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:
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:
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:
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
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:
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!
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