Why Investor Needs to Protect Trademark in Vietnam?

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

 

Trademark protection in Vietnam

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the trademark protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the Trademark process and will work closely with you as you apply for your IP.

 

Read More

How Probation is Regulated in Vietnam Labour Code?

Probation is an agreement between an employee and an employer on a probationary job in a certain period of time in accordance with the provisions of law. Before entering into a labor contract, the employer and the employee should go through a probationary period to determine the long-term cooperation and attachment between the parties. The probation should comply with the provisions of the Labor Code and relevant guiding documents. The Labor Code 2019 comes into force as of January 1^st, 2020, a number of new regulations accordingly are issued in connection to the probation, which each company should review the matter with its labour lawyers in Vietnam for compliance.

 

Regarding the circumstances which are permitted to enter into a probationary contract, this contract is not applicable to the labor term which is below 01 month.  The Labor Code 2012 does not require that the probationary provision must be stipulated in the labor contract. Accordingly, an employer and an employee may negotiate on the probation, the rights and responsibilities of the parties during the probation period. The parties may conclude a probation contract if there is an agreement on the probation. If the probation work meets the requirements, the employer shall conclude an employment contract with the employee. From these provisions, it can be understood that the employee and the employer should make a separate probationary contract. The labor contract should be signed when the probation is completed and the employee meets the recruitment requirements of the employer. According to the latest provisions in the Labor Code 2019, the employer and the employee may agree on the probation stated in the labor contract or a separate probationary contract. If the probationary provision is stipulated in the labor contract, the employer shall continue performing the existing labor contract at the end of the probationary period once the employee satisfies the requirements. Otherwise, a new labor contract shall be entered into.

The Labor Code determined the restriction of the probation period based on the nature and complexity of the job. The probationary period previously was limited to no more than 60 days for jobs requiring a college or higher professional qualification. Currently, the probationary period is permitted to extend up to 180 days for the executives. The executives play an important role in business and operation of the enterprises, including owner of a sole proprietorship, a partner of a partnership company, chairperson or member of the Board of Member, President of a company, President or member of the Board of Directors, Director/General Director, or holder of another managerial position prescribed in the company’s charter (applicable to the enterprise with no state capital)

Another amendment to the cancellation of the probationary contract, the Labor Code 2019 removed the limitation of the right to cancel. Accordingly, during the probationary period, each party has the right to cancel the probationary contract or labor contract entered into without prior notice and compensation. On the contrary, the employee and the employer may cancel the probation if the probationary job does not meet the requirements that the parties have agreed upon under the Labor Code 2012

Probationary periods are primarily designed to test out whether both employer and employee to match each other at the start of an employment relationship. The enterprises as employers need to have a clear understanding of the principles of entering into a labor contract as well as a probationary contract to avoid potential dispute in Vietnam.

ANT Lawyers is a law firm in Vietnam, recognized by Legal500, IFLR1000. We are an exclusive Vietnam member of Prea Legal, the global law firm network covering more than 150 jurisdictions. The firm provides a range of legal services to multinational and domestic clients. 

 

Read More

Cancellation Against of Trademark in Vietnam

Trademark is the priceless asset with your company because of being used to distinguish goods or services of different organizations or individuals.

 

Cancellation Against of Trademark in Vietnam

It usually takes a long time and attempts for your company to gain the trust and belief from customers on your goods and trademark. However, if there is any other same trademark of the same goods like yours, it will easily make customer mistake or confuse and lead many damages to your company such as distinguishing capacity, losing reputation and sale decline.

In fact, many international companies after co-operating with domestic companies to distribute or sell good, find that co-operators steal their trademark by registered trademark protection in National offices intellectual property. Because trademark is protected independently in each nation, it is easy for violators to do steal trademarks.

To protect your rights and benefits, you should request Vietnam IP authority to cancel violated trademark. With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers would like to support you in cancelling against of trademark in Vietnam as follows:

Cancellation against of trademark in Vietnam

Under the Article 96 of the Law on Intellectual Property of Vietnam (IP Law), a certificate of trademark registration may be cancelled wholly or partly, by any third party’s request.

