Bad faith in trademark registration in Vietnam

Circular 23/2023/TT-BKHCN was issued and takes effect from November 30, 2023, guiding standards for determining “bad faith” in trademark opposition or cancel procedures as new regulation of Intellectual Property Law amended 2022. In the following article, Viet An Law will present the current regulations on determining Bad faith in trademark registration in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022;
• Decree 65/2023/ND-CP details 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 on intellectual property;
• Circular 23/2023/TT-BKHCN guiding the Law on Intellectual Property and Decree 65/2023/ND-CP on industrial property rights;

“Bad faith” is a new point in the Intellectual Property Law 2022

“Bad faith” is a new legal term added to Article 117.1(b) and Article 96.1(a) of the 2022 revised version of the Intellectual Property Law. Accordingly, if there are basis to determine that the applicant has bad faith, the National Office of Intellectual Property can apply these grounds to refuse protection of the registered trademark during the process of establishing rights or revoke the validity of the protection title of this trademark.

Intellectual property laws in some countries around the world stipulate that “bad faith” is determined when the trademark applicant has committed dishonest acts such as:

• Copy, imitate, or translate another party’s trademark, especially well-known trademark.
• Registering in bad faith a mark that is already in use by another party and has a certain influence or reputation;
• Organizations and individuals representing on behalf of the trademark owner arbitrarily submit an application for registration under their name;
• Registering a competitor’s trademark for unfair competition.

In most cases of trademark speculation, the infringed marks are often not registered according to legal procedures but have been used in commerce for a long time. If considered according to the “first-to-use” principle in trademark registration in some countries such as the US, subjects who used this trademark first in commerce have the right to submit proof of their actual use to object to the other applicant’s application. For countries following the “first-to-file” principle such as Vietnam, before the provision of bad faith, grounds of prior use may not be accepted to object to third-party registration. Therefore, “bad faith” is a mechanism to harmonize two principles of trademark registration in the world nowadays.

Refuse register due to bad faith in trademark registration in Vietnam

“Bad faith” is an independent legal basis from other grounds of refusal specified in the Intellectual Property Law, specifically:

• The trademark applied for registration does not meet the protection conditions (for example, it is descriptive, deceptive, or conflicts with previous intellectual property rights including registered trademarks, industrial designs, trade names, and copyrights); or
• The applicant does not have the right to register and has not been transferred the right to register that mark by the person with the right to register.

According to the provisions of Article 34 of Circular 23/2023/TT-BKHCN, the applicant is considered to have acted “with bad faith” if the relevant evidence simultaneously meets both conditions:

• Condition 1: At the time of applying, the applicant knows or has a basis to know that the trademark he/she is registering is identical or similar to the point of being difficult to distinguish from another person’s trademark that is widely used in Vietnam or another country, designated for identical or similar goods or services; And
• Condition 2: The applicant’s trademark registration is intended to take advantage of the reputation and goodwill of another person’s trademark for personal gain or is mainly for reselling, licensing, or transferring registration rights to others whose trademarks are widely used in Vietnam or recognized as famous trademarks in other countries, or to prevent others from entering the market or performing other acts contrary to commercial practices fair.

Accordingly, when a registered trademark falls into the above cases, the trademark registration procedure will be stopped or the granted trademark protection certificate will be invalidated according to the provisions of Article 96.1(a) of the Intellectual Property Law.

The meaning of bad faith in trademark registration in Vietnam

• The regulation on “bad faith” (dishonesty) when carrying out trademark protection registration procedures is a new legal term added to Article 96 and Article 117 of the Intellectual Property Law 2022, however, it has been changed. previously used for a long time in countries around the world such as the UK and the US to overcome the situation of “trademark speculation” based on the “first-to-file” principle – first filing in Vietnam. This is a core principle but is easily abused because it allows a protection title to be granted to the earliest applicant, even if that person has bad faith or dishonest motives. Accordingly, the protection certificate will be refused to be granted or after being granted, its validity may be revoked based on the fact that the applicant registered the trademark with bad faith.
• Fight against trademark squatting for illegal profit. This is a growing trend in emerging economies like Vietnam. A notable case is an individual in Ho Chi Minh who filed nearly 200 trademark registration applications for long-standing famous trademarks of foreign trademark owners in many countries around the world, some of which have been granted certificates. As a result, many trademark owners have either lost their trademarks had to buy back their trademarks, or were forced to leave the Vietnamese market. “Bad faith” constitutes an important legal basis to object to the validity of a trademark to regain one’s trademark rights under the trademark opposition or cancellation procedure. In the process of handling infringements by “squatting” entities, having a basis of bad faith also facilitates enforcement agencies in the process of processing requests from third parties.
• “Bad faith” creates an effective mechanism for the court to have a basis for deciding on the right to register industrial property objects in intellectual property disputes. The court’s judgment and decision are the basis for the National Office of Intellectual Property to decide on the process of handling a trademark application that has been filed but is opposed according to Article 117.3 of the Intellectual Property Law.

Opposing trademark registration applications service of Viet An Industrial Property Representative

• Legal advice on opposing trademark applications based on “bad faith”;
• Assist clients in preparing dossiers and documents to oppose trademark registration applications
• Representing clients to apply, monitor, and respond to the process of handling objections to trademark registration;
• Represent and coordinate with clients to respond to the National Office of Intellectual Property and third parties related to trademark registration objections.

Above are some contents related to the bad faith in trademark registration in Vietnam. If you need a representative for trademark registration in Vietnam and abroad, please contact Viet An Luat for the best support.