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Fee and required documents for trademark application in Vietnam.

By
sblaw
-
Fee and required documents for trademark application in Vietnam.

SBLAW would like to inform you fee and required documents for filing trademark application in Vietnam for your kind reference:

Necessary documents

–      Power of Attorney (PoA) without notarization (Please see attached file

–      8 samples of mark in case the mark is in color. If the mark is merely word mark             in black and white, we will produce specimens ourselves (size 8cm x 8cm).

–      List of goods/services covering the trademark.

–      Certified Priority documents (if any)

CONDUCT A SEARCH OF TRADEMARK

Before filing trademark to NOIP, you may optionally conduct a search of trademark in order to make sure that your proposed trademark is available for registration in Vietnam. Fee for trademark search in Vietnam shall be as follows:

No

Description

Agency fee (US$)

1

 Conducting a search of trademark (for each class)

100.00

We would like to note that search report of trademark is produced by Winlaw based on the assistance of examiner of NOIP and it is for reference only.

Filing and trademark registration fee (212 USD)

Vietnam accepts multi-class applications, we hereby provided you with the cost of each addition class and the estimated cost for registering a trademark in one class (maximum 6 items of good/services), details as follows:

No

Description

Official charge (US$)

Agency fee (US$)

1

 Filing application for registration of a trademark for the first class (maximum 6 items of goods/services)*

40.00

100.00
– Additional charge for each class from the second one (if any).

33.00

70.00
– Additional charge for each item of good or service from 7th in each class (if any)

7.00

2.40

2

 Claiming priority right (for each earlier application)

36.40

25.00

3

 Registration & granting TM Certificate *

22

[[

50.00
Addition charge for each class of goods or services from the second one. (if any)

6.10

10.00

Total fees (sum of items marked *) for registering an application in one class (maximum 6 items of goods/services)

212 US$

Basic prosecution of the trademark application

A trademark application shall be examined through 2 following steps:

Formality examination. The formality examination takes about 1 months from the filing date. If no error is detected, the Trademark Office shall issue Decision of Acceptance of Legitimate Application. Then, the trademark application shall be published on IP Gazette within 2 months from date issuing of above mentioned Decision .

Substantive examination. The substantive examination takes about 6 months from the issuance date of publication of Trademark on IP Gazette. It concludes whether the applied trademark meets protection criteria in Vietnam.

Under the prevailing law on IP, the total time for straight forwarded registration a trademark from filling to granting Certificate without any delay is 12 months

Q&A about Anti-counterfeiting in Vietnam

By
sblaw
-
Q&A about Anti-counterfeiting in Vietnam

SBLAW would like to provide the client some information about anti-counterfeiting in Vietnam as follows:

Q. Is there any difference between criminal protection and administrative protection? Is it practicable to claim for compensation?

A: Yes, there are differences between criminal protection and administrative protection.

You could only request the authority state bodies to settle an infringement case based on penal code in case the infringement action is carried out on the commercial scale.

The procedure for settling this case will be regulated by the criminal procedure code.

The infringer may be sentenced up to three years of imprisonment. There is not any clear regulation on the commercial scale, however, in practice, it could be considered as the commercial scale in case the value of the infringement products is higher than the amount of 500,000,000 VND (Five hundred million Dong) equivalent to $US25,000.

Regarding the administrative protection, the infringer may be imposed a fine with the highest amount is 500,000,000 VND (Five hundred millions Dong) – about 25,000 USD.

Regarding the claim for compensation, please be confirmed that you always have the right to claim for compensation in case the infringement action leads to your actual damage.

You could claim the compensation at criminal court or civil court but not administrative procedure.

However, at any time, you could negotiate this matter with the infringer. You are required to prove your actual damage, in case you could not prove this matter, the compensation will be judged by the court and the highest amount of the compensation is 500,000,000VND (Five hundred million Dong) – about 25,000 USD.

Q: What documents must be prepared for conducting an action?

