Registering an exclusive trademark is a relatively familiar phrase in recent years. As the socio-economy develops, the exclusivity of brands is increasingly enhanced. Brands are the best way to identify products for users of those products. But not everyone knows how to register to protect their brands? Follow the article below by Viet My Law and Accounting to learn about this procedure.

1. What is a brand?

Currently, with the constant development of production and business activities as well as to meet the needs of people, many types of goods with their own uses have appeared. Among them, there will be a number of products with similar uses but produced by different businesses. With such a diversity of types of goods, in order to most conveniently classify these products, businesses producing goods have created their own brands for their products.

When it comes to brands, this is probably not a strange concept to many people in our country today when the vast majority of products that people are using have brands with their own names and characteristics. Therefore, people often use the concept of brands to distinguish these types of goods.

According to current law, the term brand is not specifically defined, but in fact, we can understand that a brand is considered a trademark.

According to the provisions on trademarks in Clause 16, Article 4 of the 2005 Intellectual Property Law (amended by Clause 2, Article 1 of the 2009 amended Intellectual Property Law) as follows:

“A trademark is a sign used to distinguish goods and services of different organizations and individuals.”

Accordingly, we can understand that a brand is considered an image of businesses that trade or produce goods and services. A brand can be made up of many different elements such as: name, identification mark, words or images representing the brand, etc. to identify and distinguish a product or service of this business unit from another business unit…

2. Steps to registering an exclusive trademark

Any entity (such as businesses, business households, individuals) can register for trademark protection to become the legal owner of the trademark if the trademark has not been registered and meets the specific conditions prescribed by law. The steps to register an exclusive trademark are as follows:

Step 1: Prepare and search for trademarks for registration

Enterprises need to prepare their own trademark design with name, image, logo style and color… with their own identifying characteristics.

Trademark search activities will help avoid duplication or confusion with trademarks of other agencies, organizations, individuals or businesses.

In practice, trademark searches can be performed preliminarily and in-depth as follows:

Preliminary search: The applicant conducts an online search through the digital library on the WIPO Publish platform. This is a website that supports industrial property information searches supported by the World Intellectual Property Organization and in coordination with the National Office of Intellectual Property of Vietnam.

In-depth search: The applicant authorizes an organization (such as law offices or firms) to represent and work with a specialist to search directly on the database of the National Office of Intellectual Property of Vietnam.

Step 2: Prepare and submit the registration application

After searching and determining that the trademark is eligible for registration, the enterprise needs to prepare a set of documents to submit to the competent authority for settlement, the documents include:

• Registration application
• Documents, samples and information of the registered trademark
• Vouchers showing payment of fees

In addition, depending on each specific case, the enterprise will need to prepare a number of other related documents.

After preparing all the documents, the applicant submits the application to the Intellectual Property Office by submitting it directly or by post.

Step 3: The competent authority processes the application

During this process, the Intellectual Property Office will carry out the following tasks:

• Form examination of the application
• In case the application is invalid: The competent authority will issue a notice of intention to refuse to accept the valid application, stating clearly the reasons or shortcomings of the application, setting a certain period of time for the applicant to correct the shortcomings or give comments. If the applicant does not correct or corrects the shortcomings, a decision will be issued to refuse to accept the application.
• In case the application is valid: a decision will be issued on accepting the valid application
• Publication of the application: The valid application will be published in the Industrial Property Gazette within a certain period of time from the date the application is accepted as valid.

Application content assessment: Here, the competent authority will conduct an assessment based on the protection conditions for the trademark’s ability to be protected, thereby determining the corresponding scope of protection.

Then make decisions to grant or refuse to grant a protection certificate:

• Make a decision to refuse to grant a protection certificate in case the trademark does not meet the protection requirements.
• Make a decision to grant a certificate, record it in the Trademark Registration Book, and publicly announce it in the Industrial Property Gazette if it meets the requirements.

Processing time: within 12 to 18 months from the date of application submission until the issuance of a Certificate in case the application is valid.

3. What are the conditions for trademark protection?

A trademark is an important factor in the production and trading of goods and services, so the issue of trademark protection is increasingly being concerned. Accordingly, when a trademark has been registered with a competent authority, it will be protected and industrial property rights will be established, thereby ensuring the rights and legitimate interests of the trademark owner.

For a trademark (brand) to be registered for protection, the trademark must fully satisfy the provisions of the law on the conditions for protection as well as the trademark must be distinctive such as being made up of 1 or several elements or from many elements combined for easy recognition and memorability, and not falling into the cases considered to be indistinguishable.

According to the provisions of Article 72 of the Law on Intellectual Property, the general conditions for protected trademarks are as follows:

– Being a visible sign, the elements to identify these signs such as: letters, words, drawings, images of logo designs, a combination of one or more colors … or a combination of those elements and expressed through colors, sound signs or in graphic form …

– The trademark of the owner’s goods and services must be able to distinguish from the goods and services of other entities. Currently, the law has specifically stipulated the ability to distinguish in Article 74 of the Law on Intellectual Property with basic contents such as: easy to recognize, easy to remember and not falling under the exclusion cases (these are cases that need to be noted because the competent authority may refuse to grant a protection certificate).

In addition, the Intellectual Property Law also provides specific regulations on signs that are not protected as trademarks, specifically stipulated in Article 73, such as:

Signs that are identical or similar to the point of confusion with symbols such as: National flag, National emblem, or National anthem of our country or of other countries…
Signs that are similar to the point of confusion or identical to: symbols, flags, abbreviations, full names, badges… of state agencies, political organizations… of Vietnam and international organizations (unless permitted by such agencies or organizations).
Identical or similar to the point of confusion with real names, pen names, images, nicknames of people who are leaders, national heroes, celebrities of Vietnam and of other countries.

Signs that lead to consumers misunderstanding, confusion or deception about the origin, features, quality, uses, values… of goods and services;

Signs containing copies of works (except where permitted)…..

The above is an article with the content “Steps to registering an exclusive trademark” that has been guided in detail by VIET MY LAW AND ACCOUNTING and ensures compliance with current legal regulations. If you have a need to register trademark ownership or other legal issues related to trademark protection, please contact us immediately for advice and support!