Registration of certification trademark in Vietnam

Picture Lawyer of S&B Law are working about IP matter.

I. GENERAL INFORMATION AND RELEVANT PROCEDURE

According to prevailing IP law of Vietnam, “Certification mark” is a mark licensed

by its owner to other organizations, individuals to use for their goods or services

in order to certify characteristics in respect of origin, materials, raw materials and

methods of goods production or methods of services supply, quality, acuracy,

safety or other characteristics of such goods or services”.

In Vietnam, an organization with the function to control and certify the quality,

characteristics, origin or other relevant criteria of goods or services shall have

the right to register of a Certification Mark provided that such organization is not

engaged in the production or trade of such goods or services.

The registration procedure for a Certification Mark is the same as a normal

trademark.

More specifically, the duration for a Certification trademark application from

mature to proceed to registration is around 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 months) and

(3) issuance of registration certificate for the registered mark (2 months).

Kindly note that the term for registration process normally takes longer to several

months in practice due to the backlog of the NOIP and the slow examination

process by the NOIP’s examiner.

II. REQUIRED DOCUMENTS AND INFORMATION

To proceed with registration of a Certification Mark, the following information and

documents are required:

- Name and address of the Applicant;

- List of Goods/Services;

- Specimen of the applied mark;

- An original Power of Attorney (POA) if the application is filed through an IP

agent. The POA should be signed by the Applicant only. 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;

- Documents evidencing the priority right, if claimed;

- Regulations on the use of certification mark which should be certified before a

Notary Public;

- Explanation of particular characteristics and quality of the products bearing the

mark (if the applied mark is a mark for certification of the quality of a product

or a mark for certification of geographical origin);

- Map showing the indicated territoty (if the applied mark is a mark for

certification of the geographical origin of a product);

- A certified copy of the legal document evidencing the certification function of

the Applicant, the signatory of which must be certified before a Notary Public.

Regarding the Regulation on the use of certification mark, this document must

include the following essential contents:

i) The organization or individual who is the mark owner;

ii) Conditions for using the mark and conditions for termination of the right to use

iii) Characteristics of goods/services certified by the mark

iv) Methods of evaluation of the characteristics of goods/services and methods of

supervision of the use of the mark;

v) Expenses payable by the mark user for the certification and protection of the

mark, if any.

vi) Right of the mark Registrant;

vii) Obligations of the mark user;

viii) mechanism of licensing, control and inspection of the use of the mark and

assurance of the quality and reputation of goods/services bearing the mark);

ix) dispute settlement mechanism;

In addition, please further note the requirements on the documents certifying

permission for registration and use of the marks certifying geographical orgins as

hereunder:

i) for a mark certifying a geographical origin, in addition to the mark use regulation

and necessary documents evidencing the right of mark registration, the Applicant

must also provide with the Registry the local administration’s permission for the

Applicant to register a certfication mark containing signs indicating a geographical

origin (geographical name, symbol or map of the area of locality) for goods/

services bearing the mark.

ii) if the area or locality bearing the geographical origin indication can not be

identified based on the administrative boundaries and the local administration’s

permission mentioned above, the NOIP shall request the applicant to supply a

geographical map indicating the area or locality bearing the geographical origin

indication of G/S with the concerned local administration’s certification.

III. FEE SCHEDULE

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.

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