Southeast Asia countries have grown to become important new markets for many brand owners, many foreign companies manufacture their products in jurisdictions such as Vietnam and Bangladesh. However, IP protection or prosecution may seem eerie for many foreign brand owners due to the lack of familiarity to the language and often delayed prosecution processes.
In this article, we provide a guide of the trademark application procedures in these two jurisdictions and some tips on how to get your applications through.
Trademark registration system in Vietnam
Trademark rights in Vietnam: first-to-use or first-to-file?
Vietnam adopts the “first-to-file” system. Therefore, it is of prime importance for brand owners to file trademarks in Vietnam as early as possible preferably before actual manufacturing or launching products to pre-empt trademark squatting.
Way of filing a trademark application in Vietnam
For foreign individuals who are permanent residents of Vietnam and foreign organizations that have a production or trading establishment in Vietnam, they may directly submit trademark applications to the Intellectual Property Office of Vietnam (IPVN). Otherwise, foreign individuals or organizations must file their applications through a legal representative in Vietnam. Foreign applicants may also submit international trademark applications through the Madrid System designating Vietnam.
Practical tips for filing in Vietnam: Information and documents required
1. Particulars of the applicant: name, address and nationality of the applicant shall be provided.
2. Specimen of trademark representation
3. Description of the trademark: The sample of the mark must be clearly described to clarify elements of the mark and the comprehensive meaning of the mark, if any. If the mark contains words in a foreign language or characters, the transliteration and Vietnamese translation should be specified. The colours claimed should be stated.
4. List of goods/services baring the mark: The description of goods and services must be sufficiently clear and fall under the 12th edition of the International Classification of Goods and Services (Nice Classification). Designated goods and services not properly classified under the Nice Classification will be reclassified by the IPVN at the formality refusal stage. Multi-class applications are available in Vietnam.
5. Power of Attorney (POA): A colour-scanned copy of the simply signed POA shall suffice at the time of filing the trademark application, and an original executed POA must be submitted within 1 month from the filing date. Notarization or legalization is not required.
6. Priority claim (if applicable): Trademark applicants are entitled to a right of priority if the same filing has been made within the last 6 months in any other country which is also a party to the Paris Convention. The details of the priority claim shall suffice at the time of filing, provided that a certified copy of the priority document translated to Vietnamese is submitted within 3 months from filing date.
Trademark examination procedures in Vietnam
- Formality examination: The IPVN will assess whether a trademark application conforms to the administrative requirements and formality standards, such as the information relating to the identity of the applicant, description of mark and classification of the goods/services within one month from the filing date. If the mark fails to meet the formality requirements, the IPVN will issue a formality examination notice giving a 2-month deadline for the applicant to correct errors or to object to refusal.
- Publication: If the trademark application satisfies the formality requirements, the IPVN will issue a Notification of Acceptance to confirm the filing date and the application number. The trademark will then be published in the Official Gazette in the third month from the date of the acceptance as to form. Any person may file an opposition action against a trademark application at any time after the publication date of the trademark and before the grant of protection for the trademark.
The IPVN will consider whether the trademark is registrable within 9 to 12 months
from the date of publication, depending on the backlog at the registry. A trademark
may be rejected based on absolute grounds (i.e. the mark is considered descriptive,
non-distinctive and/or deceptive) or relative ground (i.e. the mark conflicts
with prior registered marks). The IPVN will issue a substantive examination
notice giving a 3-month deadline for the applicant to respond, which is
extendible for a further 3 months. Based on our experiences, the applicant may
overcome the trademark refusals by: (i) filing written submissions arguing
against the examiner’s objections; (ii) obtaining a letter of consent from
cited mark owner; (iii) initiating a non-use cancellation or invalidation
action against the cited mark; (iv) submitting evidence of prior use of the trademark
to establish honest concurrent use.
However, based on our experiences, it has become increasingly unlikely that the IPVN would accept a letter of consent from the cited mark owner and/or entering into a co-existence agreement to overcome citation objections in Vietnam.
If the Trademark Examination Centre of IPVN does not accept the applicant’s response, an official decision to refuse the grant of protection for the trademark will be issued and the applicant has 90 days from the date of receipt of such refusal decision to file an appeal to the Enforcement and Appeal Settlement Department (EAD) which is independent from the Trademark Examination Centre. However, further supporting documents and/or evidence will not be accepted at the appeal stage. In view of this, supporting documents and/or evidence must be submitted in support of the response to the IPVN's provisional refusal before the decision at the Trademark Examination Centre is issued.
