Right to register trademark in Vietnam
In general, an entity or individual shall be entitled to file an application for a trademark to be used for the goods or services produced or supplied by such entity or individual. Vietnam adopts the first-to-file principle, which grants exclusive trademark rights to the first party that applies for registration of the mark.
An entity or individual legally engaged in the trade of a product manufactured by a third party shall be entitled to file an application for a mark to be used for such product, provided that the manufacturer neither uses such mark for the product nor objects to such filing. This right-to-file principle serves as a ground for initiating a trademark opposition and/or trademark cancellation in Vietnam in case a third party files or registers a trademark of a legitimate owner on bad faith.
Methods of filing an application for registration of establishment of industrial property rights to inventions
Trademark can be protected in Vietnam by filing an application for registration directly with the IP Office of Vietnam or by filing an International Application under Madrid system.
The application for a mark registration must be filed directly or by mail, to the IP Office of Vietnam or its brand offices in Ho Chi Minh City or Da Nang:
Foreign applicants can obtain a mark registration in Viet Nam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Viet Nam through the Madrid Agreement or the Madrid Protocol or both of them.
First-to-file principle
Vietnam operates under a ‘first-to-file’ system. Hence, it is important to register trademarks in Vietnam as early as possible. In such respect, monopoly trademark-based rights are conferred to the person who is the first to file a trademark application for registration thereof. If there are 2 or more applications for registration of the same mark, for the same goods and/or services, under the same priority conditions, all of the applicants are required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused. In addition, in case there are several applications filed by the same person for identical trademarks for identical goods/services, a trademark registration may only be granted for a trademark claimed in a valid application having the earliest date of priority or filing date among the applications that satisfy all the conditions for registration.
Priority principle
Per Article 90 of Vietnam IP Law, trademark applicants for subsequent trademark application are allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or such a member country.
As Vietnam is party to the Paris Convention for the Protection of Industrial Property (“Paris Convention”), applicants for trademark registration are entitled to a ‘right of priority’ if the same filing has been made within the last six (6) months in any other country which is also a party to the Paris Convention.
For trademark filing in Vietnam to claim priority based on Paris Convention, the applicant is required to submit a certified copy of priority document for claiming priority right under the Paris Convention (if any) (priority data are acceptable at filing, provided that the certified copy is submitted within 3 months from the filing date).
