New regulations on terminating certificates of trademark registration in Vietnam

The Law on Intellectual Property Amended and Supplemented in 2022 has introduced 02 new regulations related to the invalidation of Trademark Registration Certificates in Article 95 with notable amendment. In particular, the new regulations on terminating certificates of trademark registration in Vietnam has met the requirement to be internalized to meet the obligations related to Vietnam’s commitments on Intellectual Property in the EU-Vietnam Free Trade Agreement (EVFTA) as well as related international treaties.

Trademark rules may be terminated due to misuse

Article 95.1(h) of the amended and supplemented Intellectual Property Law in 2022 has added an important legal basis to terminate the validity of a trademark registration protection title. Accordingly, a third party may request the NOIP to terminate the validity of another person’s registered trademark if the use of the trademark by the trademark owner or the person authorized by the trademark owner makes the consumers misunderstand the nature, quality or geographical origin of such goods or services.

Reasons for new regulation on trademarks that can be terminated due to misuse

This new regulation comes from the requirement to be internalized to meet the obligations in Clause 3, Article 12.22 of Chapter 12 of EVFTA, which notes the following: “Any use of a registered trademark signed by the owner or with the owner’s consent for the goods or services for which the trademark is registered is likely to be misleading to the public, especially as to its nature, quality or local origin. of the goods or services, the trademark may be suspended or prohibited by the relevant national law”.

Comparison between the provisions of 95.1h of the Law on Intellectual Property Amendment and Supplement in 2022 and Clause 3, Article 12.22 Chapter 12 of the EVFTA on Intellectual Property

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

• Causing misleading information about the nature of goods/services bearing the mark;
• Causing misleading information about the quality of goods/services bearing the mark.
• Causing misleading the geographical origin of goods/services bearing the mark.

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

The meaning of the new regulation on trademarks may be invalidated due to misuse

It is possible that the new regulation in Article 95.1h of the Intellectual Property Law of 2022 has established an important regulation of obligations and requirements to comply with when using a trademark if you want to maintain the validity of your trademark. It has provided a legal framework in some specific cases as follows:

• Improper use of a 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 owner’s trademark is terminated invalidate;
• Care must be taken with the use of a trademark after registration so as not to fall into a case where the use of the trademark is misleading as to the nature, quality or geographical origin of the goods or services;

Insight 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, to use the trademark properly, you can refer to Article 5.C.2 of the Convention, which regulates the use of the trademark as follows: “The owner of the trademark use a trademark in a form which is distinct in detail, but does not alter the distinctiveness of a trademark of the form registered in any member country of the Union shall not lead to the suspension of registration and cannot limit the protection afforded to the trademark”.

Accordingly, it is possible to transform a registered trademark when used in practice, but the transformation must not change the nature of the trademark, “do not change the distinctiveness of the trademark”, it will “does not result in the suspension of registration and cannot limit the protection afforded to the trademark”.

Accordingly, the change to the trademark (if any) must be due to the indistinguishable elements and the sign(s) used in practice and the registered trademark must be essentially the same. Therefore, to ensure their rights, trademark owners need to do:

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

The new regulation on trademarks may be terminated if it becomes the common name of goods or services registered for the trademark itself.

In line with Vietnam’s reality and commitments when joining the EU-Vietnam Free Trade Agreement (EVFTA), the Intellectual Property Law 2022 adds more grounds for terminating the validity of trademark protection title.

Specifically, a registered trademark may be terminated if it becomes the common name of the goods or services registered for the trademark itself.

The meaning of the provisions of the trademark can be terminated if it becomes the common name of the goods or services registered for the trademark itself

• This supplementary provision creates a legal basis to address the situation/possibility that a registered trademark will lose its distinctiveness after a period of use and become a common name due to its linguistic popularity language and changes in public perception.
• This means that even if a trademark has been recognized for protection and is granted a title, it can still be challenged for validity if there are sufficient grounds to suggest that the trademark has become commonplace and is no longer capable of playing a role as a commercial source indication. 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 will belong to the party requesting the termination.

However, in order to avoid the consequences of becoming a common name for a registered and well-known trademark, the trademark owner may consider the following when registering and using the trademark:

• Use trademarks wisely, for example, use registered fonts and colors, use the TM or ® symbol in the upper right corner of the trademark when applying for a trademark, always use the generic name of the product immediately following the registered trademark;
• Educate through advertisements, flyers, etc. to make consumers/supply chains such as agents or distributors aware of the correct use of the registered trademark;
• Ensure that your trademark is not used/abused by any third party without the official permission of the owner.

The above article is related to new regulations on terminating certificates of trademark registration in Vietnam. Clients wishing to register a trademark, object to the grant of a Certificate of Trademark Registration in Vietnam and abroad, please contact Viet An Law for the best support!