In accordance with Vietnam’s amended Law on Intellectual Property which took effect in 2023, one of the notable points is that trademark applicants may now request the IPVN to stay trademark prosecution procedures pending the outcomes of the corresponding non-use cancellation or invalidation proceedings against the cited marks. It is also of note that trademark registrations in Vietnam will only become vulnerable to non-use cancellations after 5 years from registration date.
Since Vietnamese local language adopts Latin characters, it is difficult for Vietnamese consumers to recognize, read or remember trademarks solely in non-Latin characters such as Chinese characters, hence it is difficult for these non-Latin characters to serve as badges of origin of a business undertaking. From our experience, they are likely to be preliminarily refused for trademark protection in Vietnam. To overcome the potential objection, Applicant may stylize the mark in a graphic form or combine Chinese characters (or other non-Latin characters) with other distinctive parts such as its Latin transliteration and/or its English translation and/or other devices to enhance distinctiveness.
If the trademark is granted protection in Vietnam, the applicant shall pay a grant fee for trademark registration. The validity term of a trademark registration in Vietnam is 10 years from the filing date and can then be renewed indefinitely for consecutive periods of 10 years.
Trademark registration system in Bangladesh
Trademark rights in Bangladesh: first-to-use or first-to-file?
Unlike the trademark registration system in Vietnam, the ownership of a trademark in Bangladesh is based on the “first-to-use” principle, which means parties shall properly docket and adduce evidence of prior use of a trademark in Bangladesh.
Way of filing a trademark application in Bangladesh
An applicant must file a national trademark application at the Department of Patents, Designs & Trademarks (DPDT) in Bangladesh. International application through the Madrid system is not available in Bangladesh. Foreign applicants must be represented by a local representative in Bangladesh.
Practical tips for filing in Bangladesh: Information and documents required
1. Name and specimen of the trademark
2. Particulars of trademark applicant: Other than the basic details such as name, address and nationality of the applicant, the status of the applicant is also required to be stated in a trademark registration in Bangladesh. The applicant shall state whether they are merchandisers, manufacturer and/or service providers.
3. Specification of goods/services: Bangladesh also adopts the Nice Classification. However, unlike Vietnam, a trademark application must be filed for single class only. Multi-class applications are not available in Bangladesh.
4. Use date of the trademark: The applicant shall indicate whether the applied-for mark is in use or proposed to be used in Bangladesh.
5. Power of Attorney (POA): A color-scanned copy of an executed POA shall suffice for filing purposes. Notarization or legalization is not required.
6. Priority claim (if applicable): If priority is claimed, it must be filed within 6 months after the date on which the application was made in any other country which is also a party to the Paris Convention. The certified copy of the priority document shall be submitted within 3 months from the filing date.
Trademark examination procedures in Bangladesh
After an application is filed in Bangladesh, the Registrar at the DPDT will conduct both formality and substantive examination. Subject to the backlog at the DPDT, this examination process may take from 6 months to up to 3 years. If formality irregularities, absolute or relative ground objection is raised against the applied-for mark, the Registrar will issue an official examination report giving an opportunity to the applicant to respond and rectify the application.
There are notable restrictions on marks that can be registered in Bangladesh. Other than the usual absolute grounds of objection, Bangladesh prohibits marks likely to hurt the religious susceptibilities of any class of the citizens of Bangladesh to be registered. Also, mark commonly used and accepted name of any single chemical element or single chemical compound cannot be registered as a trademark. Words such as "powerful" or "best" etc. are not allowed to be registered as a trademark or part of trademark as they would potentially mislead consumers as to the quality of the products. It is recommended to consult experienced trademark lawyers before filing to ensure smooth application process.
Upon completion of the examination stage, the trademark application will be advertised in the Trademarks Journal upon payment of publication fees by the applicant. Any person may oppose the registration of a published trademark within 2 months from the date of advertisement, which is extendible for a further period of maximum 3 months. The Bangladesh Trademarks Act stipulates that all opposition proceedings must be concluded within 120 working days after giving notice of opposition.
How we can help?
It is important for brands to devise a consistent trademark prosecution strategy to enhance the scope of trademark rights in markets in the Asian region. Our firm has vast experience in assisting clients in navigating in these jurisdictions, and in securing and protecting their rights efficiently. We provide extensive portfolio management services for clients covering a wide range of industries and offers tailormade solutions targeting the specific market. If you have any trademark needs in these areas or questions on the above, feel free to reach out to us.
© Vivien Chan & Co., Newsletter issue 09, September 2023
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Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With over 35 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
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