REGISTRATION AND
ENFORCEMENT OF TRADEMARKRIGHTS IN VIETNAM
TRAN HUU TRA
Patent Attorney,
Tra & Associates Intellectual Property Law Firm
Hanoi, Vietnam
Tokyo, 23 June 2007
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INTRODUCTION- Overview of Intellectual Property Law of Vietnam;- Vietnam is a member of Interational Treaties;- Legal documents on Registration and Enforcement of Trademark
Rights in Vietnam

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I. Registration of Trademark
1. Introduction
a. Definition of Trademark:Any sign used to distinguish goods or services of different organizations andindividual.
It could be a visible sign in the form of letters, words, pictures, figures,including three-dimensional figures or a combination thereof, represented in
one or more colors;b. What are not registered as Trademarks:- Signs identical with or confusingly similar to the national flags, nationalemblems, names of political organizations, socio-political organizations…;- Signs identical with or confusingly similar to real names, alias, pen names
or images of leaders, national heroes of Vietnam or foreign countries;- Signs identical with or confusingly similar to certification seals, control seals,
warranty seals of international organizations;- Signs liable to mislead, confuse or deceive consumers as to the origin,quality, value or other characteristics of the goods or services.
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I. Registration of Trademark
1. Introduction (continued)c. Who are entitled to register Trademarks:- Organizations or individuals have the right toregistration of a Trademark to be used for goods
or services he or she produced or supplied.
- Organizations or individuals legally engaged in
the trade in a product produced by a third party
have the right to registration of a Trademark tobe used for the product, provided that theproducer neither uses such a Trademark for theproduct nor objects to such registration.
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I. Registration of Trademark
2. Procedures for Trademark Registrationa. Filing Application for Registration:
First-to-file rule is applied;
Claiming priority is possible;
Foreigners without Representative Offices/Branches inVietnam must use local Industrial Property Agents(Patent/Trademark Attorneys) for the services.
b. Examination of Application:
Examination as to form;
Examination as to substance5

I. Registration of Trademark
2. Procedures for Trademark Registration (continued)
c. Refusal/Acceptance of Registration
If the Trademark does not meet protection criteria, it will berefused;
If protection criteria is met, it will be registered.
d. Granting Certificate of Registration
The Applicant must pay the prescribed fees for granting ofCertificate of Trademark Registration;
The Trademark shall then be recorded on the National Register;
The Trademark Rights shall begin from the Registration Date andshall expire at the end of 10th year counted from the filing date. It ispossible to be renewed.

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I. Registration of Trademark
3. What should Trademark Owner do after Registration
a. Requirement on Use of Trademark:The owner of a Trademark shall be obliged to use it
continuously. The validity of ownership right of a
Trademark shall be terminated if it has not been used
for a continuous period of more than 5 years.
b. Renewal of Validity of Certificate of Trademark
Registration:
Within 6 months before the expiration date, the ownerof Trademark may file a request for renewal of its
trademark. Late renewal can be made provided that it
is no later than 6 months after the expiration date.
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I. Registration of Trademark
4. What are the Rights of Trademark Owners- The Exclusive Right to Use the Trademark;- The Right to Assign the Trademark;- The Right to Grant License to Other Parties;- The Right to Enforce the Trademark Rights

8Applications for Trademark
Registration filed in Vietnam
Years
2001
2002
2003
2004
2005

Applications for Trademark Registration filed byVietnamese Foreigner

Total

3095
6560
8599
10641
12884

6345
8818
12135
14916
18018

325022583536
4275
5314

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II. Enforcement of Trademark Right1.

Introduction-The owner of a registered trademark has the exclusive
rights to manufacture, use, import, sell, advertise,
store or offer for sale the products bearing thetrademark. Any use by a third party of a registeredtrademark, without authorization from the owner andfor the commercial purposes, is regarded as an act ofinfringement.
The following measures are available for trademark
owners to enforce its rights: the Civil Procedure,
CriminalProcedure,
AdministrativeProcedure,
Provisional Measures and Border Measures-10II. Enforcement of Trademark Right
2. What are acts of trademark infringement- Using signs identical with a registered trademark
for identical goods or services;- Using signs identical with a registered trademark
for similar or related goods or services;- Using signs similar to a registered trademark foridentical or similar goods or services;- Using signs identical with or similar to a wellknown trademark for any goods or services.
11II. Enforcement of Trademark Right
3. Civil Proceduresa. Introduction- There is no special court for dealing with
Trademark Infringement in Vietnam;- Provincial People’s court shall handle
Trademark Infringement cases;- If one party is foreigner, the competent courts
is either People’s Court in Hanoi or Ho Chi
Minh City.
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II. Enforcement of Trademark Right
3. Civil Procedures (continued)
b. Civil Remedies
The court shall take the following civil remedies to handle acts of
infringement of Trademark rights:- Compelling termination of the infringement of Trademark rights;- Compelling public rectification and apology;- Compelling the performance of civil obligations;- Compelling compensation for damages;- Compelling destruction, distribution or use for non-commercial
purpose in respect of infringing goods, provided that such
distribution and use does not affect the exploitation of rights by theTrademark owner.

