What is the procedure of trademark protection?

My company was established at the end of 2019. I want to register the trademark protection in the field of construction design. So, what can I prepare for this procedure?

FDVN’s opinions:

Thank you for concerning and trusting in FDVN’s legal services. We have studied the law provisions to provide you with our advice. Please kindly see the answer below:

 [1]. Regarding registering trademark protection:

Under the provisions of Section 5 of Circular 01/2007/TT-BKHCN amended and supplemented by Circular 18/2011/TT-BKHCN and Circular 06/2016/TT-BKHCN,to apply for trademark protection, your company needs to prepare 01 sets of documents as follows:

1. 02 declaration as regulated in form 04-NH, Appendix A of the Circular 16/2016/TT-BKHCN.

• The section of mark description in the application must clearly indicate the type of mark sought to be registered (common mark, collective mark, association mark, certification mark);
• If the mark sought to be registered is an association mark, the applicant shall clearly indicate associated elements being marks or goods or services according to the following provisions:
• The declaration must contain the mark specimen and a written description of the mark according to the following provisions:

1. If the mark consists of many elements, those elements and their combinations must be clearly indicated. If the mark contains configuration elements, contents and significance of those elements must be clearly defined;
2. If the protection is claimed for a colored mark, such a claim must be clearly stated and colors on the mark must be named;
3. If the mark contains letters, words or expressions in languages other than Vietnamese, their pronunciations (transliterated into Vietnamese) must be clearly annotated and their meanings (if any) must be translated into Vietnamese;
4. If the mark contains numerals other than Arabic and Roman numerals, those numerals must be transliterated into Arabic numerals.

•  The section List of goods and services bearing the mark in the written declaration must be divided into groups in accordance with the International Classification of Goods and Services under the Nice Agreement published by the National Office of Intellectual Property (NOIP) in the Industrial Property Official Gazette.

2. 05 similar trademark samples (except for the trademark sample in the declaration form) and must meet the following requirements:

• A mark specimen must be clearly presented with the dimensions of each element of the mark ranging between 8 mm and 80 mm, and the entire mark must be presented within a marking model of 80 mm x 80 mm in size in the written declaration;
• For a mark which is a three-dimensional figure, the mark specimen must be accompanied with a photo or drawing showing the three-dimensional disposition and may be accompanied with a descriptive specimen in the projection form;
• For a mark involving a claim for protection of colors, the mark specimen must be presented with the very colors sought to be protected. If the protection of colors is not claimed, the mark specimen must be in black and white.

3. Power of attorney in case the application applied by an authorized representative.

4. Documents proving the registration right in case your Company enjoys that right from another person.

5. Documents proving the priority in case there is a claim for priority.

6. Copies of payment vouchers (in case of paying via postal services or depositing directly into the NOIP's accounts) (according to Clause 5, Article 2 of Circular 13/2010/TT- BKHCN).

[2]. Procedures:

According to Article 11 of Circular 01/2007/TT-BKHCN amended and supplemented by Circular 05/2013/TT-BKHCN and Circular 06/2016/TT-BKHCN, the procedure of registering the trademark is:

Step 1: Receiving applications

You shall apply to the competent authority – NOIP or to the other application recipients established by NOIP. The application shall be applied via post to the recipients mentioned above. NOIP won’t turn back the submitted applications (except for the original which is used for comparing).

Currently, the application can be applied at NOIP in Ha Noi or the representative office in Ho Chi Minh City and Da Nang city.

Step 2: Formality examination of applications

Formality examination of applications means an examination of observance of regulations on formalities applicable to applications, serving as a basis for concluding whether applications are valid or invalid.

Valid applications shall be further examined. Invalid applications shall be rejected (shall not be further examined).

Time limit for formality examination of applications: The time limit for the formality examination of an application is one month from the filing date.  Where the applicant actively request the revision of the application, or reply to the notice issued by NOIP, the deadline for sufficiency examination shall be extended to more 10 days.

Step 3: Publication of valid applications

All applications accepted as valid shall be published by the NOIP in the Industrial Property Official Gazette. Applicants shall pay a fee for such publication.

Time for publication: within two months from the date they are accepted as valid applications.

Step 4: Substantive examination of applications

The purpose of substantive examination of applications is to assess the protectability of objects stated in those applications under the protection conditions and corresponding protection coverage (volume).

Substantive examination of an application covers the following contents:

• Assessment of compatibility of the object stated in the application with the type of protection title applied for;
• (Assessment of the object based on each protection condition;
• Inspection of observance of the first-to-file rule.

For a mark registration application, the assessment shall be conducted with regard to each component of the mark for each good or service on the list of goods and services.

The time limit for substantive examination: The time limit for substantive examination of an application is six months from the filing date. Where the applicant actively request the revision of the application, or reply to the notice issued by NOIP, the deadline for sufficiency examination shall be extended to 3 months.

Step 5: Refusal to grant or grant of protection titles

Applications for protection titles may be rejected if they fall into one of the cases specified in Clauses 1 and 2, Article 117 of the Law on Intellectual Property:

• There are grounds to affirm that the subject matter stated in the application does not fully satisfy the conditions for protection;
• The application satisfies the conditions for the grant of a protection title but does not have the earliest filing date or priority date;
•  The application falls into a case stipulated in clause 2 of article 90 of this Law but fails to have the consensus of all applicants.

Time for granting of protection titles: Within 10 days after applicants pay fully and on time the prescribed fees and charges, the NOIP shall carry out the procedures for grant of protection titles according to the provisions of Article 118 of the Intellectual Property Law.

Step 6: Registration and publication of certificates of registered marks

All decisions on granting protection titles and decisions on accepting international registrations are published by the NOIP in the Industrial Property Official Gazette.

The information to be published includes the information included in the corresponding decision: sample of the trademark and the list of branded goods and services.

Time for publishing: 02 (two) months from the date of issuance of the decision, after your Company has paid the prescribed publication fee.

[3]. Results:

• Decision to grant/refuse to grant a trademark registration certificate;
• Trademark registration certificate (if there is a decision to grant a trademark registration certificate).

That is the advice of FDVN to your request, based on the study of legal regulations. Hopefully FDVN's advice will be useful to you.

Legal expert: Nguyen Thi Suong

FDVN Law Firm

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