 A: In order to conduct an action in Vietnam, you are required to submit the following documents:

– The document proving your right with the intellectual protection object, i.e. trademark, design, patent or copyright;

– The document/information proving the infringement action of the infringer;

-The conclusion of examination of Vietnam Authority, namely Vietnam Intellectual Property Research Institute (VIPRI); Enforcement of Intellectual property shall be proceeded only if the Authority concluded that there is a infringement to your rights. We could conduct this work for you.

– The information of the infringer such as name, address;

– The notarized and legalized Power of Attorney;

– The sample or picture of the infringement products.

Q: How to carry out the trademark protection action in Vietnam? Is there any standard procedure? Which enforcement authorities have the rights to carry out the raid action?

A: The following steps are the procedure for settling an IP infringement in Vietnam:

-Step 1: Investigating and collecting the evidence for proving the infringement. We could assist you in performing this step.

-Step 2: Requesting VIPRI to examine whether the alleged products could be considered as the infringement element against your protected right or not? It is not a compulsory action but the conclusion of examination will be the most important evidence for settling the case.

-Step 3: Based on the conclusion of VIPRI and your request, you could take the following measure for settling the infringement action:

i. Sending a warning letter: We will send a warning letter to the infringer and request them to stop the infringement. It is not compulsory action but recommended.

ii. Request the authority state bodies to handle and settle the infringement action based on the criminal or administrative procedure depending on the result of Step 1 and Step 2. With the administrative procedure, it may take about 3-12 months with the administrative procedure or about 12 – 18 months with the criminal procedure based on the complication of each case.

iii. Bringing the case before a civil court.

The police and/or the inspector of Ministry of Science and Technology (MOST) or Department of Science and Technology of province (DOST) will have the right to carry out the raid action.

Namely, checking the office/store/manufacturer of the infringer based on a request of the owner of the intellectual property right.

Q. After completing a raid action, is there any requirement for identifying infringing products? Is an identification report issued by the intellectual property right holder at its headquarter in its mainland country, e.g. Germany, or by others? If yes, it there any requirement for the time of identification? Is it possible to apply for sampling inspection?

A. In practice, the authority state bodies will perform the raid action based on a request in which the holder of the intellectual property object must submit the evidence proving the infringement action and the conclusion of examination of VIPRI.

The holder may be required to submit an identification report in case the authority state bodies need the further evaluation. The time limit for this action will be set by the authority state bodies. You always have the right to apply for sampling inspection.

Q. How those seized products will be dealt with? Will they be destroyed and if so, will any additional expense occur? Are there any measures, such as fine, mandatory measure, etc., taken for infringers?

A: The seized products will be destroyed in case the infringement element could not be removed from the products. In case the infringement element may be removed from the seized products, the infringer is requested to take this action.

The seized products may be sell without the profit by the authority state bodies in case this action is not against the right of the owner as well as the public. The expenses occur will be paid by the infringer.

The infringer will be punished a fine in case their action is concluded the infringement action against the right of others. The highest amount of the fine is 500,000,000 VND, about $US25,000, depending on the volume of the infringement products.

Q. What is the cost for you to carry out such cases?

A: Our estimated cost will be calculated as below table:

No.

Work

Our agency fee (USD)

1

 Investigating the infringer 800 – 5,000 depending on the scale/complication of the investigation. Please provide us more detail of the infringer so that we could fix the quotation.

2

 Requesting VIPRI to examine (per request/per class of goods/services). 500.00

3

 Sending the warning letter (per time) 350.00

4

 Requesting the authority state bodies to handle and settle the case 3,000 – 7,000 depending on the scale/complication of each case

5

 Bringing the case to the court (criminal or civil court) 4,000 – 7,000 depending on the scale/complication of each case.

The above fee is exclusive 5-10% VAT of our agency fee and the disbursement fee such as fee for traveling, translation fee ($US6/100 words), and the fee for notarization or legalization. We will inform you the disbursement fee for your consideration before taking any action.

Q. Any other involved problems in the actual action, if yes, please kindly tell us

A: It is really difficult to remark this matter with you at this time. However, we will give you our advice with any arising problem in each case based on the provided information from your side or from the result of the investigation.

 

Design registration for company

By
sblaw
-

Question:  I would like to register some furniture designs in Vietnam.

