1. Trademark Definition:
A trademark is a sign used to distinguish the goods and services of different organizations or individuals (According to Clause 16, Article 4 of the Intellectual Property Law 2005, amended and supplemented in 2009 and 2019, hereinafter referred to as the IP Law). In addition to this concept, a trademark must also be "A visible sign in the form of letters, words, drawings, images, including three-dimensional shapes, or a combination of these elements, expressed in one or more colors; capable of distinguishing the goods and services of the trademark owner from those of other entities".
Trademark registration is the procedure to request the Certificate of Trademark Registration from the National Office of Intellectual Property (NOIP) for the trademark owner to have the exclusive right to use the trademark in Vietnam in the field of business, or the product or service registered for protection. The trademark registration request is expressed on the trademark registration application form that the owner submits to the NOIP on a first-to-file basis. So, how to complete the trademark registration procedure accurately?
2. Right to Register a Trademark
For a trademark to be protected, it must meet certain conditions, including the right to register the trademark. Not everyone can register a trademark for a product or service on the market.
According to Article 87 of the Intellectual Property Law 2005, amended and supplemented in 2009, the following individuals and organizations have the right to register a trademark:
- Individuals or organizations that have the right to register a trademark for goods they produce or services they provide.
- Individuals or organizations that legally conduct commercial activities have the right to register a trademark for products they bring to the market but are produced by others, on condition that the producer does not use the trademark for the product and does not oppose the registration.
- A legally established collective organization has the right to register a collective trademark for its members to use according to the regulations on the use of collective trademarks. For signs indicating the geographical origin of goods and services, the organization entitled to register is the collective organization of organizations and individuals that produce and trade in that locality.
- An organization that has the function of controlling and certifying the quality, characteristics, origin, or other criteria related to goods and services has the right to register a certification trademark, on condition that it does not produce or trade in those goods and services.
- Two or more organizations or individuals have the right to jointly register a trademark to become co-owners, on condition that:
- The use of the trademark must be in the name of all co-owners or for goods and services in which all co-owners are involved in the production and business process.
- The use of the trademark does not mislead consumers about the origin of the goods and services.
Note: Individuals and organizations with the right to register a trademark, including those who have the right to file a trademark application, have the right to transfer the right to register a trademark to another organization or individual in the form of a written contract, for inheritance or succession according to the law, on condition that the organizations and individuals receiving the transferred right must meet the conditions for the corresponding right holder.
For trademarks protected in a country that is a member of an international treaty with provisions prohibiting the representative or agent of the trademark owner from registering that trademark, of which the Socialist Republic of Vietnam is also a member, that representative or agent is not allowed to register the trademark without the consent of the trademark owner, except for legitimate reasons.
3. Significance of Trademark Registration
Registering a trademark helps consumers distinguish a company's products and services from those of competitors.
A registered trademark is a crucial legal factor in building a brand for a company's sustainable development strategy, especially in advertising and marketing products.
A registered trademark encourages manufacturers to maintain product quality and avoid infringing on consumer rights.
It creates a basis for ownership and serves as a foundation for resolving product-related disputes.
A company's products with the ® symbol next to the trademark and registered in the National Trademark Register gain market credibility.
4. Classification of Goods and Services for Trademark Registration
Determining the category of goods and services associated with a trademark defines its scope of protection. This classification is based on the Nice Classification 11th Edition for trademark registration.
When filing a trademark application, it is necessary to specify the specific products and services associated with the trademark. The classification of goods and services is divided into 45 classes, with classes 1 to 34 covering goods and classes 35 to 45 covering services.
These products and services are specifically listed in the 45 classes according to the Nice Agreement 10.
4.1. HS Codes - Commodity Groups
Group 1: Chemicals used in industry, science, photography, agriculture, gardening and forestry; Raw synthetic plastics, raw elastomers; Fertilizers; Fire extinguishing compositions; Preparations for tempering, soldering and welding metals; Preparations for preserving foodstuffs; Tanning substances; Adhesives used in industry.
Group 2:Paints, varnishes and lacquers; Preservatives against rust and deterioration of wood; Dyestuffs; Mordants; Natural resins in the raw state; Metals in leaf and powder form for use in painting, decorating, printing and art.
