Complete Guide to Trademark Registration for Franchise Businesses in Vietnam 2024

In today’s competitive business landscape, protecting intellectual property rights is crucial for franchise businesses operating in Vietnam. This comprehensive guide explores the essential aspects of trademark registration for franchises, ensuring your brand remains protected in the Vietnamese market.

Introduction

Trademark protection forms the cornerstone of successful franchise operations in Vietnam. As the country continues to attract international franchises, understanding and navigating the trademark registration process becomes increasingly important for business sustainability and growth.

Current State of Franchise Trademark Protection in Vietnam

Vietnam’s intellectual property framework has evolved significantly in recent years, offering robust protection for franchise trademarks. The country’s membership in international IP conventions and ongoing legal reforms have strengthened the trademark protection system.

Legal Framework for Franchise Trademarks in Vietnam

The trademark protection system in Vietnam is governed by several key regulations:

• Law on Intellectual Property (as amended in 2022)
• Commercial Law governing franchise operations
• Related Decree and Circular in Guiding Law on Intellectual Property
• (Decree 65/2023/NĐ-CP, Circular 23/2023/TT-BKHCN, Circular 16/2016/TT-BKHCa, Circular 263/2016/TT-BTC, etc.)
• International agreements and conventions on IP rights

Requirements for Trademark Registration

To successfully register a trademark for your franchise in Vietnam, you must meet these essential requirements:

1. Distinctiveness Requirements (Article 72 Law on Intellectual Property)

• A trademark must be a visible sign or sound represented graphically.
• It must be able to distinguish its owner’s goods or services from those of others.

Not Eligible for Protection if (Article 73 Law on Intellectual Property):

• Signs identical or similar to the extent of confusion with national symbols, agencies, political organizations, or renowned figures.
• Misleading or deceptive signs regarding the origin, quality, or characteristics of goods/services.
• Inherent shapes or copied works without permission.

2. Documentation Requirements (Article 100.1 Law on Intellectual Property):

• A declaration for registration, made according to a set form (Form No. 04-NH according to Appendix A, Circular 16/2016/TT-BKHCN);
• Documents, samples, and information identifying the industrial property subject matter registered for protection as specified in Articles 105 of Law on Intellectual Property (Requirements on mark registration applications);
• Power of attorney, if the application is filed through a representative;
• Documents evidencing the registration right, if the applicant acquires such right from another person;
• Documents evidencing the priority right, if such right is claimed;
• Vouchers of payment of fees, charges.

Step-by-Step Registration Process

The trademark registration process in Vietnam involves several key stages:

1. Pre-Filing Stage

• Conduct a comprehensive trademark search: it’s necessary to identify any existing trademarks that are similar or identical to your proposed trademark. This includes searching for trademarks that are already registered in Vietnam, as well as those that are in the process of being registered.
• Prepare necessary documentation: You must ensure that your application is complete and meets all the requirements of IP Vietnam. (Article 100.1, 101 and 105 Law on Intellectual Property)
• Classify goods and services according to Nice Classification: Applicants must classify their goods and services in accordance with the Nice Classification as published by the state management agency. If the applicant fails to classify or classifies incorrectly, the agency will classify the goods and services and charge a classification fee. (Part V, 3.e Decree 65/2023/NĐ-CP)

2. Filing Stage

• Submit application to the Intellectual Property Office of Vietnam (IP Vietnam) (Article 89 Law on Intellectual Property)

• Foreign individuals residing in Vietnam, as well as foreign organizations or individuals with a business presence in Vietnam, may file trademark applications directly or through a legal representative.
• Foreign individuals or organizations without a physical presence in Vietnam must file trademark applications through a legal representative.

• Pay official fees (Circular 263/2016/TT-BTC)
• Receive filing receipt and application number

3. Examination Stage

• From the date of receipt by the National Office of Intellectual Property, the trademark application will be examined in the following order: 
• Formality examination: 1 month 
• Publication of the application: within 2 months from the date of the decision to accept the application as valid 
• Substantive examination: no more than 9 months from the date of publication of the application. 
• Response to office actions (if any)

If the trademark application meets the conditions for protection, the NOIP will issue a notification to grant the registration certificate to the owner.

Trademark registration process is guided in the National Public Service Portal: The process of Trademark Registration 

Common Challenges and Solutions

Franchises often face several challenges during trademark registration:

1. Technical Challenges

• Language barriers in documentation: Trademark registration often involves legal documents that must be submitted in the jurisdiction’s official language(s). If applicants are not fluent in the language, it can lead to misunderstandings, incorrect filing, or delays.

Solution: Engage professional translators or trademark attorneys to ensure accurate translation of documents, or consider registering the trademark in multiple languages if required by the jurisdiction.

• Classification inconsistencies: Different countries or regions may interpret or apply the Nice Classification system differently. This can lead to inconsistencies in classifying goods or services, which may affect the scope of protection or result in rejections.

