Suspension the examination of trademark registration in Vietnam

In recent years, Vietnam has witnessed a remarkable surge in trademark registrations, reflecting the growing importance of intellectual property rights in the country’s expanding economy. However, this rapid rise has also brought to light certain legal concerns regarding the capable of distinguishing of the marj and effected to the examination process. In this article, Viet An Law presents legal issues related to suspension the examination of trademark registration in Vietnam, seeking to address potential challenges and explore opportunities for enhancement.

Legal basis

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

Regulations on suspension the examination of trademark registration in Vietnam

If an industrial property registration application falls into the cases specified in Clauses 1, 1a and 2 of this Article, the state management agency in charge of industrial property rights shall carry out the following procedures:

• Notify the results of substantive examination, clearly stating the intended refusal to grant the protection title, the reasons and setting a time limit for the applicant to object to the intended refusal;
• Suspend the application examination process in case the applicant submits a request for suspension of application examination and requests the invalidation or cancel the trademark registration certificate according to the exclusions specified at Points e and h, Article 74.2. Based on the results of settlement of a request for invalidation or invalidation of a trademark registration certificate, the state management agency in charge of industrial property rights shall continue the application examination process;
• Suspend the application examination process in case of receiving a copy of the notice of acceptance of the case by a competent court about the lawsuit filed by a third party related to the right to register an industrial property object or a registered trademark with bad faith. Based on the court’s settlement results, the state management agency in charge of industrial property rights shall continue the application examination process;
• To decide to refuse to grant a protection title if the applicant has no objections or unwarranted objections about the intended refusal.

(Refer to Article 117.3 of the Law on Intellectual Property 2005, as aended and supplemented in 2022). The regulation on suspending the examination of trademark registration applications is one of the signigicant new points of the amended and supplemented Intellectual Property Law in 2022.

Cases of suspending the examination of trademark applications

According to the provisions on the trademark registration application, it will be suspended if it falls into one of the following specific cases:

• The application owner submits a request to suspend the examination of the application and request an invalidation of the control mark because the mark applied for registration is considered to be similar to the control mark according to Article 74.2e of the Intellectual Property Law;
• The applicant submits a request to suspend the examination of the application and request the termination of the control mark’s validity because the applied mark is considered to be similar to the control mark which has expired for less than 3 years according to Article 74.2h of the Intellectual Property Law;
• The owner of a lawsuit related to the right to register an industrial property object or a trademark registered with bad faith.

Inadequacies in regulations on suspending the examination of trademark applications

Although the provision on suspending the examination of trademark registration applications is a new provision of the Intellectual Property Law, it is still limited because the provisions in Clause 3, Article 117 of the Intellectual Property Law are fixed, but in fact there are many cases where it is necessary to suspend the examination of trademark applications that the law has not mentioned. This drawbacks may seriously affects the interests of the real trademark application owners.

Specifically, the case where the trademark owner actually filed a trademark application but later discovered that another subject had also filed his or her own trademark or similar application before his application. In principle, the actual trademark owner will file an objection to the trademark application that infringes his rights but has not yet filed a lawsuit in court. In this case, the request to suspend the appraisal procedure is not accepted, trademark application of the real trademark owner. When the time limit for substantive examination, the application will be refused. If the procedure for cancellation/termination is not carried out by the NOIP earlier than the time when the complaint is settled by the applicant, the trademark application of the trademark owner may actually be refused protection and the trademark owner’s complaint period expires. To continue the pursuit, the applicant must re-file the trademark application. Leads to a series of possible events in a vicious cycle:

• Firstly, invisibility leads to an increase in costs for the applicant;
• Secondly, it may arise that any third party may file a similar trademark application in the middle of the processing period of the objection, or between the examination of the application by the actual trademark owner, the re-submission of the actual trademark owner with a later filing date, and continue to be rejected under the first-filing principle.
• Thirdly, in fact, in many cases, the NOIP still issues a notice of grant of a protection title to a trademark applicant’s re-submission despite knowing that this trademark owner’s original trademark is being proposed to be invalidated. At the same time, there are other trademark applications filed earlier by the requesting party for termination under examination.

Accordingly, if it is resolved in this direction, it is invisible that the NOIP has pushed the trademark dispute into an unending place, if the trademark owner continuously re-submits the trademark registration application and the other side continues to file an objection / request for invalidation.

The Law on Intellectual Property has just been revised and although there are new regulations, it has not completely solved the arising situations in reality. Hopefully, the newly revised Intellectual Property Law guiding documents will fill this gap.

Clients wishing to register a trademark, object to a trademark application, invalidate / terminate a trademark protection title, please contact Viet An Law for the best support!