Group 3: Bleaching preparations and other substances for laundry; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.
Group 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
Group 5: Pharmaceutical and veterinary products; Sanitary products for medical purposes; Dietetic foods for medical purposes, baby food; Adhesive plasters, materials for dressings; Materials for stopping teeth and dental wax; Disinfectants; Products for destroying harmful animals; Fungicides, herbicides.
Group 6. Common metals and their alloys; Metal construction materials; Transportable metal structures; Metal materials used for railways; Metal cables and wires are not normally used to conduct electricity; Hardware and small items made of iron; Metal pipes and tubes; Safe deposit box; Metal products are usually not included in other groups; Metal ores.
Group 7: Machines and machine tools; Motors and prime movers (excluding engines for land vehicles); Couplings and transmission elements (excluding for land vehicles); Agricultural implements (not manually operated); Incubators.
Group 8. Hand tools and hand-held implements operated manually; Knives, scissors, forks and spoons; Edged weapons; Razors.
Group 9. Scientific, marine, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, testing, controlling, monitoring, emergency and teaching equipment and instruments, equipment and instruments and instruments used to transmit, switch, transform, store, regulate or control electrical energy; Apparatus for recording, transmitting and reproducing sound or images; Magnetic data carrier, recording disk; Vending machines and devices for operating devices when inserting coins or cards; Cash registers, calculators, data processing equipment and computers; Fire extinguishing equipment.
Group 10. Surgical, medical, dental and veterinary equipment and instruments, artificial limbs, eyes and teeth; Orthopedic devices; Wound suturing materials.
Group 11: Apparatus for Lighting, Heating, Steam Generating, Cooking, Refrigerating, Drying, Ventilating, Water Supply and Sanitary Purposes
Group 12. Vehicles; Means of transportation on land, air, or water.
Group 13: Firearms and Explosives, Ammunition and Projectiles, Detonating Materials, Fireworks.
Group 14: Precious metals and their alloys, goods made of these metals or clad with these metals not elsewhere classified; Jewelry, goldsmiths' wares and precious stones; Watches and clockmaking.
Group 15. Musical instruments.
Group 16: Paper, paperboard and articles of these materials, not elsewhere specified or included; Printed matter; Bookbinding materials; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Writing instruments; Office machines and equipment (excluding furniture), excluding machines of heading 84.7; Instructional and teaching materials (excluding equipment used for this purpose); Plastic sheets, films and bags for wrapping and packaging (not classified in other groups); Printers' type, printing blocks.
Group 17: Rubber, gutta-percha, gum, asbestos, mica and products made from these materials and not included in other classes; Semi-finished products of plastic used in manufacturing; Materials for packing, stopping and insulating; Flexible pipes, not of metal.
Group 18: Leather and artificial leather, goods made of these materials and not classified elsewhere; Animal skins; Raw hides; Trunks, suitcases, valises and travel bags; Umbrellas, parasols and walking sticks; Whips and saddlery.
Class 19: Non-metallic building materials; Non-metallic rigid pipes for building; Asphalt, pitch and bitumen; Transportable non-metallic structures and components; Non-metallic monuments.
Group 20:Furniture (tables, chairs, beds, cabinets, shelves, etc.), Mirrors, Photo frames, Products (not classified elsewhere) made of wood, rattan, bamboo, reed, wicker, willow, horn, bone, ivory, whalebone, scales, amber, mother-of-pearl, sponge, and articles made of these materials, or of plastics.
Group 21: Household and Kitchen Utensils and Containers; Combs and Sponges; Brushes (except Paint Brushes); Brush-making Materials; Cleaning Materials; Steel Wool; Unworked or Semi-worked Glass (excluding Building Glass); Glassware, Ceramics and Porcelain not Otherwise Specified.
Group 22: Cords, string, netting, tents, tarpaulins, sails, sacks and bags (not included in other headings), padding and stuffing materials (except of rubber or plastics), raw fibrous textile materials.
Group 23. Yarns Used for Weaving
Group 24. Textiles and woven fabrics not classified elsewhere; Tablecloths and bedspreads.
