Termination of the validity of protection titles in Vietnam

In the current context, trademarks are not only a useful marketing tool for businesses but also help businesses affirm their reputation with customers, and create a competitive advantage in the market. A trademark protection title is one of the bases for protecting intellectual property rights over trademarks. So under what circumstances will the trademark protection title be terminated? In the article, Viet An Law will analyze legal issues related to the conditions for termination of the validity of trademark protection titles in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 65/2023/ND-CP has detailed 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 of intellectual property.
• Circular 23/2023/TT-BKHCN guiding the Intellectual Property Law and Decree 65/2023/ND-CP guiding the Intellectual Property Law on industrial property;
• Circular 263/2016/TT-BTC of the Ministry of Finance regulating collection rates, collection, payment, management, and use of industrial property fees and charges; amended and supplemented by Circular 31/2020/TT-BTC, Circular 63/2023/TT-BTC.

Trademarks and trademark protection titles

What is a trademark?

Vietnamese Intellectual Property Law also provides the following definition of a trademark: Trademark is any sign used to distinguish goods or services of different organizations and individuals (Clause 16, Article 4 of the Intellectual Property Law).

Basis for establishment of trademark rights

Industrial property rights to trademarks are established based on a decision to a protection title grant by competent state authorities. Industrial property rights to popular trademarks are established based on use, regardless of registration procedures.

Trademark protection title

A trademark protection title is a document issued by a competent state authority to organizations and individuals to establish industrial property rights over a trademark.

To be granted a trademark protection title, it is necessary to carry out trademark registration procedures according to the order and procedures prescribed by law.

The protection title is valid throughout the territory of Vietnam. The trademark registration title is valid from the date of issuance until the end of 10 years from the date of application and can be renewed consecutive times, each time for 10 years.

Conditions for terminating the validity of protection titles in Vietnam

Termination of a trademark protection title is understood as terminating (not continuing) the validity of a trademark protection title, the trademark protection title expires from the time of termination.

Termination of validity of protection titles in Vietnam

According to Article 95 of Intellectual Property Law, the validity of a protection title shall be terminated in the following cases:

• The owner fails to pay the stipulated validity maintenance or extension fee;
• The owner declares relinquishment of the industrial property rights. In this case, the National Office of Intellectual Property shall consider and decide to terminate the validity of the protection title. The validity of the Trademark Protection Title is terminated from the date the National Office of Intellectual Property receives a written declaration from the owner of the Trademark Protection Title;
• The owner no longer exists, or the owner of a title of registered mark is no longer engaged in business activities and does not have a lawful heir;
• The mark has not been used by its owner or the licensee of the owner without justifiable reason for 5 consecutive years before a request for termination of validity, except where use is commenced or resumed at least 3 months before the request for termination;
• The owner of a title of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on the use of the collective mark;
• The owner of a title of registered certification mark violates the regulations on the use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;
• The geographical conditions decisive to reputation, quality, or special characteristics of products bearing a geographical indication have changed resulting in the loss of such reputation, quality, or characteristics of products.
• The protected trademark becomes the common name of the goods or services registered for that trademark.

Time of protection titles termination in Vietnam

• Where the owner of an invention protection title fails to pay the validity maintenance fee before the stipulated time limit, the validity of such protection title shall, upon the expiration of such time limit, automatically terminate as from the first day of the first valid year for which the validity maintenance fee has not been paid. The State administrative body for industrial property rights shall record such termination in the National Register of Industrial Property and publish it in the Official Gazette of Industrial Property.
• In case, the owner of the protection title declares to give up industrial property rights, the National Office of Intellectual Property shall consider and decide to terminate the validity of the protection title. The validity of the protection title is terminated from the date the National Office of Intellectual Property receives a written declaration from the protection title owner.
• For the remaining cases, the validity of the trademark protection title is terminated from the date the National Office of Intellectual Property issues a decision to terminate the validity of the protection title.

Rights to request termination of validity of protection titles of organizations and individuals

Organizations and individuals have the right to request the National Office of Intellectual Property to terminate the validity of trademark protection titles for the cases specified in points c, d, dd, e, h, i, Clause 1, Article 95 of the Intellectual Property Law with the condition of paying fees and charges.