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II. Enforcement of Trademark Right
4. Administrative Proceduresa. The following acts of Trademark infringements shall be subject tothe administrative remedies:- Committing an act of infringement of Trademark Rights, which causes
loss to consumers or the society;- Not terminating an act of infringement of Trademark Rights, even if awarning letter has been sent by the Trademark owner;- Producing, importing, transporting, and trading in counterfeit goods;- Producing, importing and trading in articles bearing a trademark that
is identical with or confusingly similar to a registered trademark

14II. Enforcement of Trademark Right
4. Administrative Procedures (continued)
b. Administrative penalties and remedies- Main remedies:+ Warning;+ Monetary fine.
- Complementary remedies:+ Confiscation of counterfeit goods, materials, raw materials…;+ Suspension of relevant business activities for a definite term.
+ Compelling destruction, distribution or use of the counterfeit
goods for non-commercial purposes;+ Compelling re-export of the counterfeit goods after removing
infringing elements.

15II. Enforcement of Trademark Right
4. Criminal Procedures
Individuals who have committed acts of infringement of Trademark
Rights having factors that constitute a crime shall be liable to thecriminal liabilities.
- Manufacturing and/or trading in fake goods equivalent to the quantityof genuine goods valued more than thirty million VND or under
thirty million VND but causing serious consequences;- Manufacturing and/or trading in fake goods being food, foodstuffs,
curative medicines, preventive medicines- Manufacturing and/or trading in fake goods being animal feeds,fertilizers, veterinary drugs, plant protection drugs, plant varieties,animal breeds- Infringing upon Trademark Rights causing serious consequences.

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II. Enforcement of Trademark Right
5. Criminal Procedures (continued)- Punishment includes:
Imprisonment: At least 6 months. In somecases, up to 15 years, life or death penalty;- Monetary fines: between VND 20 and 200
million (equal to USD 1,300 and 13,000);- Trademark owner may require compensation
for damages.
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6. Provisional Measures- Upon or after initiation of a lawsuit, a Trademark Ownerhas the right to request the court to apply provisional
measures.
- The following provisional measures are applicable togoods suspected of infringing of Trademark Rights:- Seizure;- Attachment;- Sealing, prohibition of changing status or displacing;- Prohibition of transferring ownership;18

II. Enforcement of Trademark Right
7. Border Control Measures
a. Introduction
Vietnam has a long borders with China, Laos & Cambodia;
Trademark Infringement happens to almost every kind of goods
from daily consumption goods to luxury goods, from simple goods
to medicines, foods…;
Trademark Infringement does not only happen at the borders but
also inside the country;
b. Relevant State Authorities & Border Control Measures
Customs Offices at all levels;
Suspension of Customs procedures;Supervision to detect goods

19II. Enforcement of Trademark Rightc. Remedies- To temporarily postpone customs procedures;- To eliminate the illegal factor/elements;- To re-export goods;- To confiscate goods;- To distribute confiscated goods to entities foruse for non-business purposes;- To destroy confiscated goods.
20II. Enforcement of Trademark Right
8. Current situation on Enforcement of Trademark Rights in Vietnam
Although the enforcement of Trademark Rights in particular has been paida special attention, unfortunately the actual enforcement is not as good asexpected.
- The reasons of the ineffective enforcement of Trademark Rights in Vietnam
could be understood as below:+ The limited awareness of the enforcement forces on Trademark Rights,including the judges, economic polices, customs officers;+ The cooperation among enforcement forces is not good; the cooperationof the Trademark Owners with the enforcement forces is included;+ The punishment imposed is not strong enough to prevent theinfringement;+ The lack of special forces, such as special court for dealing withIntellectual Property cases.

21Conclusion- Intellectual Property / Trademark is still a new
field in Vietnam;- The government is trying to improve thelegislation system and acquire experience fromdeveloped countries with a view to building abetter Intellectual Property system;- Vietnamese people are more and more aware of
the benefits of Trademark Registration;- Enforcement of Trademark Rights is facing manydifficulties due to the lack of legal grounds;
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