Solution: Ensure thorough research and consultation with local trademark professionals or use official classification guides to correctly classify goods and services. Using a global trademark search tool can help identify how similar marks are classified in various regions.

• Specification requirements: Jurisdictions often have specific and detailed requirements for how goods or services must be described in trademark applications. Failing to meet these specifications can lead to rejections or delays.

Solution: Carefully follow the guidelines set by the trademark office for specifying goods or services. It’s beneficial to work with an experienced trademark attorney who understands the local regulations and requirements to ensure compliance.

2. Legal Challenges

• Prior rights conflicts: This occurs when a trademark being applied for is too similar to an existing trademark that has already been registered or is in use by another party. These prior rights could be based on earlier trademarks, company names, domain names, or other intellectual property rights.

Solution: Conduct a thorough trademark search before filing to identify any potential conflicts. If a conflict is found, either modify the mark to make it distinct or seek consent from the owner of the prior right if possible.

• Opposition proceedings: Opposition proceedings happen when a third party formally opposes the registration of a trademark. This may be due to concerns about confusion with their own mark, the mark being descriptive, or other legal reasons.

Solution: Ensure the mark is unique and distinct enough to avoid opposition. If an opposition is filed, resolve the issue through negotiation, possible modifications, or legal defenses to prove the mark’s validity.

• Enforcement issues: Even after a trademark is registered, the owner may face challenges in enforcing their rights, particularly if infringement occurs, or if it’s difficult to prove that the mark has been used consistently in commerce.

Solution: Actively monitor the market for potential infringing marks and take prompt action through cease and desist letters or legal proceedings to enforce the rights. Additionally, maintaining proper documentation of the mark’s use and its commercial significance can aid in enforcement.

Costs and Timeframes

Understanding the financial and temporal aspects of trademark registration is crucial for planning:

Official Fees (2024 rates) 

According to Circular 263/2016/TT-BTC on Fees and charges for industrial property and the collection, transfer, management and use thereof:

• Filing fee: 150,000 VND
• Publication fee: 120,000 VND
• Search fee for content assessment: 180,000 VND/group of products or services
• Search fee for the 7th product or service and onwards: 30,000 VND/product or service
• Content assessment fee: 550,000 VND/group of products or services
• Content assessment fee for the 7th product or service and onwards: 120,000 VND/product or service
• Fee for examining the request for priority right: 600,000 VND/application/request
• Fee for issuing the trademark registration certificate: 120,000 VND (for the first group of products or services, 100,000 VND/group for subsequent groups).
• Publication fee for the Decision on Granting the Protection Certificate: 120,000 VND.
• Registration fee for the Decision on Granting the Protection Certificate: 120,000 VND.

In fact, organizations or individuals determine the cost of registering a trademark based on the number of product or service groups they wish to register for protection.

Timeline

• Total registration process: 12-18 months from the filing date (Decree 65/2023/NĐ-CP and Circular 23/2023/TT-BKHCN)
• Protection period (trademark registration certificate is valid): 10 years from the filing date (can be extended for successive ten-year periods). (Article 93.6 Law on Intellectual Property)

Enforcement and Protection Measures

Once registered, protecting your trademark requires vigilant enforcement:

• Regular market monitoring: To identify potential infringements early on. Early detection allows for quicker action, minimizing damage to your brand reputation and market share. It also helps prevent the infringer from establishing a stronger foothold in the market, making it harder to stop them later.
• Customs record: To prevent the importation of counterfeit goods bearing your trademark. This proactive measure helps to intercept counterfeit goods at the border, preventing them from reaching the domestic market and harming consumers.
• Administrative actions against infringement: To address infringements through administrative channels. Quicker and less costly than litigation, these actions offer a viable option for addressing minor infringements or resolving disputes amicably.
• Civil litigation options: To seek legal remedies for significant infringements that cannot be resolved through other means. This may involve filing a lawsuit to obtain injunctions, damages, and other forms of relief.

Conclusion

Successful trademark registration is essential for franchise businesses in Vietnam. By understanding the requirements, following the proper procedures, and maintaining active protection measures, franchises can secure their intellectual property rights effectively.

FAQs

What is the protection period for trademarks in Vietnam? (Article 93.6 Law on Intellectual Property)

The trademark registration certificate remains valid from its issuance date until ten years after the filing date, and the owner can renew it indefinitely for subsequent 10-year periods.

How can I enforce my trademark rights in Vietnam?

Enforcement options include:

Administrative actions: Handling violations through administrative authorities.

Customs measures: Preventing counterfeit goods at the border.

Civil litigation: Requesting legal measures, including compensation for damages.

Criminal prosecution: Applied in cases of serious violations.

Harley Miller Law Firm “HMLF”

Head office: 14th floor, HM Town Building, 412 Nguyen Thi Minh Khai, Ward 05, District 3, Ho Chi Minh City.

Phone number: +84 937215585

Website: hmlf.vn 

Email: miller@hmlf.vn