Please an example of the paper work of my designs (4 pages with technical drawing). Could you advise the cost per designs and time scale to register such designs in Vietnam?
Thank you
Answer:  Regarding your enquiry concerning the subject matter, we would like to advise you procedure and our fee schedule in relation to the industrial design registration proceeding in Vietnam as follows:
1. Procedure

 

a. Protection criteria:  An industrial design shall be eligible for protection in the form of the grant of a Patent forIndustrial design when it satisfies the following conditions:

Being new

Being creative

Being susceptible of industrial application

Industrial Design

P

P

P

 

b. Validity of Patent for Industrial design:

Patent for Industrial design shall have a validity starting from the grant date and expiring at the end of 5 years after the filing date and may be renewed for two consecutive terms, each of 5 years.

 

c. Procedure and timeline:

The duration for an industrial design application from mature to proceed to registration is around 12-16 months from the filing date. An industrial design application in Vietnam shall be passed through the following stages:

Time Frame

Content of examination
Formality examination 1-2 months from the filing date (if all required document are submitted) or from the date of supplementation of all documents Examination of formality of the industrial design application
Publication 02 months from the date of acceptance of application Publishing application in IP Gazette
Substantive examination 9-12 months from the publication date Examination of criteria of protection of the industrial design application

Kindly note that the term for registration process normally takes longer to several months in practice due to the workload of the NOIP and the slow examination process by the NOIP’s examiner

d. Required documents and information:

For us to filing an industrial design application, the following documents/information should be provided:

– An original Power of Attorney which is simply signed by the Applicant (our form in attachment) (Please be informed that a scanned/faxed copy of the Power of Attorney is acceptable upon filing provided that the original copy is submitted within 01 month from the filing date;

– Name and address:

+ Applicant

+ author(s) of the industrial design

– Photographs/drawings of the industrial design (preferably in soft file).

2. Fee schedule

The basic fees are calculated based on the number of variation and Photographs/drawings of the industrial design. Fee for filing an industrial design application with 01 variation and maximum 07 photographs/drawings, in the smooth case, is US$400.00 (Four hundred US Dollars)

Note:  All above fees are exclusive of: Appeal fee to Office action (if any), Value Added Tax (VAT) : 5% of our agency fee, claiming priority, and actual communication fee.

We hope the above is of your assistance. Should you have any further inquiries, please do not hesitate to contact us.

Inquiry for Brand registration in Southeast Asian countries

By
sblaw
-

Client: Our company located in Singapore and exported our cosmetics to southeast asian countries.

For this reason we would like to apply for our main brand to Hongkong, Vietnam,Malay Indonesia and India.

Pleasel let us know if you can apply for our company and estimation for registration fee and total expenses for management and necessity document.

Your early reply would be highly appreciate.

Quotation for Vietnam trademark registration

By
sblaw
-
Question: Could you please send me a fee quote for the following:

1) Registration of a word mark (English word mark);
2) Registration of a word mark (Vietnamese word mark); and
3) Registration of a logo

in Vietnam?
Many thanks 

Answer:  We refer to your below email  concerning the subject matter. In the response, we would like to give you our quotation for trademark registration in Vietnam as follow:

 
1. FEES
In Vietnam, multi-class application is applicable. The basic fees are calculated based on the number of class of goods/services (G/S) in each application as well as the number of products designated in each class in the application. Below is the breakdown of charges for registering three trademarks in one class in Vietnam, in a smooth case, for your consideration:

Description

Official fee

(USD)

Attorney’s fee

(USD)

Total

(USD)
1.    Fee for registration of one (1) word mark (in English) in one class

60.00

180.00

240.00
2.    Fee for registration of one (1) word mark (in Vietnamese) in one class

60.00

180.00

240.00
3.    Fee for registration of one (1) logo mark in one class

60.00

180.00

240.00
4.    Extra fee for each additional class of goods/services in the application (if any)

35.00

150.00

185.00
5.    Extra fee for each additional item of goods/services in exceed of 6 in each class (if any)

7.00

3.00

10.00

 

Accordingly, assuming that the applications cover one (01) class of goods and service, the fees for registration of 03 trademarks are US$720.00. The quoted fees include fee for filing, prosecuting the application and issuance of registration certificate (if your mark is qualified for registration) but exclude disbursements such as 5% VAT, actual communication cost (around US$30.00) and bank charge (US$20, if the money is transferred oversea). Further, the quoted fees is applied forstraightforward applications only. In case of any office action or any possible opposition which may occur during the application prosecution, an additional charge on hourly basis (at the rate of US$100/h) would be incurred, upon the your approval (minimum US$250).

