Question: We registered a trademark in Vietnam and would like to know how to provide Evidence for proving the use of your protected trademark in Vietnam?
Answen: Regarding to the evidence for proving the use of your protected trademark in Vietnam, we would like to advise you as below:
In related to the advertisement and locating the office: the practice of settling the request for terminating the certificate of trademark registration based on the ground of 5 consecutive years before the filing date of the request shows that National Office of Intellectual Property (NOIP) will only accept these evidence if these one could prove the actual business activity for legally providing goods/services bearing the protected trademark to the customer.
It means that the advertisement and/or establishing an office must be enclose with the evidence proving the provision of goods/services bearing the trademark to the customer and this action must be legally according to Vietnamese Law
In case you could provide the advertisement, location of your office without the evidence proving the legal provision of goods/services to the customer, NOIP will refuse your evidence and issue the decision on termination of your certificate of trademark registration.
However, according to Law on Intellectual Property, in case your company or the licensee of your company uses the protected trademark within three years before the filing date of the request of termination, your trademark will be not terminated.
For the foregoing, you should take the following options for ensuring your right:
Option 1. Re-filing the trademark application as soon as possible. This option will give you the priority right that could prevent all identical or similar trademark applications having the filing date after your one; and/or
Option 2. Establishing the legitimate business for providing the goods/services to the customer.
In order to carry out this option, your company should simultaneously take the following actions:
i. Signing a franchise/trademark license agreement with a Vietnamese partner and registering this agreement with the authority state body;
ii. Getting the certificate of business registration by your partner in which the name of company must include the word in the trademark.
iii. Operating a restaurant using the trademark and providing the service according to the certificate of trademark registrationfor customer (This step could arise the huge expense for your company).
For your convenience, we are opinion is that you should carry out the search on the trademark database of NOIP in order to verify whether there are any identical/similar trademark application filed to NOIP or not?
– If there are not any trademark applications filed at NOIP, the option 1 is the best option for your company;
– If there is the similar/identical trademark application filed at NOIP and there are not any requests for terminating your trademark filed at NOIP, you are required to take option 2;
Our fee for taking the above mentioned option will be calculated as below:
– Fee for conducting search: US$100.00 per 01 trademark with 01 class of goods/services;
– Fee for checking the request for terminating your trademark at NOIP: US$300.00.
Note: The above mentioned fees are exclusive 5% VAT.
