from the date of paying the fee.
Under Article 93.6 of the 2005 Law on Intellectual Property, the protection title is effective from the date of its issuance, the validity period is 10 years from the filing date. The individual/organization may renew it for many consecutive 10-year periods . Therefore, the trademark will be an asset throughout the business operation of individual/organization
Trademark is an asset of the enterprise, different from other visible assets such as machinery, equipment, inventory products, and real estate. The trademark is only a sign used to distinguish goods or services of different organizations and individuals. However, the value of trademark can be extremely huge, even much greater than that of visible assets. Therefore, trademark protection is always the concern of enterprises. This article will help you understand more about trademark protection in accordance with Vietnamese law
I. Applicable laws
- Law on Intellectual property 2005;
- Decree No. 103/2006/ND-CP;
- Circular No. 01/2007/TT-BKHCN;
- Circular No. 13/2010/TT-BKHCN;
- Circular No. 16/2016/TT-BKHCN; and
- Circular No. 263/2016/TT-BTC
II. Term of trademark protection
Depending on type of the trademarks, trademark protection term is determined differently, specifically:
- The normal trademark is protected after the issues the protection title (“Trademark registration certificate” or “TRC”). According to Article 93 of Law on Intellectual property 2005, TRC is valid in 10 years from the date of application, it may be extended several times consecutively, every ten years.
- The well-known trademark is protected after it is widely used, its owner does not carry out registration procedures as the normal trademark. However, this does not mean that the well-known trademark will be protected forever. The protection of the well-known trademark will depend on the owner’s proof of “whether the well-known trademark meets criteria for being well-known” or not, such as scope, scale, level and continuity of the use of the trademark; the number of nations in which the trademark has been registered or recognized as a well-known trademark; and the list of goods and services bearing the trademark (Clause 42 of Circular 01/2007/TT-BKHCN; Clause 35 Article 1 of Circular 16/2016/TT-BKHCN).
III. Procedure for extension of trademark protection period
1. Deadline for extending the trademark protection term (According to Point 20.4 of Circular No. 01/2007/TT-BKHCN)
- Within six months before the expiration date of Trademark Protection Certificate (“TRC”), the owner must apply for extension of TRC; and
- This extending period can be delayed for no more than six months after the expiration date of TRC but the TRC holder shall pay plus 10% the extension fee for each month of the delay
2. Requisite applications (According to Point 20.4 of Circular No. 01/2007/TT-BKHCN; Clause 5 Article 2 of Circular 13/2010/TT-BKHCN)
- A written declaration to request extension of TRC, as in the form 02-GHVB prescribed in Appendix C of Circular No. 01/2007/TT-BKHCN;
- The original TRC (if the extension is requested to be recorded in TRC);
- The power of attorney (In case of applying through a representative); and
- The notarized copies of receipts for fees and/or charges (in case of paying fee and charge via postal services or directly into the account of NOIP).
3. Fees and charges (According to Point 3.1, Section A; Point 1.6, 4.1, 4.2, 5.1, Section B of Circular No. 263/2016/TT-BTC):
- The fee for extension of TRC: VND 000/group of products, services;
- The charge for assessment of TRC extension request: VND 000/TRC;
- The charge for declaration of information about industrial property: VND 120.000/TRC;
- The charge for registration of information about industrial property: VND 120.000/TRC; and
- The charge for use of TRC in 10 years?: VND 000/group of products, services
4. Licensing authority: NOIP
A protection title is a document granted by competent agency to an organization or individual to establish industrial property rights to a trademark. This is the only certificate improving industrial property rights to trademark. Therefore, many potential clients are interested in procedures for re-issuance of protection title which was lost or damaged
According to Article 1.17(b) of Circular No. 16/TT-BKHDT, the industrial property rights owner may request National Office of Intellectual Property (“NOIP”) to regrant the protection title in the following cases:
- The protection title is lost; or
- The protection title is damaged, torn, stained or faded so that it can no longer be used, or be separated thereby breaking the seal
In brief, when the protection title is lost, you may request to regrant it. Bizlawyer will help you to understand procedures relating to this problem as follows
1. Components of application
- A proposal application for regranting of the protection patent;
- 02 specimens of trademark design drawings identical to the specimens of trademark in the original protection title;
- An authorized letter (in case the application is sent by representative); and
- A copy of t receipt (in case fees are paid by post or directly to the NOIP’s account).
2. Number of the application: 01 set
3. Licensing authority: National Office of Intellectual (“NOIP”) – Ministry of Science and Technology.
4. Processing time: One month after receiving the application
5. Sequence and procedures:
- Within one month after receiving the complete and valid application, IPO shall consider the request for regranting the protection title:
- If the application satisfies conditions in terms of number of documents, form and content, IPO shall issue a decision on regranting the protection title.
If the application fails to satisfy the requirements above, IPO shall make a decision on refusing to regrant the protection title
Hopefully, this article is useful to you. Should you have any question about intellectual property law or trademark registration, please contact us via our email: orHotline for timely advice and support.
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- trademark registration
- procedure for trademark registration
- mark registration
- intellectual property law
- intellectual property