New regulations on invalidation of trademark registration certificates in Vietnam

The amended and supplemented Law on Intellectual Property of Vietnam in 2022 has introduced 02 new regulations related to the invalidation of the Trademark Registration Certificate in Article 95 with notable contents. In particular, new regulations related to the invalidation of trademark registration certificates have met the requirements of internalization to meet obligations related to Vietnam’s commitments on Intellectual Property in the European-Vietnam Free Trade Agreement (EVFTA) as well as relevant international treaties.

Trademark regulations in Vietnam may be terminated due to misuse

Article 95.1h of Vietnam’s amended and supplemented Law on Intellectual Property in 2022 has added an important legal basis to terminate the validity of trademark registration protection diplomas.

Accordingly, a third party may request the National Office of Intellectual Property of Vietnam to invalidate another person’s registered trademark if the use of the trademark by the trademark owner or a person authorized by the trademark owner causes consumers to misunderstand the nature,  the quality or geographic origin of such goods or services.

The reason Vietnam has a new regulation on trademarks may be invalidated due to misuse

This new regulation stems from the requirement to internalize to meet the obligations in Clause 3, Article 12.22, Chapter 12 on Intellectual Property of EVFTA noted as follows: “Any use of a registered trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered that is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services shall make the trademark liable to revocation or, alternatively, be prohibited by relevant domestic law.”

Comparison between the provisions of 95.1h of the Law on Intellectual Property of Vietnam amended and supplemented in 2022 compared to Clause 3, Article 12.22, Chapter 12 on Intellectual Property of EVFTA

Compared to Clause 3 Article 12.22 Chapter 12 on Intellectual Property of EVFTA, the provisions of Article 95.1h have a much narrower scope of application. Specifically, according to Article 95.1h, misuse of a trademark may be terminated in only the following cases:

• Misleading about the nature of the goods/services bearing the trademark;
• Misleading about the quality of goods/services bearing the trademark.
• Misleading about the geographical origin of goods/services bearing the trademark.

Meanwhile, the above three cases are only typical cases in the spirit of Clause 3, Article 12.22, Chapter 12 on Intellectual Property of EVFTA. This invisibly limits or deprives a third party of the right to request the termination of the validity of a trademark in Vietnam because in fact, misleading and misleading uses are very diverse, not limited to acts that are confusing in nature,  quality or geographic origin.

The meaning of the new trademark provisions of the Law on Intellectual Property of Vietnam (amended and supplemented in 2022) may be terminated due to misuse

It is possible that new regulations in Article 95.1h of the Law on Intellectual Property of Vietnam 2022 have established important regulations on obligations and requirements to comply when using trademarks if they want to maintain the validity of their trademarks. It has set out the legal framework in some specific cases as follows:

• Improper use of the trademark may put you at risk of losing your trademark rights;
• The trademark cannot be used in any way you want even if your trademark is registered in Vietnam if there is a risk of infringing the intellectual property rights of others and the trademark of the trademark is terminated;
• Care must be taken with the use of a trademark after registration so as not to fall prey to misleading use of the trademark as to the nature, quality or geographical origin of the goods or services;

Learn more about the concept of “proper use of trademarks”:

In fact, Vietnamese law does not have a clear definition of “proper use of trademarks”. However, Vietnam is a party to the Paris Convention, in order to properly use a trademark, it is possible to refer to Article 5.C.2 of the Convention, which provides for the use of trademarks as follows: “Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.”

Accordingly, it is possible to alter a registered trademark when used in practice, but the modification must not alter the nature of the mark, “do not alter the distinctive character of the mark”, will “not entail invalidation of the registration and shall not diminish the protection granted to the mark”. The change to the trademark (if any) must be in factors that are not substantially distinguishable and the mark(s) used in practice and the registered trademark must be substantially identical. Therefore, to ensure their rights, trademark owners need to:

• Look up the possibility of conflict, trademark infringement if you plan to use a trademark other than the version registered in Vietnam.
• Apply for registration of other versions of registered trademarks at the National Office of Intellectual Property of Vietnam if they are judged to be significantly different from the registered trademark sample.

The new regulation on trademark may be terminated if it becomes the common name of goods and/or services registered for the trademark itself in Vietnam

In line with the reality and commitments of Vietnam when participating in the EU-Vietnam Free Trade Agreement (EVFTA), the Law on Intellectual Property of Vietnam in 2022 adds grounds for invalidation of trademark protection diplomas.

In particular, a registered trademark may be invalidated if it becomes the usual name of the goods or services registered for the trademark itself.

The meaning of a trademark provision may be terminated if it becomes the common name of the goods or services registered for the trademark itself.

• This additional provision provides a legal basis to address the situation/possibility that a registered trademark after a period of use will lose its distinguishability and become a common name due to linguistic popularity and changes in public perception.
• This means that a trademark, even if it has been granted protection and patents, can still be challenged if there are sufficient grounds to show that the mark has become ordinary and is no longer capable of serving as an indication of commercial origin. For example, “Vaseline” for cosmetics, “Maggi” for dipping sauces, etc. used to be protected trademarks but now become common names for products in the Vietnamese market.
• The burden of proving that the registered trademark becomes a common name rests with the party requesting its invalidation.

However, in order to avoid the consequences of becoming a common name for a registered trademark and becoming famous, the trademark owner may consider when registering and using a trademark as follows:

• Use the trademark intelligently, for example, use by registered font, color, use the TM symbol or ® in the upper right corner of the trademark when registering a trademark, always use the common name of the product immediately after the registered trademark;
• Guide through advertisements, leaflets, etc. so that consumers/supply chain such as agents or distributors are aware of the correct use of registered trademarks;
• Ensure that your trademark is not used/misused by any third party without the official permission of the owner.

If you want to register a trademark, object to the issuance of a Trademark Registration Certificate in Vietnam and abroad, please contact Viet An Law Firm for the best support!