 

2.PROCEDURE AND TIMELINE

In Vietnam, the duration for a trademark application from mature to proceed to registration is round 14-18 months from the filing date, involving these stages (1) examination as to formality and publication on the Gazette (3 months); (2) examination as to substance (9-12 months) and (3) issuance of registration certificate for the registered mark (3-4 months). Kindly note that the term for registration process normally takes longer to several months in practice due to the workload of the NOIP and the slow examination process by the NOIP’s examiner.

3.REQUIRED INFORMATION AND DOCUMENT

– Name and address of the the Applicant;

– List of Goods/Services;

– Specimen of the applied mark (in soft copy);

– An original Power of Attorney which is signed and sealed by the Applicant (our form in attachment).

​We trust the above is of your assistance. Should you have additional question or comment, kindly revert to us. We look forward to further cooperation with you.​

Apple premieres new Apple TV for breakthrough price of $99

By
sblaw
-

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Patent attorney in Vietnam, Mr. Pham Duy Khuong, partner of SBLAW.

By
sblaw
-

Mr. Pham Duy Khuong (Mr. Pham) is a founding partner of SBLAW. He has particular experience in the field of Intellectual Property for nearly ten years.

Before joining SBLAW, he worked as a manager of intellectual property of a leading IP firm in Vietnam for many years. With his experience, he has helped many clients prosecute and enforce their intellectual property rights including trademark, industrial design, patent, copyright in Vietnam, Asian countries and other ones in the world.

Major highlighted clients include ABB, PWC, LG, Total Gaz, Nippon Steel, Watts Regulator Company, Panera, Bai Du and Caffé Bene, FPT, Viettel, PVFC, MB, Tin Nghia Corp, Viglacera, May 10, Kova, TOA, Vietsopetrol, Vietcombank, K+, VTC.

Due to his contribution to the development of intellectual property in Vietnam, Mr. Pham was awarded Australian Government’s scholarship and then got his Master of global business Law in Australia. In addition, He is also recommended as the reputed lawyer in Vietnam by the top legal ranking systems: Legal500 and ASIALAW.

                                                             EDUCATION QUALIFICATIONS

Name of Institution

Degree            Obtained

Latrobe University

Master of Law

Hanoi University of Technology

Bachelor

Hanoi University of Law

Bachelor

Judicial Academy

Certificate

 

AWARDS

Name of awards

Awarder

Reason

Year

ADS Scholarship

(Now AAS scholarship)

Australia Government

 For the contribution to the development of Vietnam in the field of Intellectual property.

2012

Lawyer of years in Vietnam

ASIA LAW

 Expert in advising foreign and local clients in the field of litigation

2012-2013

Recommended lawyers in Vietnam

Legal 500

 Expert in the field of intellectual property

2013-2014

BAR AND PROFESSIONAL ASSOCIATIONS:

Vietnam Lawyers Association

Vietnam Intellectual Properties Association

International Trademark Association (INTA)

APAA

Lawyer Pham Duy Khuong has been recommended in the Intellectual property areas by The Legal 500

By
sblaw
-

“… SBLAW FIRM’s IP department head Pham Duy Khuong provides ‘logical responses and shrewd advice’. The firm recently acted for an inventor, a Vietnamese national, in registering a patent globally, including liaising with firms across Europe and the US. The firm is currently acting for Web Entertainment incopyright infringement enforcement action against ten infringers in Vietnam. The firm has extensive trade mark experience in the manufacturing, pharmaceutical and financial services sectors, while on the patent side the team represents clients from the construction, technology and manufacturing industries. Newclients include a games retailer and a fast food retailer…”

For 27 years, The Legal 500 has been analysing the capabilities of law firms across the world, with a comprehensive research programme revised and updated every year to bring the most up-to-date vision of the global legal market. The Legal 500 assesses the strengths of law firms in 106 jurisdictions, the results of which can be viewed free of charge using the “Rankings” tab at the top of the page.