Group 25. Clothing, footwear, and headwear.
Group 26: Trimmings and Embroidery Supplies, Ribbons and Bands; Buttons (including snap, toggle, and sewing buttons), Needles (including sewing and safety pins); Artificial Flowers.
Group 27. Carpets, mats, doormats, linoleum and other floor coverings, wallpaper (except those made of textiles).
Group 28: Games, Toys, Sporting Goods, and Christmas Decorations
Group 29. Meat, fish, poultry and game; Meat extract; Vegetables and fruits are preserved, dried or cooked; Frozen fruit juice, jam, jam; Eggs, milk and products made from milk; Vegetable oils and cooking fats.
Group 30: Coffee, tea, cocoa, and substitutes thereof, Rice, tapioca, sago, and flour made from cereals, Bread, pastries, cakes, and confectionery, Sugar, honey, molasses, and syrups, Yeast and baking powder, Salt, soy sauce, vinegar, and dressings, Various spices and herbs, Ice cream, sorbets, and other edible ices.
Group 31: Products and grains of agriculture, horticulture and forestry not classified in other groups; Live animals; Fresh vegetables and fruits; Seeds, plants and fresh flowers; Animal feed, malt.
Group 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit and vegetable juices; Syrups and other preparations for making beverages
Group 33: Alcoholic beverages (except beer).
Group 34. Tobacco; Articles for smokers; Matches.
4.2. Trademark Registration Service Groups
Group 35: Advertising; Business management; Business administration; Office functions.
Group 36: Insurance; Financial affairs; Monetary affairs; Real estate.
Group 37: Construction; Repair; Installation.
Group 38: Telecommunications.
Group 39: Transportation; Packaging and storage of goods; Travel.
Group 40: Material processing.
Group 41: Education; Training; Entertainment; Organization of sporting and cultural events.
Group 42: Scientific and technological services and related research and design; Industrial research and analysis services; Design and development of computer hardware and software;
Group 43: Food and beverage services; Temporary accommodation.
Group 44: Medical services; Veterinary services; Hygiene and beauty care for humans or animals; Agricultural, gardening and forestry services.
Group 45: Legal services; Security services for the protection of persons and property; Personal and social services provided by others to meet the essential needs of individuals;
5. Documents Required for Registering an Exclusive Trademark
A trademark registration file is a document submitted to the Registration Authority to serve as the basis for evaluating the application before agreeing or refusing to grant a trademark registration certificate to the applicant. The trademark registration file includes the following documents:
- Trademark file to be registered (image file) - Provided by the customer
- Product and service groups for which the trademark needs to be registered - Customer provides information, we will classify according to the regulations of the Law
- Information of the trademark owner (according to the business registration certificate; identity card) - Provided by the customer
- Power of attorney for Thien Di to represent the implementation of the work - We draft and the customer signs & stamps (if it is a legal entity)
- Trademark application form - We draft and instruct the customer to sign
The above documents are the basic documents for registration. In addition, depending on the case, there will be other accompanying documents such as when customers register a collective trademark, a certification trademark will need to add some of the following documents:
- Regulations on the use of collective trademarks/certification trademarks;
- Explanation of the specific characteristics (or specificities) of the product bearing the trademark (if the registered trademark is a collective trademark used for products with specific characteristics or a trademark certifying the quality of the product or a trademark certifying the geographical origin);
- Map identifying the territory (if the registered trademark is a trademark certifying the geographical origin of the product).
Regarding trademark registration procedures, there are many issues that organizations, businesses, and individuals need to research and understand. The vast majority of people, when having questions or concerns related to legal issues, often seek the support of the Google search engine. However, because Google updates information from many different sources and does not have the right to verify the accuracy, it can lead to organizations, businesses, and individuals performing the wrong procedure for registration protection.
6. Guidelines for Product Trademark Registration Procedures at the National Office of Intellectual Property (NOIP)
Step 1: Trademark Search
Before registering a trademark, it is necessary to conduct a trademark search. The purpose of this is to check whether the trademark that the customer intends to register is identical or similar to other trademarks that have already been registered. Based on the search results, Thiên Di will assess the protectability of the trademark and provide a solution on how to modify it to create distinctiveness and meet the protectability requirements according to regulations.
