ANT Lawyers
Vietnam Law Firm with English Speaking Lawyers
ANT Lawyers
Vietnam Law Firm with English Speaking Lawyers
ANT Lawyers
Vietnam Law Firm with English Speaking Lawyers
ANT Lawyers
Vietnam Law Firm with English Speaking Lawyers
ANT Lawyers
Vietnam Law Firm with English Speaking Lawyers
Thứ Sáu, 29 tháng 9, 2017
How can I obtain a patent which is universal all over the world?
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Are there any differences in filing a Trademark application in Vietnam as compared to your home country?
The legal protection of Trademark is based on
the principle of territoriality. That means each nation is free to regulate the
use of intellectual property on its own territory. For instance, it can only
grant protection titles to the domestic brands while denying foreigners. In
order to overcome such problems, nations around the world have been reaching
and signed a number of international treaties which was built on the principle
of territoriality. There was a remarkable achievement that nations established
certain rules that all member States must respect. Member States shall protect
trademarks of companies of other member States as if they were his own citizen
(so called principle of national treatment). In other words, assuming that
Vietnam and France are member States, Vietnam is bound to treat French
enterprises the same rules that it applies to Vietnamese firms. As a
consequence, there are not any differences in principle when
filing a Trademark application in Vietnam as compared other State members. However, practically, for
filing a Trademark application in Vietnam, there might some additional
requirements or language of necessary documents as following:
1. Right to register marks: According to Article 89 Law on intellectual, foreign individuals not permanently residing in Vietnam and foreign organizations and individuals without production or business establishments in Vietnam could not file applications for Trademark registration by themselves but through their lawful representatives in Vietnam by POA (Power of Attorney).
2. Solving the language barrier: Foreign individuals permanently residing in Vietnam and foreign organizations and individuals whose production or business establishments are in Vietnam could file applications for Trademark by themselves. However, the language barrier might be the problem because Applicants shall fill a standard form in Vietnamese and submit this form to the NOIP accompanies by documents evidencing the registration right, the priority right or other documents supporting the application. All these documents could be made in another language but shall be translated into Vietnamese at the request of the State administrative body for industrial property rights.
To be accepted, the sample of the Trademark must be clearly described
by words in order to clarify elements of the mark and the comprehensive meaning
of the mark, if any; where the mark consists of words or phrases in a foreign
language, such words or phrases must be translated into Vietnamese.
3. Time for request your priority claim: Priority claim shall not be automatically recognized in Vietnam, therefore the claim for the priority right must be clearly stated in the application accompanied by a copy of the first application certified by the first IP office.
4. Applying “First to use” or “first to file” principle: In Vietnam, “first to file” principle is applied, that is far cry from so-called “first to use” countries. The “first to file” principle means rights in a trademark generally are acquired only through registration therefore a trademark owner can apply to Trademark registration without having used it anywhere and at any time. Kindly be advised that if you come from the United States, the Philippines, Australia, and New Zealand where trademark rights are generally acquired through use.
All in all, these treaties built up a harmonized system that
benefits the international firms to protect their Trademark outside of the home
nation. The local qualified Intellectual property Agent might support the
international firms in overcoming the barrier of language and these additional
requirements.
ANT Lawyers - Law firm 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.
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What Are Trademark Classes?
A trademark class is a category in which a trademark is put
into. Each class covers certain similar goods or services which the trademark
covers. For example, class 25 covers clothing. If you apply for a trademark and
tell the trademark office that your trademark will be used to represent shirts,
for example, your trademark will be put into class 25. You can potentially get
a trademark for a name that someone already has a trademark for, if you apply
for a different class.
When you apply for a
trademark, you need to tell the trademark office what goods or services this
trademark will represent. For Before reading further, make sure you understand
the basics of what a trademark is. You should know what it means that a
trademark acts as an identifier of source. To get the 101 on
trademarks, read What is a Trademark? first.
example, Coke will
tell the trademark office that the Coca-Cola trademark will be used to
represent soft drinks. When people see Coca-Cola on soft drinks, Coke wants
people to know that the soft drink was made by Coca-Cola. When approved, Coke’s
trademark will prevent people from using the Coca-Cola name on soft drinks, and
anything that is similar to soft drinks. This is because soft drinks was
indicated on Coke’s trademark application. If someone uses the name Coca-Cola
on a completely unrelated product, bookshelves for example, they may be able to
do so since bookshelves are quite different from soft drinks.
When the trademark
office looked at Coke’s trademark application for Coca-Cola, they put the
trademark into class 32 which is the class for most beverages. This is because
when Coke applied for the trademark, they told the trademark office the
trademark will be used to represent soft drinks and the trademark office knew
to put the application into class 32. Now that they have their trademark
approved and put into class 32, the class can help others determine how much
protection the trademark covers. Generally speaking, if Coke has a trademark in
class 32, you likely cannot use their trademark with any product that is also
in class 32. For example, you likely cannot use Coca-Cola to sell juices.
