Comprehending the Process of Trademark Opposition in Vietnam

We will explore the legal basis for intellectual property rights holders to oppose trademark applications in Vietnam.

It is recommended that IPR holders take measures to prevent competitors from registering similar marks to their own in order to reduce legal risks, particularly in preventing consumer confusion and unauthorized use of their trademark or brand goodwill exploitation.

In order to protect their brands and intellectual property in Vietnam, IPR holders need to understand the legal provisions for objecting to a trademark registration or providing third-party observations, as outlined in Articles 112 and 112a of the amended 2022 IP Law.

This article will discuss the legal reasons for opposing trademark applications in Vietnam. [Reference: Law No.: 07/2022/QH15: The National Assembly promulgates the Law on Amending and Supplementing several Articles of the Law on Intellectual Property No. 50/2005/QH11, which was amended and supplemented under Law No. 36/2009/QH12 and Law No. 42/2019/QH14.]

Trademarks that are overlapping, identical, or similar

You can file an opposition to a trademark application if it closely resembles an earlier mark that is already protected for similar goods or services, whether it is registered in Vietnam or under international treaties to which Vietnam is a party (Article 74.2e). The first-to-file principle grants protection to the trademark application with the earliest filing date provided it meets all necessary conditions (Article 90.2). Unregistered trademarks that have gained widespread recognition can also be used as grounds to oppose another’s earlier trademark application (Article 74.2g). Owners of well-known marks, whether registered or not, can oppose pending trademark applications by proving the mark’s well-known status predates the filing of the new application and demonstrating potential confusion or dilution for similar or dissimilar goods/services (Article 74.2i). Additionally, trademarks that have expired within the last three years (previously five years before Vietnam’s IP Law 2022) can still be used as grounds for opposing pending trademark applications that are identical or confusingly similar. Despite their registration lapsing, marks that have expired but fall within this three-year grace period are still afforded a residual level of protection.

Disputes arising from trade names

In Vietnam, trade names are protected without the need for filing or registration, as long as they have been legitimately used (Article 74.2k). Suppose a trade name has established rights through lawful usage in Vietnam. In that case, it is safeguarded against unauthorized use of identical or similar signs, whether as a trade name or a trademark, if such usage is likely to deceive the public. This means that opposition can be filed against new trademarks that resemble existing trade names with established commercial rights in Vietnam. This legal protection aims to safeguard established business identities and prevent consumer confusion.

Violation of Geographical Indication (GI)

The infringement of Geographical Indication (GI) is addressed in Articles 74.2l and 74.2m. A trademark application can be opposed if it is found to infringe upon a protected GI as outlined in these articles. According to Article 74.2(l), opposition may be based because the mark is identical or similar to a protected GI, potentially leading consumers to believe the goods originate from a different geographical area.

Article 74.2(m) specifically relates to trademarks associated with wines and spirits. It allows opposition against trademarks that use, translate, or transcribe a GI related to wines and spirits, particularly if the products do not genuinely originate from the indicated geographical areas.

Agreements and mutual treaties that Vietnam has signed related to intellectual property rights

Vietnam has ratified several international agreements and treaties related to trademarks and intellectual property rights. These include the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, the TRIPS Agreement (The Agreement on Trade-Related Aspects of Intellectual Property Rights), the Madrid Agreement, the Madrid Protocol, as well as bilateral and regional trade agreements such as the United States-Vietnam Bilateral Trade Agreement, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the EU–Vietnam Free Trade Agreement (EVFTA), and the Regional Comprehensive Economic Partnership (RCEP).

However, Vietnam has not signed the Hague Agreement. The Hague Agreement, administered by the WIPO, allows for the registration of an industrial design in multiple countries through a single application, filed in one language, and with one set of fees.

Vietnam is party to various international agreements and treaties concerning trademarks and intellectual property rights, including the Paris Convention, the Berne Convention, the TRIPS Agreement, the Madrid Agreement, the Madrid Protocol, and bilateral and regional trade agreements. Vietnam is not a signatory to the Hague Agreement administered by WIPO.

Infringement of a protected industrial design

According to Article 74.2(n) of Vietnam’s IP Law, a trademark application might be opposed if it contains a sign, like a logo, shape, or symbol, that is the same as or slightly different from an existing protected industrial design. This opposition is valid if the industrial design in question was submitted for registration before the filing date of the trademark application.

In these cases, opposition to the registration of a mark can be based on a prior design right, especially if the shape of the trademark is identical to the protected design. Furthermore, Article 74.2(n) suggests that the design right applies irrespective of the goods for which the trademark is intended to be registered.

Violation of copyrighted material

Trademark applications that include reproductions of copyrighted works are not eligible for trademark protection unless authorized by the owners of the works. This aspect of Vietnam’s IP Law gives owners of copyrighted works, such as logos, artistic designs, and other creative expressions, the right to object to trademark registrations that directly copy or incorporate their copyrighted materials without their permission.

Similar to protections for industrial design, Article 73.7 enables copyright holders to oppose trademark registrations that feature their work without consent, regardless of the intended goods or services.

The process for preventing the registration of trademarks containing protected works operates in the following manner:

- Artistic works created for logos or labels can be included as figurative and three-dimensional elements of trademarks.

