Descriptiveness and Geographic Terms: Why IP Vietnam Refuses These Marks

The Intellectual Property Office of Vietnam (IP Vietnam) applies strict standards when examining trade marks for descriptiveness. Under Article 74(2) of the IP Law, signs that describe the characteristics of the goods or services they cover, or that indicate geographic origin, are considered to lack distinctiveness and will be refused registration. For foreign applicants accustomed to more flexible examination in other jurisdictions, IP Vietnam’s approach often results in unexpected refusals.

What Article 74(2) Prohibits

Article 74(2) lists several categories of signs that are deemed non-distinctive:

Descriptive Signs (Article 74.2(c))

Signs that indicate the time, place, or method of manufacturing; the category, quantity, quality, properties, or ingredients of the goods; the intended utility or value of the goods; or other descriptive characteristics of the goods or services are refused. This category is broadly interpreted. IP Vietnam will refuse any sign that the relevant Vietnamese consumer would understand as describing what the product is, what it does, or what it is made of.

Examples of terms routinely refused include words indicating quality (“Premium,” “Best”), purpose (“Clean,” “Fresh”), ingredients (“Herbal,” “Natural”), and method (“Handmade,” “Organic”) when used for the goods they describe.

Geographic Terms (Article 74.2(đ))

Signs that indicate geographic origin of goods or services are considered non-distinctive unless the applicant can demonstrate that the mark has been widely used and recognised as a trade mark before the filing date. This applies to names of countries, provinces, cities, regions, and any geographic term that Vietnamese consumers would associate with a place of origin.

Geographic terms may be registered as collective marks or certification marks, but individual trade mark applications featuring primarily geographic terms will face refusal. Where a geographic term is protected as a geographical indication (GI) in Vietnam, the prohibition is even stricter: signs identical or similar to a protected GI that could mislead consumers about geographic origin are refused outright.

Other Non-Distinctive Categories

Article 74(2) also catches: simple shapes and geometric figures; numerals, letters, and scripts of uncommon languages; conventional signs, symbols, or common names for goods; and signs describing the legal status or business sector of the applicant. Each of these categories is assessed against the same standard: whether the Vietnamese consumer would perceive the sign as a source identifier rather than a descriptive or informational element.

The Composite Mark Trap

A common strategy for applicants is to combine a descriptive word with a figurative element (logo) and file the composite as a word-and-device mark. However, IP Vietnam does not automatically accept this approach. The office examines the overall impression of the mark and assesses whether the figurative element is sufficiently distinctive to overcome the descriptiveness of the word component.

If the logo is generic, minimal, or merely decorative — a simple geometric border, a standard icon related to the goods, or a basic stylisation of the text — it will not save the mark. The figurative element must be the clearly dominant feature of the composite, capable of independently identifying the commercial source. A descriptive word paired with an unremarkable logo results in a mark that is, in IP Vietnam’s assessment, descriptive overall.

Vietnamese and Foreign Language Terms

IP Vietnam assesses descriptiveness in both Vietnamese and foreign languages. Common English words that are widely understood by Vietnamese consumers are treated as descriptive. The Vietnamese translation or transliteration of a descriptive term is equally refused. When filing a mark that includes foreign-language text, IP Vietnam requires the applicant to provide a Vietnamese translation and pronunciation, which the examiner uses to assess descriptiveness.

Responding to a Descriptiveness Refusal

When IP Vietnam issues a refusal based on Article 74(2), the applicant has three months to file a response (with a one-time three-month extension available upon request). The response may include:

• Arguments against descriptiveness: Demonstrating that the term is suggestive rather than directly descriptive, requiring a conceptual leap to connect the sign with the goods.
• Evidence of acquired distinctiveness: Proving that the mark has, through extensive use in Vietnam before the filing date, become recognised by consumers as a source identifier rather than a descriptive term.
• Emphasising the figurative element: Where the mark is a composite, arguing that the distinctive graphic component dominates the overall impression.

If IP Vietnam upholds its refusal, the applicant may appeal to IP Vietnam’s Board of Appeal within 90 days (non-extendable) or initiate an administrative lawsuit before the administrative court.

Strategic Recommendations

• Choose inherently distinctive marks: Coined words, arbitrary terms, and fanciful marks face minimal risk of descriptiveness refusal in Vietnam.
• Invest in distinctive logos: If a descriptive element is commercially important, pair it with a genuinely original, visually dominant figurative element. The logo must carry the mark, not merely accompany a descriptive word.
• Avoid geographic names as primary elements: Geographic terms will almost certainly be refused for individual trade marks. Consider collective or certification mark formats if geographic identification is essential.
• Prepare Vietnamese translations: Before filing, assess how the mark’s foreign-language elements translate into Vietnamese and whether those translations are descriptive.
• Collect use evidence early: If you plan to argue acquired distinctiveness, begin documenting commercial use in Vietnam well before the filing date.

Key Takeaway

IP Vietnam enforces descriptiveness bars rigorously. Terms that describe quality, purpose, ingredients, or geographic origin will be refused, and combining a descriptive word with a generic logo is not a reliable workaround. The figurative element must be the dominant, independently distinctive feature of the mark. Applicants should prioritise inherently distinctive marks and, where descriptive elements are unavoidable, invest in genuinely original graphic design.