Objection to trademark registration in Vietnam

Nowadays, trademark registration is no longer a strange activity in life. The market is increasingly open and developing, and many products and brands are being launched. Accordingly, trademark registration has developed to create the ability to distinguish the goods and services offered by the owner. However, due to the ignorance of many owners, trademark rights had been registered by a third party before the owner. In the following article, Viet An Law will summarize the regulations on the objection to trademark registration in Vietnam.

Legal basis

• Intellectual Property Law 2005, as amended and supplemented in 2009, 2019, 2022;
• Circular 23/2023/TT-BKHCN guiding the Law on Intellectual Property and Decree 65/2023/ND-CP guiding the implementation of industrial property rights.

What is a trademark application?

Clause 16, Article 4 of the Intellectual Property Law regulates the concept of trademark. Accordingly, a trademark is a sign used to distinguish the goods and services of different organizations and individuals.

A trademark registration application is a mandatory document that the owner needs to submit to the competent authority, specifically the National Office of Intellectual Property (NOIP) in Vietnam, to review and examination the owner’s trademark. Whether the property meets the conditions to be approved for protection or not. Accordingly, if parties want to recognize their trademark ownership for monopolized use, they need to submit a trademark registration application and a class list of goods and services bearing the protected trademark.

What is an objection to trademark registration in Vietnam?

Clause 39, Article 1 of the amended Intellectual Property Law 2022 stipulates that from the date the industrial property registration application is published in the Industrial Property Official Gazette to before the date of issuance of the decision to grant a protection title, any person has the right to give opinions to the state management agency on industrial property rights on whether or not to grant a protection title for that application. Opinions must be made in writing accompanied by documents or information sources cited for satisfying the burden of proof.

Regarding the provisions of the previous Intellectual Property Law, there was no mention of the concept of objection to a trademark application specifically or objection to an industrial property registration application in general. Instead, Article 112 of the Intellectual Property Law 2005 only stipulates the third party’s right to give opinions on the granting of protection titles, which does not obligate the NOIP to use it as a basis for deciding whether or not to grant a protection title, but only as a reference opinion for the examination of the application.

The Intellectual Property Law, which was amended in 2022, sets out a more specific mechanism regarding the right to object to industrial property applications, especially for trademark applications. According to this new regulation, before the decision to grant a protection certificate is made, any third party has the right to object to the grant of a protection certificate within five (05) months from the date of publication of the trademark registration application.

It can be seen that this amendment created a more specific right to object and opened up opportunities for third parties to participate in the process of objecting to the grant of protection titles. This opinion also has a strict legal effect when binding on the NOIP handle under specific procedures as a basis for the decision to grant a protection title. The amendment facilitates greater transparency and fairness in the process of reviewing and determining industrial property rights in Vietnam.

Thus, any third party has this right provided that the trademark application has been published in the Industrial Property Official Gazette. Therefore, when registering a trademark, it may be opposed by one or more third parties.

Distinguishing objections and third-person opinions in trademark registration

Form of objection to trademark registration in Vietnam

When realizing that a trademark registration application submitted to the NOIP shows signs of infringement, any third party has the right to send their opinions to the NOIP on whether or not to grant the trademark protection title.

Any third party has the right to initiate proceedings to object to a trademark application. However, it is necessary to meet legal requirements regarding formality such as having to make a written objection to the application, accompanied by documents or citing information sources for proof, and having to pay fees and charges for objection to the application.

The time limit for conducting an objection to a trademark application

• According to the provisions of the Intellectual Property Law 2022, to carry out the procedure to oppose a trademark application, the objector needs to do so within 5 months from the date the trademark application is published.
• If the above time limit exceeds, the NOIP will not receive objections from third parties to the published trademark. In this case, the third parties have no choice but to give their opinions in writing to the NOIP. However, this will only be considered a reference source of information.

Note: Objections must be made in writing, accompanied by documents or citing sources of information to prove them, and fees and charges must be paid.

Procedures for objection trademark registration in Vietnam

Documents to be provided

Documents required to oppose a trademark application include:

• Application for objection to grant of trademark registration certificate, including the following contents: information about the application being opposed, information about the owner of the application being opposed, group of goods/services being opposed, reason for objection, arguments demonstrating reasons for objection.
• Documents or information proving the reason for the objection.
• Power of Attorney for a representative to carry out procedures to oppose the application (if any)

Location to applying

Based on the dossier of objection to the trademark registration application mentioned above, the objector or representative of the objector shall submit it directly or by mail to the NOIP or representative offices of the NOIP.

Procedures for objection trademark applications

According to the provisions of Article 11 of Circular 23/2023/TT-BKHCN, the process of handling objections to trademark registration applications is carried out at the NOIP in the following order:

• Step 1: Check the validity of the application form, receive and notify the applicant of that opinion, setting 02 months from the date of notification for the applicant to respond in writing, unless otherwise:
  • If a trademark is determined to be identical or there is a clear basis to conclude whether or not similar trademarks are confusing with each other, the NOIP will handle the objection during the examination process of the application and notify the result to the objector along with the procedure for issuing a Notice of results of substantive examination; or
  • If there is an objection related to the right to registration, the NOIP will issue a notice to the objector to bring a lawsuit with the competent Court.
• Step 2: After receiving the applicant’s feedback within the time limit specified in Clause 1 of this Article, if deemed necessary, the NOIP shall notify the objector of the feedback and issue a notice setting out 02 months from the date of notification for the objector to respond in writing to that feedback.
• Step 3: The NOIP organizes a direct dialogue between the objector and the applicant to further clarify the object of the objection if deemed necessary or required by both parties.
• Step 4: The NOIP processes the objections and announces the results of handling the objections along with the results of the examination of the content of the corresponding application to the objectors and sets a time limit of 02 months for the objectors to for feedback.
• Step 5: If after the 2-month time limit, the objector does not respond, the objector will be considered to have withdrawn his or her objection and continue to process the application as if there was no objection. In case the Department receives a copy of the protester’s notice of accepting the case from the Court within the above time limit, the Department will temporarily stop processing the application and will continue the process after receiving the Court’s resolution results. process the application according to that result.

Note on the language used in exchanged documents

Objections to industrial property registration applications must be made in Vietnamese. Documents accompanying objections may be made in another language but must be translated into Vietnamese when requested by the NOIP.

If you need advice or learn more about objection trademark applications and other trademark registration issues, please contact Viet An Law Firm for the best support.