- These artistic works are protected by copyright law, and the creator holds the copyright.

- Usage of these works in trademarks necessitates either the transfer of rights or a license from the copyright holder.

- Copyright holders typically possess economic rights to commissioned artwork for logos or trademarks.

- If someone uses artwork in a trademark without permission, the copyright holder has legal recourse.

Moreover, under Article 74.2(p), trademarks resembling names or images of well-known characters or figures from copyrighted works can also be opposed, but only if they were widely known to the public before the filing date of the trademark application. This requirement ensures that not all characters or figures are eligible for opposition and that only those with significant public recognition can be protected.

Without a unique quality

Vietnam's intellectual property (IP) Law outlines the types of signs that cannot be protected as trademarks, specifically those that lack inherent uniqueness due to being generic, descriptive, or misleading (Articles 73 and 74.2a-d, dd).

The inability to register a trademark

Producers have the right, as per Article 87.2, to object to attempts by third parties, such as distributors or other entities, to register trademarks for products associated with that producer. Suppose a producer finds that their distributor or marketer has made unauthorized attempts to register a trademark with IP VIET NAM (Intellectual Property Office of Vietnam, Ministry of Science and Technology). In that case, they can oppose this application on the grounds of lack of consent.

According to Article 87.7, if a representative or agent attempts to register a mark in Vietnam on behalf of the mark owner, and there is a treaty prohibiting such registration, the mark owner has the right to oppose it. They can argue that the registration is not permitted under the treaty unless they have provided consent or there is a valid reason for the registration.

Applications made in bad faith

Clause 187.2 permits third parties to oppose trademark applications in Vietnam if they suspect that the applicant is trying to register a trademark in bad faith. "Bad faith" refers to cases where the applicant knowingly applies for a mark that already belongs to someone else without their consent.

The definition of "Bad Faith" as a basis for challenging trademark applications or registrations is detailed in Section 34.2 of Circular No. 23/2023/TT-BKHCN, which will be effective from November 30, 2023. It is considered that the applicant has acted in bad faith if the evidence presented satisfies both of the following conditions:

a. At the time of application, the applicant knows or has justifiable grounds to know that their applied-for trademark is identical or confusingly similar to another person's trademark that is widely used in Vietnam or internationally for similar goods or services.

b. The motive behind the applicant's trademark registration is to benefit from the reputation or goodwill of the other person's trademark for profit, mainly through resale, licensing, or transferring registration rights to the other person, or to prevent the other person from entering the market or engaging in other unfair commercial practices.

Awareness of the mark can be gained from various sources, including its recognition domestically or internationally, or its established reputation within Vietnam. Additionally, knowledge of the mark may be demonstrated if the applicant has had a prior connection or business relationship with the mark's owner, as evidenced through previous correspondence or negotiations between the parties involved.

Circular 23/2023/TT-BKHCN contains modifications related to the processing of opposition requests

The recent Circular 23 has revised the timeframes for parties to submit their opinions/arguments as outlined below:

Following receipt of the Notification of the Opposition and/or the applicant’s response, parties now have 02 months, instead of the previous 01 month, to provide their response.

In cases where the Vietnam IP Office requests legal action, opposing parties are now granted 02 months, as opposed to the previous 01 month, to furnish a copy of the Court’s Acceptance.

The Vietnam IP Office will address oppositions related to registration rights without necessitating legal proceedings in specific situations stipulated in Article 11.5:

When there is clear evidence indicating that the applicant lacks the right to file under Clause 7, Article 87 of the Law on Intellectual Property.

When the objection pertains to the right to file mark registration applications for a sign that is a place name or another sign indicating the geographical origin of a Vietnamese local specialty, as specified in Clauses 3 and 4, Article 87 of the Law on Intellectual Property.

The language utilized by the objecting party must be Vietnamese; however, accompanying documents may be in other languages but must be translated upon request by the Vietnam IP Office.

Advisory on best practices for protecting intellectual property in Vietnam

It is crucial for new businesses entering the Vietnamese market and foreign investors seeking to establish a presence in Vietnam to make protecting intellectual property a top priority from the beginning. To safeguard valuable assets and minimize risks, it is important to understand the intricacies of IP rights in Vietnam and take proactive measures. Appoint a dedicated manager or team to oversee IP matters and ensure that all members of your organization are aware of their responsibility to protect IP assets. Trust your business instincts and make IP protection a fundamental aspect of your market entry strategy.

Implement strong security measures and confidentiality agreements to prevent IP infringements. Conduct comprehensive market research to evaluate potential risks and develop strategies to mitigate them. Seek legal protection for your IP assets by registering trademarks, patents, and copyrights in Vietnam, leveraging the expertise of local legal professionals to effectively navigate the registration process.

Educate your team about the significance of IP protection and cultivate a culture of awareness and compliance within your organization. Establish strong relationships with local partners, legal firms specializing in IP law, and industry associations to access resources and support for IP protection efforts.

Consider utilizing alternative dispute resolution mechanisms such as mediation to efficiently and amicably resolve IP disputes. By adhering to these best practices, new market entrants and foreign investors can effectively navigate the complexities of IP protection in Vietnam and safeguard their valuable assets.