Third party observation regarding the Trademark Registration Certificate

One of the new highlights of the revised Vietnamese Law on Intellectual Property in 2022 is the provision relating to third party observation regarding the Trademark Registration Certificate according to the provisions of Article 112 of the revised Intellectual Property Law in 2022 and Article 112a about third-party observations related to opposition to trademark registration applications in particular and industrial property rights in general.

Significance of the provision of a third party observation regarding the Trademark Registration Certificate

This new regulation is extremely important in establishing a legal basis related to third parties to have opinions about trademark registration applications under expertise in Vietnam, including:

• Third party observation is a procedure that allows public comments on a trademark registration application, on the basis of which, the NationalOffice of IntellectualProperty (NOIP) makes a decision on the applications being expired. The third party observation is considered as a reference source for the appraiser in the application expertise process.
• Opposition is an administrative procedure that allows a third party to challenge the validity of a trademark registration application, on that basis, request the NOIP that refuse to grant a trademark registration certificate to the object stated in the application, provided that the objector must indicate the legal basis to prove his claim.

Comparison of differences between third party observations regarding the grant and the opposition to a Trademark Registration Certificate

About the timeline for implementing third-party observations

Third party observation regarding the opposition to the grant of a Trademark Registration Certificate

The fundamental difference between two provisions above is the period for third party observation. If you want to file an opposition to grant a trademark protection title, you must file within 05 months from the date of the trademark application is published in the Industrial Property Official Gazette.

Third party observation regarding the grant of a protection title

But if you miss the above 05 months period, or when you discover that a third party trademark is in conflict with your pre-registered trademark, you still have the right to submit your observation to the NOIP considers granting or not granting a trademark protection title through the procedure of “Third party observation on granting a protection title” from the date of the trademark application is published to the date of the NOIP issues a decision to grant a protection title to the trademark applying for registration.

Compare the similarities and differences between the two procedures involving third party observation

Similarities between the two procedures

• Prior to the date of issuing the decision to grant a Trademark Registration Certificate, any third parties have the right to observe or right to opposite to the grant of a Trademark Registration Certificate.
• Relevancy of interests is not required to submit third party observations or oppositions (any third parties that are not necessarily a party with related rights and interests have the right to observe on the trademark registration application through one of the above two mechanisms).
• All must be made in writing, stated the legal grounds, analyzes and arguments for their observations.
• These two procedures are a clear legal basis for the public to observe on the granting of an exclusive right to a trademark, which the public must respect if they believe that the trademark applied for registration is seem to be conflicted, negatively affected or did not satisfy the condition for protection.

Differences between the two procedures

The new regulation specifically regarding the third party observation has contributed to the distinction between the opposition procedure and third party observation to solve problems in applying the process to handle those two types of opinions. Accordingly, the long period for receiving third party observations has been overcome, but leading to a prolonged application handling process, not to mention the case that the third party abused this procedure to interfere with the issuance of the Trademark Registration Certificate.

Clients wishing to conduct the procedure for third party observation regarding the Trademark Registration Certificate, please contact Viet An Law Firm for the fastest support with the most reasonable cost!