How Licensing of Trademark Works?

 

Licensing of industrial property subject in general or of trademark in specific is regulated in Intellectual Property law. Accordingly, in trademark licensing, the owner (licensor) grants permission to another (licensee) to use that trademark on mutually agreed terms and conditions. The must be established in written form to avoid dispute in trademark licensing in Vietnam.

 

Trademark licensing in Vietnam

Accordingly, licensing of trademark includes the following types: exclusive contract, non-exclusive contract; sub-license contract.

Firstly, exclusive contract means a contract under which, within the licensing scope and term, the licensee shall have the exclusive right to use the licensed trademark while the licensor may neither enter into any trademark license contract with any third party nor, without permission from the licensee, use such trademark.

Secondly, non-exclusive contract means a contract under which, within the licensing scope and term, the licensor shall still have the right to use the trademark and to enter into a non-exclusive trademark license contract with others.

Thirdly, trademark sub-license contract means a contract under which the licensor is a licensee of the right to use such trademark pursuant to another contract.

In any type of the contracts, it is required to have the following contents: full names and addresses of the licensor and of the licensee; grounds for licensing; contract type; licensing scope including limitations on use right and territorial limitations; contract term; licensing price; rights and obligations of the licensor and of the licensee.

Besides the above contents, the parties also need to take note on the validity of this contract. Different from assignment contract of trademark when it is required to register at National office of Intellectual Property of Vietnam to take effect, the licensing contract of trademark does not required this kind of registration for taking effect. Licensing contract shall automatically be terminated upon the termination of the licensor’s trademark right.

If Client needs any more information or request for legal advice regarding licensing of trademark or dispute in trademark licensing contract, our Trademark attorneys in Vietnam at ANT Lawyers will be of help.

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Trademark consultant in Vietnam

 

Trademarks are an important part of client company’s competitive edge. ANT Lawyers IP practice helps you protect these valuable intellectual assets, through trademark registration, oppositions, and other trademark protection resolutions in Vietnam.

 

Trademark consultant in Vietnam

In particular, ANT Lawyers IP practice offers client services as following:

-Trademark Availability Searches

-Trademark Watch Service

-Trademark Filings & Trademark Registration in Vietnam

-Renewals

-Recordals of Amendments, Assignments, Merger Agreements, Licences

-Filing Opposition & Responses

Our trademark attorneys in Vietnam will process client’s trademark registration by carrying out the following steps:

-Providing our clients with cost estimates for searching and filing applications

-Conducting comprehensive clearance searches including analysis about registration of the required trademarks and providing advice on the most appropriate and cost-effective method to obtain a clearance

-Preparing and filing trademark applications, including obtaining appropriate legalization of documents and translations (if applicable)

-Responding to objections raised by Registrars and potential third party oppositions

-Negotiating settlement agreements when necessary to overcome prior marks

-Obtaining a Certificate of Trademark Registration once your trademark is approved

-Recording changes in name and address of proprietor, assignments, licenses and renewals of trademarks

-Providing solutions for trademark protection in Vietnam.

If you are looking for an experienced IP services in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your Trademark in Vietnam.

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Intellectual Property and Trademark Registration Services in Vietnam

 

In Vietnam, many businesses today have not paid sufficient attention to trademark protection. Only when their trademarks would be infringed by other companies or competitors, they really concern to protect their trademarks and business through trademark registration, trademark opposition or take further actions. Such situation will negatively impact the business financially.

Trademark Registration services in Vietnam

Trademark rights will be protected within the national territory, therefore when a trademark has been registered in Vietnam, it will be protected in Vietnam. If one company wishes their trademarks to be protected in other countries, it could:

-Directly register in each country or

-Register via the Madrid International registration by filing a single application which indicates the registrations at respective countries.

If registered under the Madrid International, firstly, trademarks must have been submitted trademark applications or have registered in Vietnam, depending on whether the country for protection is under the Madrid Protocol or the Madrid Agreement.

Law on Intellectual Property and its related documents could also be referred to for further information.

ANT Lawyers’ services in the field of trademark registration advice covers:

-Look-up, assess and consult possibilities to register trademark in Vietnam and abroad;

-Represent clients in applying for certificates of trademark registration, record modification, extend degree of trademark protection in Vietnam and abroad;

-Evaluate the effectiveness of the certificate of trademark registration in Vietnam and the possibility of trademark rights violation;

-Implement of the protected trademark rights: investigate, monitor, negotiate, seek arbitration or initiate a lawsuit or request other competent agencies for handling of infringement in Vietnam and abroad;

-Negotiate, draft, evaluate and register the of changing trademark ownership in Vietnam and abroad;

-Advise on building strategies, brand development;

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

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Recordal of Trademark Assignment

 

Assignment of a trademark right means the transfer of ownership right by owner of such trademark right to another organization or individual.