The applicant may request to the National Office of Intellectual Property (NOIP) in written form to cancel protection titles in the cases specified provided that they pay fees and charges.

Period for filling cancellation request

To request cancellation of a trademark due to the Applicant’s bad faith: the period for lodging such a request is the whole term of a Protection Title.

To request cancellation of a trademark due to other legal reasons: the period for lodging such a request is within 5 years as from the granting date.

The case for cancellation

A certificate of trademark registration may be cancelled wholly or partly, by any third party’s request, in the following cases:

The registration applicant has neither had nor been assigned the right to register an invention, industrial design, layout-design or mark;

The subject matter of industrial property fails to satisfy the protection conditions at the time the protection title is granted.

Required documents

Proofs (if any)

Power of attorney;

Written justification of the reason for request (clearly stating the serial number of the protection title, reason, legal grounds, contents of the request for termination or Cancellation of part of or the entire protection title) and relevant documents.

Time and procedures

In case a request for cancellation of trademark protection title is made by a third party, the NOIP shall notify in writing the third party’s opinions to the protection title holder, setting a time limit of two months from the date of notification for the trademark protection title holder to respond.

After considering opinions of the parties, the NOIP shall issue a decision on cancellation of part of the entire protection title or notify its refusal to cancellation the trademark protection title.

If disagreeing with the NOIP’s decision on handling of the request for Cancellation of the trademark protection title, the requester or an involved party may lodge a complaint about that decision or the relevant notice.

A decision on cancellation of a trademark protection title shall be published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within two months from the date of its signing

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

 

Read More

What Are Trademark Classes?

A trademark class is a category in which a trademark is put into. Each class covers certain similar goods or services which the trademark covers. For example, class 25 covers clothing. If you apply for a trademark and tell the trademark office that your trademark will be used to represent shirts, for example, your trademark will be put into class 25. You can potentially get a trademark for a name that someone already has a trademark for, if you apply for a different class.

 

When you apply for a trademark, you need to tell the trademark office what goods or services this trademark will represent. For Before reading further, make sure you understand the basics of what a trademark is. You should know what it means that a trademark acts as an identifier of source. To get the 101 on trademarks, read What is a Trademark? first.

example, Coke will tell the trademark office that the Coca-Cola trademark will be used to represent soft drinks. When people see Coca-Cola on soft drinks, Coke wants people to know that the soft drink was made by Coca-Cola. When approved, Coke’s trademark will prevent people from using the Coca-Cola name on soft drinks, and anything that is similar to soft drinks. This is because soft drinks was indicated on Coke’s trademark application. If someone uses the name Coca-Cola on a completely unrelated product, bookshelves for example, they may be able to do so since bookshelves are quite different from soft drinks.

When the trademark office looked at Coke’s trademark application for Coca-Cola, they put the trademark into class 32 which is the class for most beverages. This is because when Coke applied for the trademark, they told the trademark office the trademark will be used to represent soft drinks and the trademark office knew to put the application into class 32. Now that they have their trademark approved and put into class 32, the class can help others determine how much protection the trademark covers. Generally speaking, if Coke has a trademark in class 32, you likely cannot use their trademark with any product that is also in class 32. For example, you likely cannot use Coca-Cola to sell juices. Further, if you applied for the trademark Coca-Cola to try and represent any product in class 32, such as juices for example, you likely will be rejected. This is because Coke already has a trademark for Coca-Cola in class 32, and you are trying to apply for the same name to represent goods in the same class Coke already is in.

Generally speaking again, if you were to apply for the same name in a different class, you may be able to get a trademark. Let’s look at an example with the name “Dove”:

You can see above that there is a Dove soap and there is also a Dove Chocolate, trademarks owned by two separate companies. The simple explanation as to why they can both own trademarks for Dove is because they have applied for trademarks in different classes. Dove owned by Mars is in class 30 for chocolates, whereas Dove owned by Unilever is in class 3 for soaps.

