Supporting Enterprises in Registering Trademark Protection and Geographical Indications Abroad: Key Issues to Consider

Han Tuong Minh - General Director of Concetti Company

In recent years, the activities aimed at promoting and supporting the protection of trademarks and geographical indications abroad for enterprises, as well as for local specialties and key products, have received significant attention with various mechanisms, policies, and support programs from the State of Viet Nam. However, the achieved results remain modest and fall short of expectations due to difficulties arising from both objective and subjective factors.

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Current Situation of Trademark and Geographical Indication Registration Abroad by Vietnam

According to statistics from the World Intellectual Property Organization (WIPO), the number of trademark applications originating from Vietnam (filed by organizations or individuals originating from Vietnam) submitted to foreign intellectual property offices in 2022 totaled over 4,900 applications, accounting for 9.4% of the total applications originating from Vietnam, marking an increase of approximately 1.6 times compared to 2018. Among foreign intellectual property offices, the United States Patent and Trademark Office (USPTO) received the highest number of applications originating from Vietnam, with 1,049 applications, followed by South Korea (104 applications), Japan (96 applications), Australia (87 applications), and the European Union (83 applications).

Figure 1. Total number of trademark registration applications originating from Vietnam (2018-2022).

Table 1 shows that Vietnam's trademark registration maintains growth both domestically and internationally. This outcome partly reflects the effectiveness of the Intellectual Property Strategy by 2030 approved under Decision No. 1068/QD-TTg dated August 22, 2019 by the Prime Minister and the Intellectual Property Development Program by 2030 approved under Decision No. 2205/QD-TTg dated December 24, 2020 by the Prime Minister, aiming to elevate intellectual property as a crucial tool for enhancing national competitiveness, fostering an environment conducive to innovation, and promoting economic, cultural, and social development.

However, compared to other countries, the number of trademark applications filed abroad by Vietnamese entities remains relatively modest, primarily by enterprises. Besides export conditions, one of the main reasons could be the significant registration costs abroad, which are often prohibitive for Vietnam's small and medium-sized enterprises (SMEs), leading them to exercise caution when considering international trademark registration. Addressing this issue, the Ministry of Finance issued Circular No. 75/2021/TT-BTC on September 9, 2021, regulating financial management for implementing the Intellectual Property Development Program by 2030 (Circular 75), specifying a support level of 60 million VND per application for trademark registration abroad. This support amount aligns reasonably with the required fees abroad but, in practice, the support activities have not yet fully achieved the expected effectiveness.

Emerging Challenges and Difficulties

The support amount of 60 million VND per trademark registration application abroad (under Circular 75) is relatively appropriate for safeguarding trademarks in important export markets for Vietnam such as the US, EU, and Japan. Nevertheless, enterprises encounter several challenges in accessing the budget for various reasons:

Firstly, regarding product and disbursement deadlines, as stipulated by Circular 75, the expenditure applies to "accepted valid applications and corresponding documents as required by international or national filing organizations." Typically, the disbursement period for this funding is within the approved year. In reality, the assessment procedures in many countries do not provide formal notification documents of acceptance or corresponding documents, causing difficulties for supported enterprises in providing adequate documentation to receive the funding, while the state management agencies also lack sufficient grounds to allocate funds.

Secondly, difficulties in trademark search costs. The aim of the support is successful trademark protection in foreign markets. To achieve this goal effectively, conducting thorough trademark searches and evaluations before submitting applications to the desired countries for protection are crucial and necessary. However, with the full-package support amount (including search, application, and issuance), the reality is that if search results indicate potential unfeasibility (high likelihood of trademark rejection), but the application is still submitted (due to task approval), enterprises may fail in trademark registration, while the budget allocation fails to achieve its intended goal.

Thirdly, concerning enterprise matching funds, cooperation between enterprises and localities is a crucial foundation for achieving the highest effectiveness in supporting trademark protection abroad. As per regulations, the support level applies under smooth application conditions without additional costs such as responding to notifications from global intellectual property offices. Aside from the incurred costs during assessment processes, in some countries, applicants also need to pay additional fees before official trademark protection is granted, such as a declaration of trademark use in the US. Failure to provide or inability to match the corresponding funds for pursuing applications can hinder support activities from achieving the highest goals.

For local specialties and key products, most of Vietnam's geographical indications abroad are protected through bilateral protection agreements, supported enthusiastically and provided with favorable conditions by international trading partners. Despite having over 2,000 protected certificates in Vietnam for geographical indications, the number of these objects applied for or protected abroad remains minimal. Main challenges stem from insufficient detailed legal research and evaluations on intellectual property laws, incomplete protection conditions in target markets, inadequate capacity of applicants registering and managing geographical indications, collective marks, and certification marks abroad, or non-compliance with regulatory requirements.

Additionally, quality control and certification activities in Vietnam's localities are still rudimentary, inadequately supporting products bearing geographical indications, collective marks, and certification marks for export.

Efforts Required from All Parties

Support activities for trademark and geographical indication protection abroad for enterprises and local key products have received significant attention and active deployment from various localities, aligned with the direction and content of the Intellectual Property Strategy by 2030. To enhance the effectiveness of these activities, better support for Vietnamese products competing in international markets requires concerted efforts from all involved parties. Specifically, for solutions involving trademark registration abroad supported by state budget sources, relevant parties need to accurately identify registration needs, conduct thorough legal research in the target countries, assess the protection capabilities of the entities to be registered, evaluate the suitability of the application documents, consult with lawyers or industrial property representatives in the target countries, and diligently pursue and follow through with applications.

For enterprises benefiting from these initiatives, responsible management of supported funds to ensure effectiveness is crucial. Strong enterprises and local key players can feasibly allocate matching funds, especially in cases where trademark searches yield favorable outcomes. Hence, enterprises and localities should establish agreements and commitments to jointly achieve the shared goal of successfully protecting trademarks in foreign markets.

Source of the article: “Electronic journal "Science and Technology”

 (Article published in the "Science and Technology Forum" section of the electronic journal "Science and Technology Vietnam").