Requirements for trademark registration applications according to legal regulations

What are the conditions and procedures for trademark registration? Can different companies simultaneously want to register a trademark for protection?

1. What conditions are required for a protected trademark?

Pursuant to Article 72 of the Intellectual Property Law 2005, amended by Clause 20, Article 1 of the Amended Intellectual Property Law 2022 (Effective from January 1, 2023) regulations on conditions for trademark protection registration are as follows:

General conditions for protected trademarks

A trademark is protected if it meets the following conditions:

1. A visible sign in the form of letters, words, drawings, images, holograms or a combination of such elements, represented by one or more colors or sound signs expressed in graphic form;

2. Able to distinguish the trademark owner’s goods and services from those of other entities.

2. Can different companies simultaneously want to register for protection of a trademark?

Pursuant to Article 87 of the 2005 Intellectual Property Law, amended by Clause 13, Article 1 of the 2009 Intellectual Property Law, as follows:

“1. Organizations and individuals have the right to register trademarks for goods they produce or service. services provided by themselves.

2. Organizations and individuals conducting legal commercial activities have the right to register trademarks for products that they put on the market but are produced by others, provided that the manufacturer does not use that trademark for the product and does not object to such registration.

3. A legally established collective organization has the right to register a collective trademark for use by its members Regulations on the use of collective marks; for signs indicating the geographical origin of goods and services, the organization has the right to register as a collective organization of organizations and individuals conducting production and business in that locality; for place names and other signs indicating the geographical origin of local Vietnamese specialties, the registration must be permitted by a competent state authority.

4. Organizations with the function of controlling and certifying quality, characteristics, origin or other criteria related to goods and services have the right to register certification marks with the condition that they do not produce or trade those goods or services; For place names and other signs indicating the geographical origin of local Vietnamese specialties, registration must be permitted by a competent state authority.

5. Two or more organizations and individuals have the right to jointly register a trademark to become co-owners with the following conditions:

a) Use of the trademark must be on behalf of all co-owners or used for goods and services in which all co-owners participate in the production and business process;

b) Use of the trademark must not cause confusion for consumers about the origin of goods and services.

6. Persons with registration rights specified in Clauses 1, 2, 3, 4 and 5 of this Article, including those who have submitted registration applications, have the right to transfer registration rights to other organizations and individuals in the form of written contracts, for inheritance or inheritance in accordance with the provisions of law, provided that the transferred organizations and individuals must meet the conditions for the person with the corresponding registration rights.

7. For a trademark protected in a country that is a member of an international treaty that prohibits the representative or agent of the trademark owner from registering that trademark and 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, unless there is a justifiable reason.”

3. Requirements for such trademark registration applications Which?

Pursuant to Article 105 of the Intellectual Property Law 2005, as amended by Clause 34, Article 1 of the 2022 Amended Intellectual Property Law (Effective from January 1, 2023)  as as follows:

Requirements for trademark registration applications

1. Documents, samples, and information identifying the trademark that needs protection in the trademark registration application include:

a) Trademark sample and list of goods and services bearing the mark;

b) Regulations on the use of collective trademarks, regulations on use certification mark.

2. The trademark sample must be described to clarify the constituent elements of the trademark and the overall meaning of the trademark (if any); If the mark contains words or phrases that belong to figurative language, those words or phrases must be transliterated; If the trademark has words or phrases in a language other than Vietnamese, it must be translated into Vietnamese; If the mark is a sound, then the mark model must be a sound file and a graphical representation of that sound.

3. Goods and services stated in the trademark registration application must be classified into groups consistent with the classification table according to the Nixon Agreement on the international classification of goods and services for the purpose of trademark registration, published by the state management agency on industrial property rights.

4. Regulations on the use of collective marks include the following main contents:

a) Name, address, basis of establishment and operation of the collective organization that is the owner of the mark;

b) Standards to become a member of the collective organization;

c) List of organizations and individuals allowed to use the mark trademark;

d) Conditions of trademark use;

dd) Measures to handle violations of trademark use regulations.

5. Regulations on the use of certification marks must have the following main contents:

a) Organizations and individuals who are owners of the mark;

b) Conditions for using the mark;

c) Characteristics of goods and services certified by the mark;

d) Methods of evaluating characteristics properties of goods and services and methods of controlling trademark use;

đ) Costs that trademark users must pay for trademark certification and protection, if any.