Trademark search is crucial before proceeding with trademark registration because if there is a missed search or lack of expertise to accurately assess, the likelihood of the trademark being rejected after registration is high. That is why you will need to contact specialized units in the field of Intellectual Property to ensure that your trademark is assessed for its protectability as fully and as best as possible before filing an application.
Step 2: Prepare and Submit a Trademark Registration Application
After conducting the trademark search, if the trademark has a high probability of being registered and protected, Thiên Di will proceed to prepare and file the application for the customer.
The application includes: 02 forms 04-NH; 05 trademark samples; Relevant documents; Fee payment vouchers;
Fee payment vouchers: Fees can be paid directly at the NOIP or authorized to be paid through a bank into the account of the NOIP. The fee is calculated based on the number of groups and the number of products and services in the group declared in the trademark registration application. The fees include:
Application fee, Application publication fee, Content examination fee, Certificate issuance fee, Gazette registration fee
Step 3: Return the submitted application results to the customer and track the application until the trademark is granted a protection certificate
After submitting the application, Thiên Di will send the customer the trademark registration application with a specific application number and receipt date so that the customer and Thiên Di can also track the application.
Since the date of receipt by the NOIP, the trademark application will be considered in the following order:
- Formal examination: 01 month
- Application publication: within 02 months from the date the trademark application has a Decision on acceptance of a valid application
- Content examination: not exceeding 09 months from the date of application publication. In fact, the content examination time usually lasts about 22 months from the date of application.
7. Conditions for Trademark Protection
According to Clause 1 and 2 of Article 72 of the Intellectual Property Law, the mandatory conditions for trademark protection include:
7.1. The trademark must be a visible sign
The trademark must be a visible sign as defined in Clause 1 of Article 72 of the Intellectual Property Law in the form of:
- Letters, words
- Drawings, images, three-dimensional shapes
- Or a combination of the above elements expressed in one or more colors
These are signs that can be seen by the naked eye and are expressed by the above elements, then they will meet the conditions for trademark protection under the Intellectual Property Law.
7.2. The trademark must have the ability to distinguish to be eligible for protection
The trademark must have the ability to distinguish as prescribed in Clause 2 of Article 72 of the Intellectual Property Law to be eligible for protection:
- Must be created from one or a number of easily recognizable, easy-to-remember elements or many elements combined into an easily recognizable, easy-to-remember whole.
- A trademark is considered to have the ability to distinguish if it does not belong to the following signs:
- Simple shapes and geometry, numbers, letters, letters in uncommon languages.
- Signs, conventional symbols, drawings or common names of goods and services in any language that have been widely used, regularly and known to many people.
- Signs only indicating the time, place, method of production, type, quantity, quality, nature, composition, function, value or other descriptive characteristics of goods and services.
- Signs describing the legal form and business field of the business entity;
- Only the geographical origin of goods and services.
- Signs that are not associated trademarks identical or similar to the point of confusion with registered trademarks.
- Identical or similar to the trademark of another person that has been used and widely recognized for goods and services.
- Identical or similar to a trademark that has been protected or has expired for less than 05 years.
- Identical or confusingly similar to a trademark that is considered well-known.
7.3. Signs that a trademark is not eligible for protection
A trademark will not be protected if it exhibits any of the signs listed in Article 73 of the Intellectual Property Law, specifically:
- Being identical or confusingly similar to:
- The national flags or emblems of other countries;
- The symbols, flags, badges, abbreviations, or full names of state agencies, political organizations, socio-political organizations, socio-professional organizations, social organizations, socio-professional organizations of Vietnam, and international organizations (unless authorized by such agencies or organizations).
- Being identical or confusingly similar to:
- The real name, nickname, pen name, or image of leaders, national heroes, and celebrities of Vietnam and other countries.
- Being identical or confusingly similar to:
- The certification marks, inspection marks, or warranty marks of international organizations (unless authorized by such organizations).
- Misleading the public about the origin, characteristics, functions, quality, value, or other properties of goods or services.
