Date: 06-04-2019 by: Banca IP Law Firm
Guide: How to protect your brands in Vietnam
Vietnam is a rapidly growing market, a “middle income status” country as judged by the Asian Development Bank. This does necessarily mean that the country gets more increasingly brand savvy consumers to purchase foreign goods and services. Together with its participations in many FTAs such as EVFTA or CPTPP, the country becomes increasingly attractive to the foreign companies seeking to diversify their manufacturing bases in Asia.
Together with many existing guidelines, Banca now help you and your client to equip more understandings about protecting your brand in Vietnam from the inception of your arrival.
Trademark squatting is rampant in Vietnam. Foreign investors are vulnerable to trademark squatting as Vietnam applies “first-to-file” system rather than “first-to-use”. Foreign investors should not assume that by registering their trademarks in the US, Europe or any other parts of the world, they will be automatically be recognized in Vietnam also, even it’s a world’s famous brand. Vietnam does not recognize trademarks registered in other jurisdictions and will grant protection only to those marks that are filed first in Vietnam, regardless of use or intent to use.
Vietnam is “first-to-file” jurisdiction, which allows first party to file a trademark application in Vietnam will typically be the one to whom the Vietnam’s National Office of Intellectual Property (NOIP) will issue a trademark registration.
Domain names are linked with brand identity and exclusivity. This means that domain name registrations follow the same problems as trademarks. In Vietnam, domain squatting usually appear in 2 methods: domain name speculation and domain name cybersquatting. Domain squatters usually register similar or identical domains of a famous brand which they expected to be assignable. The squatters then control that domain to do from a mercenary motive of the domain name bearing the brand prestige to compete or force the real owners to negotiate with them.
Recommended strategy for trademarks and domain names
First to file
First to file mechanism (vital to register as early as possible to save enforcement costs later on). Enterprises predicting expansion to Vietnam should register at the earliest, particularly as the registration may consume considerable time in some cases. For this reason, you should make efforts to register and maintain your trademarks in Vietnam. Even before you begin to seek to do or do business in Vietnam, make sure your intellectual property (IP) rights (trademarks, tradenames, patents, etc.) are protected to the maximum extent possible and registered at the earliest as the examination process after those IP rights are established take a considerable time. The technology transfer requirements of Vietnamese law and regulations are unjustifiably severe. You must seek expert guidance before you agree to anything in this area.
Vietnamese language uses a Latin alphabet, thus Vietnamese people are familiar with English version of foreign brands. Upon this, registering a trademark in the local language is less common in Vietnam than the neighboring country, China. However, if a trademark has a certain meaning that is translatable into Vietnamese, if the trademark owner finds a phonetically similar “Vietnamese version” of its trademark is familiar with local consumers, trademark owner is recommended to register a Vietnamese translation of its mark with the NOIP.
Register domains in advance
Disputes over domain names can be addressed in accordance with Article 76 of the Information Technology Law and Article 16 of the Decree 72/2013/NĐ-CP of the Government on management of Internet resources via reconciliation, arbitrator, and/or ends with a lawsuit. Please note that all the domain name disputes of “.vn” shall be handled by the Vietnam Internet Network Information Center (VNNIC)’s regulation (which is under control of the Ministry of Information and Communications).
Article 130 of the IP Law, the act of "Registering or possessing the right to use or using a domain name identical with or confusingly similar to a protected trade name or mark of another person, or a geographical indication that one does not have the right to use, for the purpose of possessing the domain name, benefiting from or prejudicing reputation and goodwill of the respective mark, trade name and geographical indication" shall be considered as an act of unfair competition.
Even though the law does not stipulate domain name as an object of Intellectual Property law, the above regulation already set a ground for the owners (who has the related rights and benefits) so that they can ask the government authorities who will handle the domain disputes to protect their legitimate rights and interests when doing business in Vietnam (in this case, the Ministry of Information and Communications).
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