Related post: What are the benefits of Trademark registration?

However, there is a longer explanation. The real reason that both companies can each own a trademark for Dove is not necessarily because they have applied for goods that are in different classes, but rather because the trademark office believes that people buying Dove chocolate will not be confused and think that the chocolate was made by the company that makes soap. Vice versa, the trademark office believes that people buying Dove soap will not think the soap was made by the company that makes chocolate. The key is that the trademark office is convinced that there is no likelihood to cause confusion by both companies each having the trademark for the name Dove. In other words, the main reason Dove chocolate and Dove soap can both exist is because the trademark office considers chocolate and soap different enough that people will not be confused as to which company is making each. It just so happens that chocolate and soap are in different classes, which is usually true when two trademarks of the same name coexist, but not always.

Building on this concept, it is possible for two people to have the same trademark and coexist in the same class. Conversely, it is possible to apply for a trademark that already exists in one class, but file it in a different class and get rejected. It all comes down to whether the trademark office thinks the goods and services that are represented by the two marks are likely to cause confusion with buyers. For example, Coke has a trademark Coca-Cola for sodas in class 32. Tea drinks are actually part of a different class, class 30 which is the class for tea and coffee. If you were to apply for a trademark for Coca-Cola in class 30 for tea, do you think you would be approved? The answer is likely not. Because tea and soft drinks are both drinks, it is likely for buyers to be confused if you have a trademark for Coca-Cola in class 30 and Coke has one for class 32. If you label your tea as Coca-Cola, buyers will not be sure whether the tea was made by you, or by Coke, and thus confused as to who made it. In this example, even though you are applying in a different class than an existing trademark of the same name, you are likely to be rejected. In an example of the reverse, if you are applying for a mark in a class where another same mark already exists, you could still get approved if you can convince the trademark office that the goods you are selling are so different from the goods of the other mark in the same class that there would be no confusion to buyers. However, this is generally difficult since the trademark class system has been designed so that similar products and services are put into the same class.

So let’s think strategy. Let’s say you start a company called Widget and you will sell sodas and teas. You want to prevent others from also selling sodas and teas by the name of Widget. Should you apply for sodas in class 32 or teas in class 30? The answer, is for best protection you should apply for both. If you have one trademark for sodas in class 32 and another for teas in class 30, you ensure that both teas and sodas are covered. Filing in both classes, however, requires double the fees. The trademark office charges for each different class you file in. You may say well let me just file in class 32 for sodas only, I should be fine since you said earlier if someone else files for the same name in class 30 for teas they likely would be rejected by the trademark office since teas and sodas are so similar. This may be true, but do you want to risk it? If someone can make a convincing argument to the trademark office that the teas they sell will not cause buyers to be confused with the sodas you sell, they may get the trademark for teas in class 30. Therefore, to be safe, the best way is to file for both class 32 and class 30, and pay double the fees needed to do so. This is how the major corporations do it. They will cover many classes to ensure that people cannot use their trademark name on practically any good or service. As of this writing, Coke has 61 trademarks for Coca-Cola and similar variations, spanning multiple classes.

There are 45 total trademark classes. When you apply for a trademark application, you will indicate what goods and services your trademark will represent. The trademark office will then compare your trademark to similar trademarks and make a subjective decision as to whether your mark and what it represents is likely to cause confusion with another mark and what that mark represents. If the trademark office thinks there is no likelihood to cause confusion, they will approve. Otherwise, they will reject and you have an opportunity to argue back for approval. There is no guarantee that a trademark application will be approved as whether you are likely to cause confusion with another mark is a subjective determination made by an examiner at the trademark office. This is true even if nobody has the exact same name you are applying for. The only way to get a trademark is to apply and wait for a decision by the trademark office. To maximize your chances of approval, however, you should apply for trademarks that are as different from existing trademarks as possible, and list goods and services that are as different as possible from the goods and services of existing trademarks. You also don’t get your money back if your application is rejected or filed improperly, so best file it properly the first time around.

Source: Quora

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

 

Read More