Third party observation on trademark application in Vietnam

A trademark is one of the objects of industrial property rights, is where contains commercial indications, and a bridge between the manufacturer or service provider and the consumer. Trademarks are important signs to distinguish the goods and services of one individual or business organization from those of another. During the trademark registration process, a third party can express their opinion on the application. However, in reality, many Clients still do not clearly understand the nature and role of this regulation. To answer our Clients’ questions, in the article below, Viet An Law Firm would like to present an article with third party observation on trademark application in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP has detailed several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and state management of intellectual property.

What is a trademark in Vietnam?

Presently, intellectual property is considered the most important and valuable asset for every business. In particular, it cannot be denied that a trademark is an industrial property object that brings the greatest commercial exploitation value to the owner. Trademark is defined as follows:

• Trademarks as defined by the World Intellectual Property Organization (WIPO): A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
• Vietnam’s Intellectual Property Law also provides the following definition of a trademark: Trademark is any sign used to distinguish goods or services of different organizations and individuals (Clause 16, Article 4 of the Intellectual Property Law).

The main function of a trademark is to help Clients identify the goods/services of this business from the goods/services of other businesses. Once consumers are positive and satisfied with the product, they will tend to buy it again and use it for a long time in the future

Third party observation on trademark application in Vietnam

Third party observation is a procedure that allows receiving public comments on industrial property registration applications, based on which, the industrial property agency makes decisions on applications under examination. The third party observation is considered a reference source of information for the examination during the examination process of the application.

Previously, according to the Intellectual Property Law in 2005, there was no regulation on opposition to the grant of protection titles as an independent procedure like an appeal or cancellation/termination of trademark validity, but there is only a third party observation regime. When receiving an opinion from a third party, the National Office of Intellectual Property considers it as an opposition and the handling process is similar to the procedure for opposition to an application. Therefore, the handling of third party observations is not consistent across cases. In addition, the regulations on the time limit for receiving and processing opinions from third parties as prescribed in Article 112 of the Intellectual Property Law in 2005 for applications for industrial property registration rights are unclear and too long. Failure to distinguish between opposition procedures and third party observation leads to problems in applying the process to handle those two types of opinions; the long time limit for receiving opinions from third parties leads to a prolonged application processing process, not to mention cases where third parties abuse this procedure to prevent from granting of protection titles.

Article 112 of the Intellectual Property Law specifically stipulates the third party observations on trademark registration applications as follows:

Deadline for submitting observations

From the date an industrial property registration application is published in the Industrial Property Official Gazette up until before the date of issuance of a decision on the grant of a protection title, any third party shall have the right to express an opinion to the competent State administrative body for industrial property rights on the grant or refusal to grant a protection title for such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information.

Formality

Observations must be made in writing, accompanied by documents or information citation sources to prove it, stating the legal basis, analysis, and arguments for your opinion on the trademark registration application.

Legal validity

The third party observation document is considered a source of reference information for the processing of industrial property registration applications.

The regulation of third party observations is considered a clear legal basis for the public to have an opinion on the granting of exclusive rights to a trademark if they think that the registered trademark has the potential to conflict with or affect the trademark negatively or not meet protection conditions.

Distinguishing third party observation on trademark registration applications and oppositions to trademark registration applications under the Intellectual Property Law 2022

Trademarks are considered industrial property objects that bring the greatest commercial exploitation value to the owner. Clients who need advice on third party observations on the trademark registration application in Vietnam, please contact Viet An Law for the best support.