Trade marks in Vietnam: “I want to overcome the refusal”!

A trademark is a subject matter of intellectual property and a subdivision of intangible property. It is one of products created by human intelligence through creative activities in the fields of social life. As an asset, a trademark can be commercialized this or that way, such as capital contribution, trademark licensing or franchising agreement. To this end, registration of a trademark under a statutory procedure is a need-to-pursue thing, which is to establish legal rights over the trademark and can thereby offer a considerable level of legal protection against infringement attempts.

If your trademark is smoothly allowed and a trademark registration certificate is granted in Vietnam, your trademark will become “registered”, which affords you statutory trademark rights. Yet what if your trademark is refused by the Intellectual Property Office of Vietnam (IP Vietnam)? So you may be reduced to a dilemma.

• First, you may stop prosecuting your application and let it abandoned by not filing a response against opinions raised by IP Vietnam, in order to save time, costs and energy which are entailed in subsequent actions. You may then make other investments to create a new trademark with a view that it can be registered in Vietnam, in place of the former one.
• Second, you may persistently prosecute your application by filing a response against IP Vietnam’s opinions and taking any further action permitted by law to defend your rights. Thinking to yourselves “I want to overcome the refusal”, you need to seek ways to solve the dilemma.

In an office action raised by IP Vietnam, a pending trademark (the “Refused Trademark”) is mostly refused due to a likelihood of confusion with a prior registered trademark (the “Prior Trademark”) under Article 74.2.e of the Intellectual Property Law of Vietnam. This Article reads as follows:

“2. A trademark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: […] e) A sign which is identical with or confusingly similar to a registered trademark of another organization, individual in respect of identical or similar goods or services on the basic of a registration application having earlier filing date or earlier priority date, as applicable including applications filed under international treaties to which the Socialist Republic of Vietnam is party, except for cases where such mark registration is terminated under the provisions of Article 95.1d(¹) or invalidated under the provisions of Article 96(²) according to the procedures specified at Article 117.3b of the Law.”.

In an attempt to overcome the refusal, you can take the following options:

1. Reasoning on differences between the Refused Trademark and the Prior Trademark;
2. Seeking a Letter of Consent from the owner of the Prior Trademark;
3. Initiating an invalidation of the Prior Trademark based on its non-use in Vietnam for five (5) consecutive years;
4. Negotiation for assignment of the Prior Trademark.

In the first option, reasoning should focus on appearance, pronunciation, connotation and origin of the Refused Trademark as compared to the Prior Trademark. Furthermore, a comparison on the lists of goods/services of the two trademarks should also be made. A difference or dissimilarity in the lists of goods/services may save the Refused Trademark in some way.

If the said reasoning is not accepted by IP Vietnam, its decision on refusal will be issued. Under Vietnam legislation, the Refused Trademark owner may file an appeal against such a refusal decision. By means of an appeal, the Refused Trademark owner is required to prove that the decision does not comply with applicable laws.

If the appeal fails, IP Vietnam will issue a decision on settlement of the appeal which continue its refusal against the Refused Trademark. If you still wish to pursue the case, you can file an appeal to the Ministry of Science and Technology (MoST), a superior agency of IP Vietnam, or initiate a lawsuit at a competent court of Vietnam.

In the second option, you may consider obtaining a Letter of Consent (LoC) from the owner of the Prior Trademark, where the owner states that they do not oppose the registration and use of the Refused Trademark in Vietnam. By way of such an LoC obtained, you may stand a chance to seek protection for the Refused Trademark in Vietnam. However, as a side remark, an LoC may be acceptable on a case-by-case basis, subject to IP Vietnam’s decision. The reason lies in the concern about confusion to consumers due to the co-existence of the two similar trademarks, even though there may exist no conflict between the relevant two owners.

In the third option, you can initiate an invalidation of the Prior Trademark based on its non-use in Vietnam for five (5) consecutive years. Under Vietnam legislation, if a registered trademark has not been put into use in Vietnam for five (5) consecutive years or more, it may be vulnerable to a non-use-based invalidation initiated by a third party. The steps for initiating a 5-year non-use-based invalidation against a registered trademark in Vietnam can be outlined as follows:

Step 1: Conducting an investigation on non-use of the Prior Trademark in Vietnam

To initiate a non-use-based invalidation against a registered trademark, it is required to tender evidence for non-use of the trademark. To prove the non-use of the trademark, you may file a request for investigation on use or non-use of the Prior Trademark in Vietnam to the Market Price Magazine (“MPM” – a publication under the Ministry of Finance of Vietnam) for obtaining its official confirmation on the use or non-use status. In most cases, IP Vietnam accepts such a confirmation as a basis to request the registered trademark owner to prove the use of their trademark in Vietnam to overcome the invalidation, even though the confirmation on non-use of a registered trademark issued by MPM is not considered as a full information source of the non-use.

If it is found by means of the investigation that the Prior Trademark has not been used during consecutive five (5) years, you can then file to IP Vietnam a request for invalidation of the Prior Trademark based on MPM’s report on investigation results of the non-use of the Prior Trademark.

Step 2: Filing a request for invalidation of the Prior Trademark

A request for invalidation of the Prior Trademark should be filed to IP Vietnam along with MPM’s report on investigation results of the non-use of the Prior Trademark, which acts as a supporting document for your invalidation request. IP Vietnam will then notify the Prior Trademark owner of the invalidation and request the owner to provide any use evidence against your invalidation request. Once any opinions and evidence on use of the Prior Trademark, if any, are submitted by the Prior Trademark owner, the invalidation requester shall have a chance to file arguments against such opinions. Upon sufficient reasoning and evidence submitted, IP Vietnam will review the same and issue its conclusion on the case.

In the fourth option, you may consider negotiating for assignment of the Prior Trademark. If the assignment is successfully concluded, you may overcome the refusal and be accordingly granted a trademark registration certificate in Vietnam. Noteworthily, the third and fourth options may be simultaneously taken to somewhat make the fourth option more effective. Specifically, a request for invalidation of the Prior Trademark, once submitted to IP Vietnam, may put certain pressure on the Prior Trademark owner. Therefore, the possibility of success in your negotiation for assignment of the Prior Trademark from its owner turns higher.

In a nutshell, while trademark registration is obviously critical to fostering innovation and preventing a third party from unauthorized use of the trademark, to obtain such a registration may be a challenging journey which requires your sufficient wisdom, persistence and patience. In the journey, you have options available to protect your trademark and defend your rights. Above all, you should lucidly take the right option and flexibly combine the options to increase the chance of success in overcoming an office action raised by IP Vietnam.

(1)“Article 95. Termination of validity of protection titles
1. The validity of a protection title shall be wholly or partially terminated in the following cases:
…
d) The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
…”
(2) “Article 96. Invalidation of protection titles
1. A protection title shall be entirely invalidated in the following cases:
a) The application is filed for malicious intent;
b) The application is filed against regulations on security control regarding inventions prescribed in Article 89a of this Law;
c) The invention is directly created from a genetic resource or traditional knowledge about a genetic resource but the registration application does not disclose or accurately disclose the origin of the genetic resource or traditional knowledge about the genetic resource.
…”