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.
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.
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.”
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:
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.
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:
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:
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.
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:
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!
#3rd Floor, 125 Hoang Ngan, Hoang Ngan Plaza, Trung Hoa, Cau Giay, Hanoi, Vietnam