In our daily consulting practice at Tran & Tran, one of the most unfortunate situations we encounter is when a business has invested significant time and resources into building a brand identity, only to discover—when they finally apply for registration—that their mark is ineligible for protection. It is often not because the mark is poorly designed or unoriginal, but simply because it fails to meet specific legal requirements set by the law.
Understanding the conditions for trademark protection not only helps you avoid costly mistakes but also empowers you to proactively design and select a mark that is registrable and protectable from the start. This is foundational knowledge that every business—regardless of its stage in the journey—must master.
Where are the Conditions for Trademark Protection Defined?
In Vietnam, the conditions for trademark protection are primarily governed by Articles 72 and 73 of the Law on Intellectual Property (most recently amended and supplemented in 2022). these are the two cornerstone articles that anyone wishing to register a trademark should read and understand.
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Article 72 defines the general conditions for protection: A trademark must be a visible sign (letters, words, drawings, images, including 3D images or a combination thereof, represented in one or more colors) and must possess distinctiveness, allowing consumers to distinguish the goods or services of the owner from those of others. These two requirements form the first “filter.”
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Article 73 lists signs that are excluded from protection—essentially a “prohibition list” that every mark must be checked against before filing. Furthermore, examination practice applies the principle of relative refusal if a new mark is identical or confusingly similar to a prior registered mark of another party.
Condition 1: The Trademark Must Be a Visible Sign
This condition pertains to the format of the trademark. Under current law, a trademark must be capable of being represented in one of the following forms: letters, words, numbers; drawings, images, graphical symbols; 3D images of products or packaging; or any combination thereof, potentially including colors.
An important point to note is that Vietnamese law currently limits trademark protection to visible signs. This means that sounds (such as a brand’s signature jingle), scents (such as a characteristic perfume), or tactile sensations (such as a specific product texture) are not yet fully protected as trademarks in Vietnam, despite being a trend in many developed nations.
While the 2022 Amendment to the IP Law has opened the door for the protection of sound marks, detailed guiding documents and enforcement procedures are still being finalized. Businesses interested in protecting sound marks should contact Tran & Tran IP for the latest updates and strategic advice.
Condition 2: The Trademark Must Possess Distinctiveness
This is the most critical condition and the most common cause for registration refusal. A trademark is considered distinctive if it helps an average consumer recognize and distinguish the goods or services of one entity from those of another upon seeing the mark.
The law lists several types of signs that are deemed non-distinctive, which should be avoided:
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Overly Simple Signs: A single line, a circle, a square, or a plain rectangle without special details; a single number or a single letter in a standard alphabet; or a standard image of the product itself without any stylization or creativity.
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Descriptive Signs: This is the most common reason for refusal. If your mark directly describes the quality (e.g., “HIGH QUALITY”), utility (e.g., “FAST CLEAN” for detergents), ingredients (e.g., “100% NATURAL” for cosmetics), geographical origin (e.g., “HANOI PRODUCT”), or production time, it will be rejected.
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The legal rationale: Descriptive terms must remain open for all businesses in the industry to use. Allowing one beverage company to monopolize the word “DELICIOUS” would unfairly prevent competitors from using common adjectives, which is detrimental to the market and consumers.
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Generic Names: Terms that have become the common name of the goods in everyday language. Words like “motorbike,” “mobile phone,” or “laptop” cannot be trademarks because they represent the category of the product itself.
Absolute Grounds for Refusal
Beyond distinctiveness, Article 73 of the IP Law specifies signs that are absolutely prohibited from protection under any circumstances, even if they are unique.
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Public Order and Ethics: Signs that violate the law, offend social ethics, or deceive consumers regarding the nature, quality, or origin of the product.
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State and International Symbols: Signs identical or similar to national flags, emblems, or symbols of Vietnam or foreign countries; symbols of major international organizations (UN, WHO, UNESCO); or state medals and titles.
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National Figures: Signs identical to the names or portraits of leaders, national heroes, or famous figures of Vietnam, or famous geographical names/symbols of Vietnam without authorization.