The rankings are based on a series of criteria, but simply put, we highlight the practice area teams who are providing the most cutting edge and innovative advice to corporate counsel. Our research is based on feedback from 250,000 clients worldwide, submissions from law firms and interviews with leading private practice lawyers, and a team of researchers who have unrivalled experience in the legal market.

The Legal 500 produces a wide ranging series of resources for in-houselawyers including roundtables, client insight reports, and recognises and rewards the best in-house lawyersthrough our Corporate Counsel 100 series and The Legal 500 Awards. Please use the tabs at the top of the screen to find out more.

Registration of Patent in Laos

By
sblaw
-

SBLAW – IP internatioanl agent would like to give you some information about legal procedure of registration of patent in Laos as follows: 

1. Criteria for patent protection:
–    Novelty
–    Inventive step
–    Industrial applicability

2. Required Information

a. Applicant: Name and address.

b. Inventor(s): Name, address and nationality

c. Specification of invention, utility solution

d. Claims and drawings.

e. Assignment document (if any).

f.  Certified copy of priority document (if any)

g. Search results from the Patent Office (recommended).

3. Required documents

Power of Attorney

4. Member

Paris Convention: Yes

PCT: Yes

5. Procedure for protection

Patent Filing

Preliminary Examamination

Patent Publication: 18 months from the priority date

Formal Examination Request: Before 36 months from the filing date.

90 days to respond office action from the formal examination.

Register your trademark in Laos

By
sblaw
-

If your company would like to register trademark in Laos, SBLAW – International IP Agent would like to guide you some legal infomration as follows:

1. Trademark search procedure (Optional):

In order to verify the registrablity of trademark in LAOS, applicant should conduct a search of trademark. The result will show that whether or not your trademark is similar to trademark registered by other applicants for the same product/service.

1.1. Time frame for trademark search: 05-07 working days

1.2. Required documents:

The applicant shall send SBLAW the following documents:

(i) 05 samples of trademark;

(ii) List of products/service bearing trademark

2. How to register trademark in Laos

2.1 Required documents:

In order to file trademark in LAOS, the applicant shall provide SBLAW the following documents

(i) 05 samples of trademark (size 8 cm x 8 cm);

(ii) Power of Attorney (Provided by SBLAW);

(iii) List of products/service bearing trademark.

2.2 Time Frame for register: 6-8 months

Protection of Utility Model in Laos

By
sblaw
-

If your company would like to protect utility model in Laos, SBLAW would like to provide you some information about the legal procedure of filing utility model in Laos as follows:

1. Criteria for protection:

Under Ip Laos Law, in order to protect your utility model in Laos, your utility model has to meet the following conditions:

–    Novelty
–    Inventive step
–    Industrial applicability

2. Required Information for protection 

a. Applicant: Name and address.

b. Inventor(s): Name, address and nationality

c. Specification of invention, utility solution

d. Claims and drawings.

e. Assignment document (if any).

f.  Certified copy of priority document (if any)

g. Search results from the Patent Office (recommended).

3. Required documents

Power of Attorney for SBLAW

4. Member 

Paris Convention: Yes

PCT: Yes

5. Procedure

Patent Filing

Preliminary Exam

Patent Publication: 18 months from the priority date

Formal Examination Request: Before 36 months from the filing date.

90 days to respond office action from the formal examination.

