9 Things You Should Avoid When Naming and Registering a Trademark in Vietnam

(a) An applied-for mark must be inherent distinctive. A test for checking inherent distinctiveness is the first mandatory legal standard to assess whether the mark applied for registration is considered to have a trademark function (distinctive character). In other word, a mark seeking protection would be deemed devoid of distinctive character if it is merely descriptive of utility, function, composition, nature or other attributes of goods or services; and

(b) An applied-for mark must not conflict with others’ earlier rights. A conflict finding means determining whether the second legal standard is satisfactory, meaning it requires to find likelihood of confusion between applied-for mark and other earlier filed/registered trademarks/brands.

With more than 13 years of experience providing high-quality intellectual property services to clients all over the world, Bross & Partners would share 9 things you should think twice if you want to successfully register your trademark in Vietnam:

5. Choosing trademark that has been popularly viewed in the market. The reasons are that it is very difficult for you to prove your trademark is distinctive enough from a great deal of earlier cited marks used by the VNIPO as refusal ground on the one hand, it is not easy for your brand/trademark to be memorized in the public mind by reason of lack of strong impression on the other hand. For instance, both the IPLIB http://iplib.noip.gov.vn/WebUI/WSearch.php (administered by the NOIP) and the WIPO monitor https://www.wipo.int/madrid/monitor/en/index.jsp show that there are nearly 250 trademarks sought for protection contain the elements “stars” pertaining to food commodity in class 30 in Vietnam.

6. Choosing a trademark connoting highly descriptive or suggestive degree. Where your intended brand/trademark is highly suggestive or descriptive of function, nature or characteristics of goods/services, and you do not want to change or cancel seeking protection (ie. by reason of marketing purpose), it is best to combine it with another visible sign (ie. unique logo or device), or attempt to revise it as shortened form or misspelled words, for instance, the totally descriptive phrase "well yogurt" can be registrable as trademark if it is reworded as WELLYO.

7. Naming trademark too long or complicated. A brand name/trademark that is too long or difficult to pronounce would be hard recognized and read because Vietnamese consumers can mostly remember only Vietnamese or Latin brands/trademarks with a simple structure and easy-to-read. For example: Allergan's brand name for neuropathy medicince, Botox Botulum Toxin Type A Purifield Neurotoxin Complex (even though it is arranged in 3 lines), is still considered too long, or Schwarzkopf used for cosmetics is regarded too difficult to read.

8. Naming trademark likely meaning negative or delivering descriptive attribute of goods/service in any other languages other than Vietnamese. A brand name/trademark, in spite of being likely deemed as merely descriptive in foreign language, may still be registered as long as the VNIPO’s examiner (trademark attorney) has not yet found evidence to deny it. However, upon grant of protection, such registered trademark may be cancelled due to its descriptive meaning, this shows Vietnam appears to follow the doctrine of foreign equivalents. Ex: Cotto was partially canceled with respect to sanitary ware made of ceramics because the term Cotto in Italian means burnt, cooked or fired (brick).

9. Forgetting to register slogan or tagline as a trademark. Slogans or taglines used in commerce may be still a good brand/trademark as long as it is not too descriptive (as little as possible) in respect of the characteristics of goods/services it is used for. For example: Just Do It, Ngọn Lửa Của Niềm Tin (a Flame of Faith) by PVI, Nâng Niu Bàn Chân Việt by Biti’s are slogans with trademark functions.