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How to Overcome the IP Vietnam’s Provisional Refusal of the Madrid-based Collective Mark

21

DEC

2020

Collective Trademark under the Vietnam IP Law

Apart from ordinary trademark and certification trademark, a collective mark has the function to distinguish goods and services of members of a group from others not belonging to that group. Under the laws of Vietnam, legal nature of collective trademark can be identified as below:

  1. As far as the entitlement to register is concerned, only a collective organization exists in the form of a society, association or cooperative in which has 2 or more members eligible to apply for registration.
  2. With regard to the use of a collective mark in commerce, a collective mark is used by the members of the collective organization, and in some cases (such as for the purpose of introducing or promoting products of members of the collective organization) may also be used on behalf of the collective organization itself
  3. Only a collective organization named as the registrant is duly the owner of a registered collective mark. Members of a collective organization (right holder) are only members permitted to use the collective mark, not co-owners of the collective mark.
  4. Principles of management, use, recognition, admission of a member or revocation of membership relating to the use of a collective mark are provided in the regulations on the use of a collective mark

Collective mark may be identified through practical examples of registered collective trademarks in Vietnam as below, wherein Nishio Matcha was successfully represented by Bross & Partners:

Collective Mark

Registration/

Granting date

Registrant/Right Holder

Protected Products

Nishio Matcha

283985

03/07/2017

Nishio Cha Kyodo Kumiai (Tea Cooperative Association of Nishio)

Shimoyashiki 2-3, Kamimachi, Nishio-shi, Aichi 445-0894, Japan

Class 30: Tea, green tea powder

221701

25/03/2014

The Farmers Association of Loc Ninh district

Loc Ninh Town, Loc Ninh District, Binh Phuoc Province

Class 30: Pepper

209843

07/08/2013

The Thuan An Town Farmers Association

Hoang Hoa Tham Street, Lai Thieu Ward, Thuan An Town, Binh Duong Province

Class 31: Fresh mangosteen fruits

When does Vietnam Issue Provisional Refusal of Madrid-based Collective Mark Application and How to Surmount It?

As you may be aware that the Madrid system is only compatible with ordinary trademarks but not friendly to collective trademark. It means that you cannot provide a complete set of required documents regarding collective mark including the required regulation on use of collective mark. Accordingly, you is obliged to wait for receipt of the Intellectual Property of Vietnam (“VNIPO”) provisional refusal of international application for collective mark before you seek and appoint a Vietnamese trademark local agent to respond to the refusal in a period of 3 months.

Provided by the laws, you should prepare and submit the followings with the VNIPO:

(1) Documents evidencing the entitlement to registration of a collective mark include a decision or license for establishment, a charter of the organization certifying the functions and authority to manage the collective mark

(2) Regulation of use of collective mark

(3) A description of characteristics (speciality), quality of goods/services bearing collective mark

(4) Geographical area map showing the geographical origin (if an applied-for mark is the collective mark originated from geographical origin of the product containing a geographical name or other sign indicating the geographical origin of local specialties)

With respect to the Regulation on use of collective mark, 7 contents must be included:

  1. Brief information on the collective mark, owner of collective mark, goods or services bearing the collective mark;
  2. Conditions for the registrant of collective mark to be licensed use the collective mark and conditions for termination of the right to use the collective mark;
  3. Obligations of users of the collective mark (ensuring the quality and specificity of the goods or services bearing the collective mark, subject to the control of the registrant of the collective mark, paying management fees for use of collective marks);
  4. Rights of the registrant of the collective mark (control of compliance with regulations on the use of the collective mark, collection of fees for management of the collective mark, suspension of the right to use the collective mark due to non-compliance towards conditions imposed by the regulations on the use of collective marks);
  5. Mechanism for licensing, controlling and inspecting the use of the collective mark and for assuring the quality and reputation of goods and services under the collective mark;
  6. Dispute settlement mechanism related to collective exploitation and use.
  7. List of members using the collective mark.

Bross & Partners has had experience in advising and successfully registered certification marks and collective marks in Vietnam. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting, litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.

About the Firm

Bross & Partners
Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
Fax 84-24-3555 3499
Email vinh@bross.vn
Link www.bross.vn

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