Register your Patent In Cambodia

By
sblaw
-

If you would like to register your patent in Cambodia, SBLAW would like to give you some information about the legal procedure of filling patent in Cambodia as follows: 

1. Criteria for protection:

Under the IP Cambodia law, an invention/patent must be met the following criteria:
–    Novelty
–    Inventive step
–    Industrial applicability

2. Required Information

In order to file patent in Cambodia, you have to provide us the following required information:

a.  Applicant: Name and address.

b.  Inventor(s): Name, address and nationality.

c.  Specification of invention, utility solution

d.  Claims and drawings.

e.  Assignment document (if any).

f.   Certified copy of priority document (if any)

g.  Search results from the Patent Office (recommended).

3. Required documents

– Power of Attorney (under sample of SBLAW)

4. Validation of patent/invention in Cambodia

– Patent: 20 years from filling date

-Utility Model or Design Application: 15 years from the filling date

5. International Member

Cambodia is member of following international treaties:

– Paris Convention: Yes

– PCT: Yes

6. Legal Procedure

a.  Patent Filing

b.  Preliminary Exam

c.  Patent Publication: 18 months from the priority date

d.  Formal Examination Request: Before 36 months from the filing date. Must be requested after 60 days from the patent publication date.

e.  90 days to respond office action from the formal examination.

Register trademark in Cambodia

By
sblaw
-

As the leading IP international Agent, SBLAW would like to give you some information about the registration of trademark in Cambodia as follows:

1. Procedure for trademark search (Optional):

In order to verify the registrablity of trademark in Cambodia, applicant should conduct a search of trademark. The result will show that whether or not your trademark is similar to trademark registered by other applicants for the same product/service.

1.1. Time frame for this procedure as follows: 05-07 working days

1.2. Required documents:

The applicant shall send SBLAW the following documents:

(i) 05 samples of trademark;

(ii) List of products/service bearing trademark (under Nice 10)

2. Register your trademark in Cambodia

2.1 Required documents:

In order to file trademark in Cambodia, the applicant shall provide SBLAW the following documents:

(i) 05 samples of trademark (size 8 cm x 8 cm);

(ii) Power of Attorney (Provided by SB LAW);

(iii) List of products/service bearing trademark.

2.2 Time Frame:  It take from 6 to 8 months to obtain the trademark certificate in Cambodia.

Protection of Utility model in Cambodia

By
sblaw
-
Conducting a patent clearance search

SBLAW – an IP international Agent would like to introduce some information about the procedure of filling Utility Model in Cambodia as follows:

1. Criteria for protection of Utility Model as follows:

Under the IP law of Cambodia , an Utility Model will be protected since it meets the following criteria:

–    Novelty
–    Inventive step
–    Industrial applicability

2. Required neccesary Information for filling Utility Model as follows:    a.  Applicant: Name and address.

b.  Inventor(s): Name, address and nationality.

c.  Specification of invention, utility solution

d.  Claims and drawings.

e.  Assignment document (if any).

f.   Certified copy of priority document (if any)

g.  Search results from the Patent Office (recommended).

3.  Required documents

Power of Attorney

4. Validation of Uility Model as follows:

Patent: 20 years counting from the filling date:

Utility Model or Design Application: 15 years counting from filling date

5. Member

Cambodia is member of Paris Convention and PCT

6. Procedure for filling Utility Model as follows:

a.  Patent Filing

b.  Preliminary Exam

c.  Patent Publication: 18 months from the priority date

d.  Formal Examination Request: Before 36 months from the filing date. Must be requested after 60 days from the patent publication date.

e.  90 days to respond office action from the formal examination.

Industrial Design Renew in Vietnam

By
sblaw
-
Trademark Search in Vietnam

SBLAW would like to introduce some information about industrial Design Renew in Vietnam as follows:

Under the IP Vietnam Law, Certificate of industrial design has validity of 05 years. After the due date, in order to maintain its validity, owner of the industrial design shall file application for renewing industrial design in Vietnam.

Documents and procedures of renewing industrial design in Vietnam as hereafter:

Renew Industrial Design in Vietnam
1-Validity Duration  An Industrial design once registered is valid for a term of 5 years and can be renewed every 5 years for the next two times)
2- Expiration date to renew Six months before from expiry date of registration of five years
3-Required documents Power of Attorney (according to form of SBLAW)Industrial Design Certificate

 

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