- Confusing or deceiving consumers about the origin, characteristics, functions, quality, or value of goods or services.
The above are all the conditions for a trademark to be protected under the law. Owners should be careful to avoid falling into the above cases, which can lead to their trademark being rejected for protection and wasting their time.
*Note: To best identify these signs, it is necessary to conduct a trademark search. This will help us know if the trademark is identical or similar to any trademarks that have been previously protected. This is not a mandatory procedure, and many owners have subjectively not performed it, resulting in a waste of time and money.
8. Regulations on Amending and Supplementing Trademark Registration Applications
According to Article 15 of the Intellectual Property Law 2005, amended in 2009, the applicant can amend or supplement the application before the Intellectual Property Office issues a decision to reject the application or before the decision to refuse to grant a protection title. Or before the decision to grant a protection title is issued.
9. Certificate of Trademark Registration
10. Cost Estimation for Trademark Registration Service in 2022
The cost of trademark registration includes the following fees:
Application fee: 150,000 VND (approximately $6.4 USD)
Publication fee: 120,000 VND (approximately $5.1 USD)
Search fee for the National Court: 180,000 VND (approximately $7.7 USD) per group of goods or services
Search fee for the 7th product/service onwards: 30,000 VND (approximately $1.3 USD) per product/service
Content assessment fee: 550,000 VND (approximately $23.6 USD) per group of goods or services
Content assessment fee for the 7th product/service onwards: 120,000 VND (approximately $5.1 USD) per product/service.
Note: This fee may change depending on the year or specific time.
For detailed information on trademark registration service fees at Thien Di, please call the hotline: 0981317075 or send an email to: info@luatthiendi.com for consultation and quotation.
11. Reputable and Professional Trademark Registration Consultancy Service in 2022
Thien Di is a company specializing in research in the field of justice and consultancy on food, functional food, cosmetics, animal feed, aquatic feed, and intellectual property. We pride ourselves on always providing the best quality service to our customers. Thien Di always strives to improve its capacity and continuously researches to bring optimal solutions to customers.
With a team of experienced and enthusiastic doctors, lawyers, engineers, and bachelors, Thien Di will create peace of mind and satisfaction for customers. Thien Di is always open and listens to the opinions, requests, and questions of customers to provide effective solutions that lead to success.
Committed to providing optimal and effective services, "Thien Di quality is strength."
12. Trademark Registration Service at Thien Di
To help you understand the work involved in our trademark registration service, we have listed the steps we take when registering a trademark for a client:
- We provide advice on choosing a suitable trademark name that has a high chance of being registered.
- We conduct a prior search to assess the registrability of the trademark before filing the application.
- We act on behalf of the client to file the trademark application with the National Office of Intellectual Property (NOIP).
- We monitor the application throughout the examination process, from filing to receiving the Certificate of Trademark Registration from the NOIP.
- We receive the Certificate of Trademark Registration and deliver it to the client.
13. Reasons to choose Thiên Di's services:
Enthusiastic and timely customer support in all situations.
Our team consists of:
- Experienced and professional experts and staff.
- Regularly updated on new regulations and policies.
- Continuously trained to improve professional skills and work experience.
- Capable of handling high work pressure.
- Always dedicated to self-improvement and professionalism, aiming for absolute customer satisfaction.
Human Resources
Human resources are the key to the success of any business. Therefore, Thien Di always focuses on building and developing a professional, serious, and customer-friendly human resource team - which has been the compass for our success over the past time.
Thien Di provides services for medical equipment import procedures, medical equipment classification services, application for medical equipment import licenses, import licenses for medical equipment, etc. in Vietnam. Currently, we provide this service in most provinces and cities across the country, completing the application and procedures on behalf of clients to submit to state agencies, so clients will not have to spend time doing administrative procedures.
Contact us today to learn more about our services or to request a free consultation.
Contact Info:
THIEN DI TRADING SERVICES COMPANY LIMITED
Address: No. 36 Street A4, Ward 12, Tan Binh District, Ho Chi Minh City
Hotline: 0981317075
Phone: 028.6293 9377
Email: info@luatthiendi.com
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