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.
- Substantive
examination:
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.
In
Bangladesh, a registered trademark is valid for an initial period of 7 years
from the date of filing and renewable for successive periods of 10 years
thereafter.
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
All Rights Reserved
About Us
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.
Our long established licensed
law offices in Greater China have allowed us to develop deep local roots and an
integrated global perspective necessary to help domestic businesses and
multinational companies alike seamlessly manage even the most complex local and
cross border transactions.
We have advised on some of
the most significant acquisitions, arbitrations, real estate projects and
intellectual property enforcement to date. This is particularly evident from
our leading position in areas such as intellectual property, tax, employment,
mergers & acquisitions and dispute resolution. Our ability to collaborate
across practices and borders with ease allows us to bring the right team to
every transaction, regardless of location.
