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Foreign businesses entering Vietnam’s growing market are increasingly aware of the importance of trademark protection as part of their broader intellectual property (IP) strategy. However, many applicants encounter avoidable legal and procedural mistakes during the Vietnam trademark registration process, which can lead to costly delays, refusals, or even loss of trademark rights.
This article outlines the most common trademark application errors in Vietnam and provides practical guidance to help investors avoid them.
Incomplete or Inaccurate Trademark Information
One of the most frequent issues is submitting an application that contains vague or incorrect information about the Vietnam trademark. This includes errors in the trademark’s visual representation, inconsistent translations or transliterations (particularly for foreign marks), or misidentification of goods/services.
Vietnam follows the Nice Classification system, and improper classification of goods or services can result in office actions or outright refusal. For instance, listing goods too broadly without specificity often leads to objections by the Intellectual Property Office of Vietnam (IPVN).
Investors must ensure accuracy and consistency throughout the application and align the scope of goods/services with their actual and intended business activities in Vietnam.
Failure to Conduct Trademark Availability Searches
Many businesses skip preliminary trademark searches, assuming that their brand is unique or already protected in other jurisdictions. However, Vietnam operates on a first-to-file principle, meaning the first applicant to register a mark will typically have superior rights.
Failure to conduct a clearance search may result in filing a mark that is confusingly similar to an existing one, which may lead to opposition, refusal, or legal disputes. A comprehensive search—both online and through legal professionals—is strongly recommended before submission.
Overlooking Distinctiveness Requirements
Trademarks that are descriptive, generic, or lack inherent distinctiveness often face rejection. For example, names that merely describe the quality, intended purpose, or origin of a product (e.g., “Delicious Milk” for dairy goods) are typically refused unless secondary meaning can be proven.
Applicants should avoid marks that are overly simple, contain only promotional phrases, or closely resemble existing trademarks. Enhancing distinctiveness—such as through unique stylization or combined elements—can increase the likelihood of approval.
Ignoring the Power of Prior Use or Fame
Although Vietnam is a first-to-file jurisdiction, evidence of prior use can sometimes support a claim of earlier rights or distinctiveness. This is particularly useful in cases where a similar mark has been filed by a third party in bad faith.
Foreign investors should gather and maintain documentation of use of their mark in Vietnam or internationally, including marketing materials, sales data, and publicity, especially if the brand is well known.
Mismanaging Applicant and Ownership Details
Incorrect applicant information is another common pitfall. This includes outdated company names, inconsistent address details, or failure to assign rights properly in corporate restructuring or licensing scenarios.
Because trademark ownership is a legal right, any inconsistency or error may create barriers during enforcement, renewal, or transfer. It is vital to align application details with accurate legal documents and corporate records.
Delays in Responding to Office Actions or Oppositions
The IPVN may issue office actions requiring clarification or amendments to the application. Applicants have limited time—typically two months—to respond. Failure to do so leads to abandonment.
Similarly, during the publication period, third parties may file oppositions. Not responding timely and adequately can result in rejection. Close monitoring and professional support are essential during this stage.
Disregarding Post-Registration Obligations
Vietnam trademark protection is not a “register and forget” process. Owners must actively use the mark and maintain evidence of use, particularly if the mark is challenged for non-use after five years.
Additionally, renewals must be filed on time (every 10 years), and any assignment, license, or change of ownership must be recorded with the IPVN. Ignoring these obligations can cause loss of rights.
Legal Strategy is Key to Trademark Success
For foreign investors, trademarks are valuable business assets that require careful legal and procedural planning. Avoiding common mistakes during the trademark application process not only secures legal protection but also strengthens the brand’s commercial position in Vietnam’s dynamic market.
Early consultation with legal experts on how to register trademark in Vietnam, thorough preparation, and continuous monitoring of trademark rights are key to achieving long-term IP success.
ASL Law is a leading full-service and independent Vietnamese law firm made up of experienced and talented lawyers. ASL Law is ranked as the top tier Law Firm in Vietnam by Legal500, Asia Law, WTR, and Asia Business Law Journal. Based in both Hanoi and Ho Chi Minh City in Vietnam, the firm’s main purpose is to provide the most practical, efficient and lawful advice to its domestic and international clients. If we can be of assistance, please email to [email protected].
ASL LAW is the top-tier Vietnam law firm for Intellectual Property Services. If you need any advice, please contact us for further information or collaboration.
