Madams! I submitted the application of trademark registration for my company to the Intellectual Property Department in Ho Chi Minh City

Question 6: Dear Sirs/Madams! I submitted the application of trademark registration for my company to the Intellectual Property Department in Ho Chi Minh City (in April 2014). After a few months, I received a response – The dossier was accepted to be valid. Since then, more than a year has flied, and the Intellectual Property Department has not given us the results. I have contacted the office in Hanoi – The recipient of record said that I waited for a few more months (I had been waiting for an additional 3 months); they prioritized the service dossiers and because of extremely many dossiers and they hope to receive the enterprise’s sympathy. Wait too long, I need to consult from your company.

According to Article 119 the Law on Intellectual Property amended and supplemented 2009 regarding time limit for processing industrial property registration applications:

1. An industrial property registration application will have its form examined within one month from the filing date.

2. An industrial property registration application shall be substantively examined within the following time limits:

a/ For an invention, eighteen months from the date of its publication if a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication;

b/ For a mark, nine months from the date of application publication;

c/ For an industrial design, seven months from the date of application publication:

d/ For a geographical indication, six months from the date of application publication.

3. The time limit for re-examination of an industrial property registration application is equal to two-thirds of the time limit for the initial examination and may, in complicated cases, be prolonged but must not exceed the lime limit for the initial examination.

4. The duration for modification or supplementation of applications by applicants will not be counted into the time limit specified in Clause 1, 2 or 3 of this Article. The time limit for processing requests for modification or supplementation of applications must not exceed one-third of the corresponding time limit specified in Clause 1 or 2 of this Article;

Accordingly, time limit for processing application regarding:

- Results of formal examination:

·         Time limit for formal examination: 1 month from the date of submitting the dossier.

·         The Intellectual Property Department shall consider whether the application satisfies the conditions on the form, the label, the owner of the application, the right to submit an application, the sub-group, etc.

·         If the application for trademark registration satisfies the conditions, the Intellectual Property Department will notify the acceptance of the valid application and publish the application.

·         If the application for trademark registration does not meet the conditions, the Industrial Property Department shall issue a notice refusing the application and request the enterprise to amend it. The enterprise shall make modifications as requested and submit amendments to the Intellectual Property Department.

- Publication of industrial property registration applications:

·        Time limit for publication of the applications: 02 months from the date of the notice of acceptance of the valid application.

·         Contents of publication of industrial property registration application are information relating to the valid application which is mentioned in the acceptance notice, the trademark sample and the list of goods and services.

- Results of examining the content of the application form:

·         Time limit for content examination: 09 months from the date of publication of the application.

·         The Intellectual Property Department examines the conditions for trademark registration from which it assesses the possibility of grating a patent to a trademark registered by an enterprise.

·         If the trademark application satisfies all the conditions, the Industrial Property Department hall issue a notice of intention to grant the certificate to the trademark registered by the enterprise.

·        If the trademark application fails to meet all the conditions, the Intellectual Property Department shall issue a notice refusing to grant a patent to the trademark registered by the enterprise.

Enterprises shall consider and send written replies and complaints against the decision of the Intellectual Property Department and at the same time present the grounds for the grant of trademark protection.

- Grant Protection Title:

·         Time limit for the grant of Protection Title: 02-03 months from the date of paying fee of the grant of Protection Title.

·         After issuing a decision on the grant of Protection Title, the enterprise shall pay fee of the grant of title and obtain a protection title.

Therefore, the maximum time limit for the Intellectual Property Department to process trademark applications is 15 months. According to the information you provided, you submitted a trademark application to the Intellectual Property Department in April 2014.  The time limit has expired.

Thus, you are titled to complain with the State administrative agency for industrial property or to take legal action in accordance with the provisions of the Intellectual Property Law and related laws as stipulated in Clause 1 Article 14 Decree 103/2006/ND-CP detailing and guiding the implementation of a number of articles of the Law on Intellectual Property on industrial property:

Applicants and all organizations and individuals that have rights and interests directly related to decisions or notices related to the handling of industrial property registration applications issued by the state management agencies in charge of industrial property are entitled to complaint to the state management agency in charge of industrial property or initiate a lawsuit in court according to the Intellectual Property Law and relevant laws.

Relevant similar questions:

- Procedures for renewal of trademark protection in Vietnam.

- Procedures for intellectual property rights protection in Vietnam.