Trademark Assignment in Vietnam be established in the form of written agreement. Oral agreements, letters or telegrams shall not be accepted and have no legal effect. 

 

Recordal of Trademark Assignment in Vietnam

Required documents

You are required to provide us the following documents:

-One executed original of Deed of Assignment, which must be signed and sealed by both Assignor and Assignee. Since the Deed of Assignment has two pages, both Assignor and Assignee should sign on each page or use company stamp to inter-cross seal over all pages (NO      further notarization or legalization is required);

-A Power of Attorney (POA) that should only be signed by the Representative of Assignee; 

-The relevant original Certificate of Trademark Registration (if recording the assignment for a registered one).

Procedures and time

After the recordal of assignment is completed, the NOIP will issue the following documents:

-The Notice of Assignment Recordal in case of a pending Trademark Application.

-The Certificate for Registration of Deed of Assignment in case of Trademark Registration in Vietnam.

In addition, the name and address of new owner will be endorsed on the last page of this Certificate of Trademark Registration.

The whole duration for recordal of assignment in Vietnam will in straightforward case is 2 months counted from the filing date. However, in practice, this duration can be extended from 3-6 months.

Other matters

Under Vietnam Intellectual Property Law, the trademark assignment will not be approved in the following cases:

-The subject mark for assignment identical/confusingly similar to the trade name of assignor as it shall cause the confusion as to the origin of goods or services with those of assignor. 

-The subject mark for assignment similar or identical to other trademarks but not for assignment of Assignor in respect of similar goods or services as it shall cause the confusion as to the origin of goods or services with the rest of assignor.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

 

 

 

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How do you get trademark registration?

What is Trademark?

The term ‘Trademark’ refers to the brand or logo which represents the business. It is a visual symbol of a signature, name, device, label, numerals or combination of colors used by the owner of the trademark for goods or services or any other articles of commerce. Moreover, it is meant to differentiate among the similar products or services originated from the different business. A trademark can be a word, wrapper, packaging labels or a tagline or a combination of these. For example Coca-Cola and Pepsi.

 

Who can apply for the Trademark?

Any Individual, Company, Proprietor or legal entity who can claim to be an owner of the Trademark can apply for it. The trademark Registration formalities can be done in 18 to 24 months after that you can start using the ‘TM’ symbol. Once your trademark registry is done and registration certificate is issued then you may use ® (registered symbol) next to your trademark. The validity of a registered trademark is for 10 years from the date of filing and that can be renewed from time to time.

What are the documents required for Trademark Registration?

Following are the documents which are required for the Trademark registration:

-Copy of Trademark or logo

-Applicant details like name, address, and nationality and for the company it requires the state of incorporation

-Goods or services to register

-Date of first use of the trademark in Vietnam

-Power of attorney which is to be signed by the applicant.

-What are the steps for registering Trademark in Vietnam?

Following are the steps through which you can register your Trademark:

-Select a trademark agent and authorize it.

-Select attorney to represent you.

-The trademark attorneys in Vietnam conducts a trademark search.

-It depends upon the results of the search whether the trademark attorney will be draft your trademark or not. Just in case, someone already has the same trademark then you can change yours.

-The trademark attorney will file your trademark application with the trademark office and send you the receipt.

-Within a few days, the trademark attorney will send you the Original Representation Sheet of your trademark as it has been filed with the trademark office.

-No matter what the place is, it takes anywhere around 18 months to 2 years for the Trademark Office to decide whether the trademark should be granted or not. In case, if there are any objections from anywhere then it may take longer.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANT Lawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

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Why Investor Needs to Protect Trademark in Vietnam?

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

 

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the trademark protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the Trademark process and will work closely with you as you apply for your IP.

 

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Should I hire a Trademark lawyer to file trademark application?

The answer is (almost always) “yes!”

Of the many reasons to hire a trademark lawyer for a Trademark (TM), here are few...

-The process can be time-consuming - particularly conducting an exhaustive search of existing trademarks and handling any office actions that come back. Experienced trademark and IP lawyers have successfully submitted many trademark applications, so they will be able to efficiently file your application, allowing you to focus your energy on other company matters.

Trademark protection in Vietnam

-A comprehensive search of trademarks often must go beyond the USPTO’s (already difficult/confusing to search) Trademark Electronic Search System. This would be extremely difficult to accomplish without an attorney and/or professional search. It is much more cost-effective to hire a lawyer up front, than to hire one to rectify problems when you either get an office action or realize your protection wasn't as robust or complete as you'd understood.

