Articles 96 and 117 of the Intellectual property Law Amended in 2022, effective from January 1, 2023. Regulation about registering trademark dishonesty or trademark registration with bad intentions is one of the new highlights of the Intellectual Property Law 2022 on trademark registration.
- Article 96: Intellectual property law: “The protection title is completely invalidated in the following cases: a) The applicant applies for trademark registration with malicious intent”;
- Article 117 of the Intellectual property Law stipulates: “Applications patent registration, industrial design, trademark or geographical indication shall be refused to grant a protection title in the following cases: …….b) There are grounds to assert that the applicant does not have the right to register the object industrial property or trademark registration with malicious intent”;
Purpose of dishonest trademark registration regulations
Regulations on dishonest trademark registration (bad intentions) aim to ensure the rights and interests of real trademark owners and serve as a basis for trademark owners to have grounds to protect their rights and interests. their main interests, legally reclaim trademark ownership. The reason. The Intellectual Property Law adds such a new regulation to resolve the conflicts specified in the Intellectual Property Law itself. Specifically:
- Regulations on dishonest trademark registration aim to limit speculation when registering trademarks of some subjects when there is information related to marks that are likely to develop in the future in the Vietnamese market.
- Regulations on dishonest trademark registration are the basis for owners to use their right to object to trademark registration or to request the cancellation of their titles. trademark protection when someone misappropriated dishonestly and maliciously to take back their trademark.
- Limit the fact that the true trademark owner has to prove or be accepted only when there is clear evidence that the dishonest trademark applicant knew about the genuine trademark owner’s mark through business cooperation relationships (such as sales contract, agency contract…).
- Limiting unfair competition behavior that seriously affects the trademark ownership of the owner of the name of the mark.
- Provisions on the principle of “first-to-file” filing, whereby, granting protection titles to the earliest applicants, including those who file a dishonest trademark application, the filing of The application aims to appropriate the legal ownership rights of the users of the mark, or the mark has been in the international market, Vietnam but has not yet established the right. Therefore, the regulation on dishonest trademark registration aims to prevent entities from taking advantage of the principle of first filing to appropriate other subjects’ trademarks for illegal profit.
- Regulations on dishonest trademark registration help owners protect their rights, avoid damage, and even have to buy back their own trademarks at unnecessary costs, even having to give up their jobs. business development in the Vietnam market.
Currently, Vietnamese law has no detailed regulations on criteria for determining dishonest trademark registration. However, we are expecting to soon have regulations in the Decree, guiding circulars of the revised Intellectual Property Law in 2022. Referring to the regulations of some countries in the world, the criteria can be given. identify dishonest trademark registration as follows:
- Copy the same or similar to well-known trademarks of other subjects;
- Translate the mark into Vietnamese or a common foreign language to register a well-known trademark of another entity in Vietnam;
- Register dishonestly the trademark of your partners or customers when they see that they have not registered their trademarks in Vietnam;
- Registration of trademarks of other entities that have influenced the market share of the product line or have established a reputation in one or several territories.
- Trademark registration infringes other intellectual property rights that the owner has not registered such as: Trade name, copyright, domain name, trade indication,…;
- Arbitrarily representing the owner to file a trademark registration application without their consent or when the owner requests to transfer or change trademark registration information but does not cooperate in implementation;
- Other malicious and dishonest acts when registering trademarks that infringe upon the rights of legitimate trademark owners.
If you need advice, trademark registration, please contact Viet An Intellectual Property Representative for the best support!