Further, if you applied for the trademark Coca-Cola to try and represent any
product in class 32, such as juices for example, you likely will be rejected.
This is because Coke already has a trademark for Coca-Cola in class 32, and you
are trying to apply for the same name to represent goods in the same class Coke
already is in.
Generally speaking again, if you were to apply for the same name in a different class, you may be able to get a trademark. Let’s look at an example with the name “Dove”:
You can see above that
there is a Dove soap and there is also a Dove Chocolate, trademarks owned by
two separate companies. The simple explanation as to why they can both own
trademarks for Dove is because they have applied for trademarks in different
classes. Dove owned by Mars is in class 30 for chocolates, whereas Dove owned
by Unilever is in class 3 for soaps.
Related post: What are the benefits of Trademark registration?
However, there is a
longer explanation. The real reason that both companies can each own a
trademark for Dove is not necessarily because they have applied for goods that
are in different classes, but rather because the trademark office believes that
people buying Dove chocolate will not be confused and think that the chocolate
was made by the company that makes soap. Vice versa, the trademark office
believes that people buying Dove soap will not think the soap was made by the
company that makes chocolate. The key is that the trademark office is convinced
that there is no likelihood to cause confusion by both
companies each having the trademark for the name Dove. In other words, the main
reason Dove chocolate and Dove soap can both exist is because the trademark
office considers chocolate and soap different enough that people will not be
confused as to which company is making each. It just so happens that chocolate
and soap are in different classes, which is usually true when two trademarks of
the same name coexist, but not always.
Building on this
concept, it is possible for two people to have the same trademark and coexist
in the same class. Conversely, it is possible to apply for a trademark that
already exists in one class, but file it in a different class and get rejected.
It all comes down to whether the trademark office thinks the goods and services
that are represented by the two marks are likely to cause confusion with
buyers. For example, Coke has a trademark Coca-Cola for sodas in class 32. Tea
drinks are actually part of a different class, class 30 which is the class for
tea and coffee. If you were to apply for a trademark for Coca-Cola in class 30
for tea, do you think you would be approved? The answer is likely not. Because
tea and soft drinks are both drinks, it is likely for buyers to be confused if
you have a trademark for Coca-Cola in class 30 and Coke has one for class 32.
If you label your tea as Coca-Cola, buyers will not be sure whether the tea was
made by you, or by Coke, and thus confused as to who made it. In this example,
even though you are applying in a different class than an existing trademark of
the same name, you are likely to be rejected. In an example of the reverse, if
you are applying for a mark in a class where another same mark already exists,
you could still get approved if you can convince the trademark office that the
goods you are selling are so different from the goods of the other mark in the
same class that there would be no confusion to buyers. However, this is generally
difficult since the trademark class system has been designed so that similar
products and services are put into the same class.
So let’s think
strategy. Let’s say you start a company called Widget and you will sell sodas
and teas. You want to prevent others from also selling sodas and teas by the
name of Widget. Should you apply for sodas in class 32 or teas in class 30? The
answer, is for best protection you should apply for both. If you have one
trademark for sodas in class 32 and another for teas in class 30, you ensure
that both teas and sodas are covered. Filing in both classes, however, requires
double the fees. The trademark office charges for each different class you file
in. You may say well let me just file in class 32 for sodas only, I should be
fine since you said earlier if someone else files for the same name in class 30
for teas they likely would be rejected by the trademark office since teas and
sodas are so similar. This may be true, but do you want to risk it? If someone
can make a convincing argument to the trademark office that the teas they sell
will not cause buyers to be confused with the sodas you sell, they may get the
trademark for teas in class 30. Therefore, to be safe, the best way is to file
for both class 32 and class 30, and pay double the fees needed to do so. This
is how the major corporations do it. They will cover many classes to ensure
that people cannot use their trademark name on practically any good or service.
As of this writing, Coke has 61 trademarks for Coca-Cola and similar
variations, spanning multiple classes.
There are 45 total trademark classes. When you apply for a trademark application, you will indicate what goods and services
your trademark will represent. The trademark office will then compare your
trademark to similar trademarks and make a subjective decision as to whether
your mark and what it represents is likely to cause confusion with another mark
and what that mark represents. If the trademark office thinks there is no
likelihood to cause confusion, they will approve. Otherwise, they will reject
and you have an opportunity to argue back for approval. There is no guarantee
that a trademark application will be approved as whether you are likely to
cause confusion with another mark is a subjective determination made by an
examiner at the trademark office. This is true even if nobody has the exact
same name you are applying for. The only way to get a trademark is to apply and
wait for a decision by the trademark office. To maximize your chances of
approval, however, you should apply for trademarks that are as different from
existing trademarks as possible, and list goods and services that are as
different as possible from the goods and services of existing trademarks. You
also don’t get your money back if your application is rejected or filed
improperly, so best file it properly the first time around.
Source: Quora
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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