-A trademark lawyer can help you frame your application in the best possible way (by selecting appropriate categories/drafting how it is being used/deciding whether to apply for plain text or logo protection-among many other considerations), making it more likely that your application will be granted on the first try and obtain the maximum possible protection for your company.

-Finally, a trademark or IP lawyer can help you after the process is over to help you craft a long-term IP strategy.

Source: Quora

If you are looking for a high-quality, experienced lawyer to work on trademark issues for your company, you should check out ANT Lawyers to get in touch with some of the best. ANT Lawyers - IP services in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

We assist our clients in all steps of the prosecution phase of IP management.

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What is a Trademark?

A Trademark generally refers to a “brand” or “logo”.

Trademark registration can also be obtained for a business name, distinctive catch phrases, taglines or captions.

Trademark registration services in Vietnam

Properly used and promoted, a Trademark may become the most valuable asset of a business. Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of origin of the goods as well as an indication of quality.

It is also essential to obtain trademark registration for the business name/trade name under the Trademarks Act. Registration of a company or business name under the Companies Act does not in itself give protection against others who might commence using identical or similar marks.

Use of TM, SM and ® symbols

'TM' stands for Trademark and 'SM' stands for Servicemark. The use of TM and SM symbols notifies the public that the company is claiming exclusive ownership of the trademark and can generally be used by one who has filed a trademark application.

The ® symbol, can be used only once the trademark is registered and the registration certificate is issued. Also, you may use the registration symbol only in connection with the goods and/or services in respect of which the trademark is registered.

Source: Quora

If you're looking for an affordable Trademark attorneys in Vietnam, check out ANT Lawyers.vn was established to meet these needs by providing fast, effective and economical solutions. Hope that clears things up a bit. Feel free to message me directly to chat further about any other IP questions that you face.

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How can i protect trademark around the world?

If you want to protect your trademark around the world you should keep in mind one thing - trademarks are territorial. The registration of your trademark in one country doesn’t mean protection in the whole world. If you want your mark protected worldwide you have to register it in each country of the world but this is such an expensive and long process.

Trademark in Vietnam

The most cost-effective decision will be the registration of your mark in the countries where you already have or plan to have your business.

Also, there are some opportunities for those who want to register their brand in the European Union countries - a EU trademark which includes the registration of your mark in all 28 European Union countries. One more advantage is that applying for a EU trademark is much cheaper than for each EU country separately. But you should remember that your registered trademark must be used in commerce, otherwise, it can be canceled.

Source: Quora 

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Can a company in same industry with similar name exist?

In short, the answer is yes; however, a seasoned trademark attorney would be the best person to ask regarding your particular situation. That being said, the United States Patent and Trademark Office (USPTO) routinely rejects trademark registrations based on the “likelihood of confusion” that consumers would face between a prospective trademark and one that is already on file with the USPTO. According to the USPTO, “likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion.” Some things to consider regarding “likelihood of confusion”:

Trademark in Vietnam

Aside from being rejected for having a similar textual composition to an already-existing trademark, a new registration may fail for also sounding alike, looking similar or creating “the same commercial impression in the consuming public’s mind”

The USPTO looks at whether a likelihood of confusion would exist as to the source of the goods and/or services rather than whether the actual goods and/or services are likely to be confused

The USPTO cannot perform pre-application searches or provide advisory opinions regarding registrations (hence the importance of an attorney - see below)

Businesses often seek the assistance of a lawyer to make sure their application gets accepted (which can be a time consuming process) and to avoid any future potential legal liability. For competitive rates on registering your trademark with the help of experienced trademark lawyers.

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What cannot be registered as trademark?

A trademark has to have one basic feature that is it should be unique and create a brand identity for a product. So if a trademark is such that does not create any brand for a product can't be trademarked. A trademark should not be a conflicting trademarks with others. It means the trademarks should not create confusion between two trademarks. In general,

Trademark protection in Vietnam 

-Generic words can't be trademarked. For example you can't trademark the words like TV, Fridge, scooter, car etc.

-The names of the cities and countries can not be trademarked.

-The names of Gods and Godesses and the names of religious books can not be trademarked. For example you can't trademark *Lord Ram* or *Ramayana*

-Surnames can not be trademarked under normal circumstances. For Example you can't trademark *Sharma*

-Names of Constitutional Posts or Government posts can't be trademarked. For examples you can't trademark *Prime Minister of Vietnam

-Words which denote illegal or Immoral acts can't be trademarked. For example you can't trademark *Let's cheat* or *Let's grope*

-Words which are prohibited under names and emblems act can't be trademarked. For example, you can't trademark the official sign of Government of Vietnam.

Hope this helps!

Source: Quora

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