Opposition to trademark application in Vietnam

Trademark application will go through many rounds before being protected. Currently, there are many cases where trademarks are in the process of waiting for a protection certificate or have been granted a protection certificate and are registered by another party. At this time, the trademark owner should submit an opposition request to the Intellectual Property Office. In the article below, Viet An Law will answer questions about the process and procedures for opposition to trademark application in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP detailing several articles and measures to implement the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and state management on intellectual property.
• Circular 23/2023/TT-BKHCN details several articles of the Intellectual Property Law and measures to implement Decree No. 65/2023/ND-CP.
• Circular 263/2016/TT-BTC on industrial property fees and charges.

What is an opposition to a trademark application?

Trademark opposition is a legal procedure that allows individuals or organizations to submit written opinions to the Trademark Registration Agency (Vietnam National Office of Intellectual Property) requesting not to issue a registration certificate for the trademark registration of another person in Vietnam for the reason that this individual or organization believes that if the trademark is registered, it will lead to infringement of their legitimate rights and interests.

Who has the right to oppose a trademark application?

Article 112 of the Intellectual Property Law stipulated: “Any third party has the right to object to the issuance of a trademark registration certificate.” Although the Intellectual Property Law stipulates that any third party has the right to object, in practice, the opposition procedure is carried out by the following individuals, organizations or units:

• The person carrying out the procedure to oppose the application is an individual, organization, or unit – the owner of the trademark that has been granted a Certificate and believes that: The newly filed trademark has signs of infringement. ownership of the trademark that is being protected.
• Any third party found that the trademark registration shows signs of violations in documents, procedures, or registration process.
• An individual, organization, or unit is using the trademark in reality (may not have been registered and granted a Trademark Certificate at the National Office of Intellectual Property) but considers that the trademark application newly submitted infringes their These signs may be identical, similar, or confusing with the national emblem or national emblem; the same name of the agency, organization, or some special characters; affecting public order and community health. In Article 74 of the Intellectual Property Law amended and supplemented in 2022, it is stipulated that a trademark cannot be distinguished if it is too simple or complex, thus confusing with some other signs.

Note: A trademark application may be opposed by one or more third parties. On the contrary, an individual, organization, or unit can oppose many different trademark applications.

Deadline for filing a request to oppose an application

According to Point c, Clause 1, Article 112 of the Intellectual Property Law as amended and supplemented in 2022, the opposition deadline is specified as follows: “Five (05) months from the date the trademark registration application is published”. Thus, before the date of issuance of the decision to grant a trademark protection certificate, within 5 months from the date the trademark is announced, any third person has the right to object to the trademark registration application that is deemed to be infringing.

Procedure for opposition to trademark application in Vietnam

Dossier components

• Dispatch explaining the opposition to granting a trademark registration certificate.
• Documents and evidence attached.
• Power of Attorney (if applying through a representative);
• Proof of payment of fees related to protests according to regulations.

Note: Oppositions must be made in Vietnamese. Documents accompanying oppositions may be made in another language but must be translated into Vietnamese when requested by the National Office of Intellectual Property.

Fee for requesting an opposition

Trademark oppositions must be made in writing and submitted to the National Office of Intellectual Property, accompanied by a fee for handling requests for oppositions to the granting of a Protection Title by a third party (for trademarks for each class) of 550,000 VND/trademark/class according to the provisions of Circular 263/2016/TT-BTC.

Procedure for handling opposition requests

Step 1: The opponent submits an opposition to the National Office of Intellectual Property (NOIP) at 384-386 Nguyen Trai, Thanh Xuan Trung ward, Thanh Xuan district, Hanoi, Vietnam.

Step 2: The NOIP receives and notifies the applicant of that opinion. It sets a time limit of 02 months from the date of notification for the applicant to respond in writing (Clause 1, Article 11 of Circular No. 23/2023/TT-BKHCN).

Note:

In case the trademark and goods or services in the opposed registration application are identical to the trademark, goods, and services proposed by the opposing party or there is a clear basis to conclude that the trademark, goods, and services If there is an opposition that is confusingly similar or not confusingly similar to the mark and goods or services raised by the opposing party, the National Office of Intellectual Property will handle the opposition during the substantive examination of the application. Register the trademark and notify the objector of the results of handling oppositions along with the results of the examination of the content of the corresponding application.

Step 3: After receiving feedback from the applicant, if deemed necessary, the NOIP shall notify the objector of the feedback and set a deadline of 02 months from the date of notification for the opponent to respond in writing to that feedback.

Step 4: In case the opponent’s opposition is related to the right to registration, the NOIP notifies the opponent to file a lawsuit with a competent court in accordance with the provisions of civil procedure law.

• Within 02 months from the date the National Office of Intellectual Property issues a notice for the objector to file a lawsuit with the Court if the objector does not send the National Office of Intellectual Property a copy of the Court’s notice of accepting the case, then The National Office of Intellectual Property considers the objector to withdraw his opposition and continues to process the application as if he had no opposition.
• In case the National Office of Intellectual Property receives a copy of the notice of acceptance of the case from the Court of the objector within the above time limit, the National Office of Intellectual Property temporarily stops processing the application to wait for the results of the dispute resolution by the Court. After receiving the Court’s resolution results, the processing of the application will be conducted in accordance with that result.

Services to opposition to trademark application in Vietnam of Viet An Law

• Conduct trademark searches, consult, evaluate the degree of similarity, and guide clients on procedures to object to the issuance of trademark registration certificates.
• Legal advice throughout the process of protesting the issuance of a trademark registration certificate.
• Drafting protest letters and checking documents and evidence to conduct procedures to protest the grant of trademark registration certificates.
• Representing clients to carry out procedures to object to the issuance of trademark registration certificates at the National Office of Intellectual Property.
• Consulting on other issues related to implementing procedures to object to the grant of trademark registration certificates;
• Monitor, advise, and protect clients’ rights throughout the entire process of protesting the issuance of trademark registration certificates.

If you have any questions or need answers, please contact Viet An Law Firm to receive the best support. Best regards!