Suspending trademark examination to overcome opposition in Vietnam

Every trademark registration application will go through an examination stage to be granted a protection title, including both formality and content examination of the trademark registration application. In some cases, a trademark registration may be suspended from examination. Temporarily suspending the examination of trademark registration to overcome opposition in Vietnam can be done when the examiner receives a temporary suspension request from the application owner. However, in reality, many customers do not clearly understand the nature and how this procedure works. In the article below, Viet An Law Firm would like to introduce the procedures for temporarily suspending the examination of trademark registration applications to overcome opposition.

Legal basis

Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.

What is a trademark?

World Intellectual Property Organization (WIPO) defines a trademark as “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.”

Vietnam’s legal system defines a trademark as “A trademark means any sign used to distinguish goods or services of different organizations or individuals”. The above definition emphasizes the distinctiveness of the trademark. The purpose of a trademark is nothing more than to instruct users which goods and services originate from which manufacturers or suppliers. In addition to the basic function of a trademark, which is to distinguish the origin of goods and services, a trademark also has other functions such as:

• A trademark is used as an advertising measure for consumers to associate a good or service being offered with the brand (for example, when users see a picture of a bitten apple, they think of Apple Inc. with iPhone smartphones).
• A trademark allows consumers to reasonably think that the provided goods or services under the trademark have consistent quality, so that, consumers can save the search costs when they want to buy goods and services.

Opposition to trademark registration

To understand opposition in trademark registration, we first need to understand the common concept of opposition, which is the comparison of evidence to clarify a case and prove and conclude a fact, or some phenomenon.

In the context of fierce market competition, new construction and development as well as gaining market share have become more and more difficult. In that situation, a business’s brand may fall into legal risks. Opposition in trademark registration is when a business’s trademark is refused protection because it is identical or confusingly similar to the previously registered trademark.

Trademark opposition can be understood as trademarks used by the National Office of Intellectual Property as a basis to refuse to grant protection titles to trademarks that are in the process of trademark registration. According to Point h, Clause 2, Article 74 of the Intellectual Property Law, signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than 3 years, except where the ground for such invalidation is non-use of the mark. However, protection is still denied. The purpose of this law is to prevent the risk of confusing consumers and ensure the interests of relevant parties.

Temporarily suspend the examination of trademark registration applications to overcome opposition in Vietnam

The examination to grant a trademark protection certificate often takes a long time. However, in some cases where an application is filed but the opposition causes confusion, it may be canceled or terminated.

In this case, the application owner can request to temporarily suspend the examination to overcome opposition in Vietnam according to points f and h, Clause 2, Article 74 of the Intellectual Property Law, accordingly, the mark is considered incapable of distinguishing, if:

• Signs other than integrated marks that are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of registration applications with earlier filing dates or priority dates, as applicable, including mark registration applications filed under treaties to which Vietnam is a contracting party; except when the trademark registration is terminated according to point d, Clause 1, Article 95 or is invalidated of Article 96 according to the procedures specified in Point b, Clause 3, Article 117 of the Intellectual Property Law.
• Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than 3 years, except where the ground for such invalidation is non-use of the mark according to Point d, Clause 1, Article 95 of this Law, according to the procedures specified in Point b, Clause 3, Article 117 of the Intellectual Property Law.

Thus, it can be understood that temporarily suspending examination to overcome opposition is the case where the application owner requests the National Office of Intellectual Property to stop examination of the trademark registration to carry out procedures to cancel or terminate the protection title against the opposition.

Procedures for temporarily suspending the examination of trademark registration to overcome opposition in Vietnam

The Intellectual Property Law 2005 does not have regulations on temporarily suspending the examination of trademark registration. The amended Intellectual Property Law in 2022 has added regulations on temporarily suspending the examination of trademark registration (Article 117.3.b) to overcome an existing opposition that is currently in effect or an existing opposition but has expired no more than 3 years ago.

Suspension of the trademark examination process to overcome mandatory opposition must be accompanied by procedures for requesting cancellation or invalidation of the Trademark Registration Certificate according to Article 117.3.b of the Intellectual Property Law, accordingly:

• The applicant applies to temporarily suspend the examination of the trademark registration;
• Competent national authority temporarily suspends the trademark examination process in case the applicant submits a request to suspend the examination and request to terminate or invalidate the Trademark Registration Certificate according to the exclusions specified in Points e and h, Clause 2, Article 74 of the Intellectual Property Law;
• Based on the results of resolving the request to terminate or invalidate the Trademark Registration Certificate;
• The national management authority for industrial property rights continues the trademark examination process.

Note: From January 1, 2023, trademark registrations that have not yet had a decision to grant or refuse to grant a protection title can apply the above examination to stop the mechanism.

Services for suspending trademark examination to overcome opposition in Vietnam by Viet An Law

• Consulting and discussing with customers about cases of temporary suspension of trademark registration examination;
• Consulting and discussing with customers about the procedures for temporarily suspending the examination of trademark registration to overcome opposition in Vietnam;
• Consulting, discussing, and preparing documents to request temporary suspension of trademark registration examination.

For all information related to suspending trademark examination to overcome opposition in Vietnam, please contact Viet An Luat for more specific and detailed instructions.