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INN for Pharmaceuticals: Signs identical to the International Non-proprietary Name (INN) of pharmaceutical active ingredients recommended by the WHO. This ensures that scientific names of medicines cannot be monopolized.
Relative Refusal: Conflict with Existing Rights
This is the most frequent cause for refusal during examination at the IP Office and the primary reason to conduct a professional search before filing. Unlike absolute refusal, relative refusal only occurs when there is a conflict between your mark and the pre-existing rights of a specific third party.
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Identical or Confusingly Similar Marks: The “first to file” principle applies strictly here. If your mark is identical or confusingly similar to a mark already registered or filed earlier for the same or similar goods/services, the priority belongs to the earlier filer.
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Assessing “Confusing Similarity”: Examiners look at the overall impression, including visual similarity (spelling, layout, color), phonetic similarity (how it sounds), and conceptual similarity (meaning).
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Well-known Trademarks: Well-known marks are protected in Vietnam even if they are not yet registered, based on their widespread recognition.
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Conflict with Other IP Rights: This includes conflicts with existing copyrights, registered industrial designs, or the personal rights of famous individuals or fictional characters.
Strategies to Enhance Trademark Distinctiveness
If your intended mark contains descriptive elements, you do not necessarily have to abandon the idea. Several practical strategies can enhance distinctiveness:
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The Combination Strategy: Combine a descriptive word with a creative graphic element, a unique custom font, or highly artistic stylization. While the descriptive text itself may not be monopolized, the overall visual identity becomes distinctive and protectable.
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Using Coined Words (Neologisms): Create a new word that does not exist in the dictionary but suggests the field of activity. Global brands like “Kodak”, “Xerox”, or “Google” are perfect examples—they are entirely creative, describe nothing directly, and thus possess absolute distinctiveness. In Vietnam, brands like “Viettel” or “Vinamilk” follow this trend.
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Acquired Distinctiveness (Secondary Meaning): In exceptional cases, a mark that was initially non-distinctive can be protected if the owner proves that through long-term and widespread use, it has gained a “secondary meaning” in the minds of consumers.
Pre-filing Checklist: 6 Questions to Ask
To help businesses self-assess, Tran & Tran IP has condensed a practical checklist:
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Can your mark be represented as text, images, or a combination?
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Does your mark directly describe the quality, use, or ingredients of the product? (If yes, it needs more creativity).
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Does the mark contain state symbols, national flags, or portraits of historical figures?
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Does an IPVN database search show similar marks registered for the same types of products?
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Does your mark conflict with the name of a celebrity or a copyrighted fictional character?
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Overall, does your mark have at least one unique, creative element that allows consumers to remember it?
Why Consult an Expert?
The checklist above is only a preliminary assessment. Accurate evaluation requires deep legal knowledge and practical experience. For example, two marks may look different but sound nearly identical in Vietnamese—a nuance that automated image searches might miss, but an examiner will flag.
At Tran & Tran IP, before advising a client to file, we conduct a comprehensive evaluation: in-depth searching across multiple databases, multi-criteria distinctiveness analysis, and risk assessment. Our goal is not just to get your application accepted, but to ensure the maximum and sustainable scope of protection for your brand.
International Registration: What’s Different?
If you plan to register abroad, be aware that conditions vary by country. What is protectable in Vietnam might be rejected in another jurisdiction. For instance, some countries have much stricter regulations regarding geographical names or 3D shapes. This is why when we consult on markets like Laos, Cambodia, and Myanmar, we evaluate the conditions specifically for each nation rather than applying Vietnamese standards.
Conclusion
Understanding trademark conditions is a foundational step for every business, from startups to large corporations. A mark that is selected correctly from the start—meeting all legal requirements and possessing high distinctiveness—is not only easier to register but also carries higher commercial value and stronger legal protection.
Tran & Tran is ready to accompany you through every step—from initial idea assessment and brand strategy design to in-depth searching and filing.
CONTACT TRAN & TRAN
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Hotline: 0917 913 266
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Email: ip@trantran.vn
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Address: P802, Talico Building, 22 Ho Giam Street, Quoc Tu Giam, Dong Da, Hanoi
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Office Hours: 8:00 AM – 6:00 PM, Monday to Friday