Based on the results of reviewing the request to terminate the validity of the protection titles and the opinions of relevant parties, the National Office of Intellectual Property shall notify the refusal to terminate the validity of the protection titles or decide to terminate completely or partially the validity of the protection titles.

Procedures for termination of the validity of protection titles in Vietnam

Application

• Declaration for termination of validity of protection titles (according to Form 08 in Appendix II of Decree 65/2023/ND-CP);
• Evidence (if any);
• Power of Attorney (if applying through an industrial property representative such as Viet An Law Firm);
• Explanation of the reason for the request (clearly stating the title number, reason, legal basis, and content of the request to terminate or cancel part or all of the validity of the protection title);
• Copy of fees and charges payment (in case of payment of fees and charges via postal service or direct payment to the account of National Office of Intellectual Property);
• Other documents (if any).

Procedures

Step 1: Submit a request

Organizations and individuals requesting to terminate the validity of a protection title submit one (1) dossier to the National Office of Intellectual Property in one of the following ways:

• Online through the information system for handling administrative procedures of the Ministry of Science and Technology;
• Directly or via postal service to the headquarters of the National Office of Intellectual Property in Hanoi or 2 representative offices in Ho Chi Minh City and Da Nang.

Organizations and individuals requesting to terminate the validity of a protection title must pay a request fee, an examination fee for the request to terminate the validity of the protection title, a registration fee, and a fee for publishing the decision to terminate the validity of the protection title. Specifically:

• Fee for requesting termination of the protection title: 50,000 VND (per subject).
• Examination fee of request to terminate the validity of the protection title: 180,000 VND.
• Registration fee for the Decision to terminate the validity of the protection title: 120,000 VND.
• The fee for announcing the Decision to terminate/cancel the validity of the protection title: 120,000 VND.

Step 2: Receive and process applications

• The National Office of Intellectual Property receives the request and conducts a review.
• In case, a third party requests to terminate the validity of a protection title, within one (1) month from the date of receipt of the request, the National Office of Intellectual Property shall notify in writing the third party’s opinion of the protection title holder, which sets a time limit of 02 months from the date of notification for the protection title holder to give their opinion.

Step 3: Publication

• Based on the results of reviewing the request to terminate the validity of the protection titles and the opinions of relevant parties, the National Office of Intellectual Property shall notify the refusal to terminate the validity of the protection titles or decide to terminate completely or partially the validity of the protection titles.
• The time limit for making decisions and notifications mentioned in this point is 03 months from the end of the 02 months specified in point b of this clause or the end of the 03 months specified in point a, clause 4, and point a clause 5. This is something that the protection title owner has no opinion on or from the date of receiving the protection title owner’s opinion. This period can be extended by a maximum of 03 months if the protection title holder has a different opinion than the person requesting termination of the validity of the protection title.
• In case the owner of a protection title declares to renounce industrial property rights according to the provisions of Clause 3, Article 95 of the Intellectual Property Law, the above time limit is 15 days from the date of receipt of the request.
• The time to carry out other related procedures necessary to resolve the request to terminate the validity of the protection title is not included in the above time limit.

Step 4: Announce the decision

• The decision to terminate the validity of the protection title is recorded in the National Register of Industrial Property and published in the Industrial Property Official Gazette within 60 days from the decision date.
• If you do not agree with the content of the decision or notice of handling the request to terminate the validity of the protection title, the requester or organizations or individuals have the right to appeal that decision or notice according to the provisions of the law on complaints related to industrial property procedures.

Services related to validity of protection titles of Viet An Intellectual Property Representative

• Legal advice on termination of the validity of protection titles in Vietnam;
• Drafting documents to terminate the validity of protection titles;
• Submit documents and monitor progress at the National Office of Intellectual Property;
• Exchange and provide information to customers while completing procedures to terminate the validity of protection titles.

Above are the legal regulations related to the conditions for termination of the validity of protection titles in Vietnam. If you have any questions or need legal support related to the termination of the validity of protection titles in Vietnam, please contact Viet An Law Firm for the best support.