How to use registered symbol ® in Vietnam 2020

In practice of commerce, many companies and individuals use the registered symbol ® on their products. So what the registered symbol means or just for the purpose of decorating and implying the products’ prestige? And whether it is illegal to add the registered symbol to a trademark embedded on products’ packaging?

What does registered symbol mean?

The sign ® stands for “Registered” and this is one of the signs indicating the legal status of a trademark. When a product /service has the registered symbol ®  on, it means that the mark has been registered for protection with a competent state agency, specifically, has been granted with the certificate of trademark registration by the Trademark Office and in full protection in Vietnam.

Why should use the registered symbol?

The use of the registered symbol ® is intended to inform the public about the registered trademarks and to warn any parties intending to use or infringe such trademarks’ rights that the trademark has been exclusively protected.

The use of the registered symbol ® is also one of the self-protection of trademark rights by the trademark owner. In accordance with Article 198.1(a) of the Intellectual Property Law “ Intellectual property right holders shall have the right to apply technological measures to prevent acts of infringing upon intellectual property rights”, thus the intentional use of a protected trademark without the owner’s permission is an infringement of the right and is subject to sanctions as prescribed by law. The registered symbol ® is also one of many ways to help producers or consumers recognize which products are legally protected or not.

In addition, the registered symbol ® is also one of the criteria for consumers to place trust on products and choose with confidence such products of which trademark rights are well protected.

Therefore, the registered symbol is not used for decoration but to indicate the legal status of the mark.

Using the registered symbol ®  with non-registered trademark will be penalized?

 According to the provisions of Article 6, Decree No. 99/2013 / ND-CP on the regulations on sanctioning of administrative violations in the field of industrial property, the act of “Providing wrong indications on the legal status and scope of protection of industrial property rights” should be fined as follows:

– A warning or a fine of between VND 500,000 and 1,000,000 for an individual and a fine of between VND 1,000,000 and VND 2,000,000 for organizations.

– Apply remedial measures:

+ Forcible removal of infringing elements on goods or means of business

+ Forcible public correction of errors

Therefore, until the IP Vietnam issue the decision on granting the certificate of trademark registration,  the applicant is entitled to use the registered symbol ® with such trademark and on the products’ packaging.

Is it possible to file application for a trademark including the registered symbol ®?

Currently, there is no specific provision in the Intellectual Property of Vietnam on whether a trademark sample accompanied by the registered symbol ® is allowed to file with the IP Vietnam or not. However, the registered symbol ® R is a sign automatically disclaimed for protection, so in fact, the registered symbol ® R is not rejected and requested for disclaimer by the IP Vietnam. Instead, it would be clearly stated in the Certificate of Trademark Registration that the trademark is protected as a whole, not the registered symbol ® R separately.

However, in some other jurisdictions such as China, the Philippines, Malaysia, the trademark application accompanied by the registered symbol are not allowed to be filed. The applicant can only be use the registered symbol ® with the trademark once it is protected by the Trademark Office.

Therefore, if your mark intends to be registered and developed in many different markets and internationally registered through the Madrid system, such trademark if being registered in Vietnam should not contain the registered symbol ®.

For detailed advice on how to use and register trademark with the registered symbol, please contact ANLIS for in-time assistance.