Trademark Protection Termination vs. Cancellation in Vietnam

When discussing trademark protection termination vs. cancellation in Vietnam, many people often confuse these two concepts and assume they are the same. However, although they are related, these concepts have distinct characteristics and are subject to different legal procedures. Clearly distinguishing between the termination and invalidation of trademark protection certificates not only helps stakeholders understand their rights and obligations but also ensures fairness in the protection of intellectual property rights. In the article below, Viet An Law will clarify these two concepts and provide a comparison between trademark protection termination vs. cancellation in Vietnam.

What is a trademark protection certificate?

• A trademark protection certificate, also known as a certificate of trademark registration, is an important legal document that establishes the ownership rights of an individual or organization over a trademark. This certificate is issued by a competent state authority—specifically, the Intellectual Property Office of Vietnam (IP Vietnam)—to recognize industrial property rights over a trademark.
• The trademark protection certificate is valid for the duration specified therein—specifically, it is effective from the date of issuance and remains valid for ten (10) years from the filing date. It may be renewed multiple times, each for ten (10) years, for all or part of the list of goods or services covered.

Trademark protection termination vs. cancellation in Vietnam

Pursuant to articles 95 and 96 of the Intellectual Property Law 2005, as amended and supplemented by clause 30, article 1 of the Intellectual Property Law amended in 2022, the trademark protection termination vs. cancellation in Vietnam is regulated as follows:

Cases of trademark protection termination vs cancellation in Vietnam

Cases of trademark protection termination:

To be specific, cases of trademark protection termination include:

• The trademark owner fails to pay the fees or charges required to maintain or renew the validity of the certificate as prescribed;
• The trademark owner declares the relinquishment of industrial property rights;
• The trademark owner no longer exists, or the holder of the certificate of trademark registration has ceased business operations without a lawful successor;
• The trademark has not been used by the owner or a person authorized by the owner for a continuous period of five years prior to the date of the request for termination, without legitimate reasons, except where the use is commenced or resumed at least three months before the date of the request;
• The holder of a certificate of registration for a collective mark fails to control or ineffectively controls the implementation of the regulations on the use of the collective mark;
• The holder of a certificate of registration for a certification mark violates the regulations on use of the certification mark or fails to control or ineffectively controls the implementation of such regulations;
• The use of the protected trademark for goods or services by the owner or an authorized person misleads consumers as to the nature, quality, or geographical origin of such goods or services;
• The protected trademark has become a generic name for the goods or services for which it was registered.

Cases of trademark protection cancellation:

To be specific, cases of trademark protection cancellation include:

• The trademark application was filed in bad faith;
• The applicant did not have the right to register the trademark and was not assigned such right by a person who did.
• The trademark fails to meet the protection criteria as prescribed by law;
• Amendments or supplements to the trademark application expanded the scope of the disclosed subject matter or altered the nature of the trademark as originally filed.

Legal basis:

Both the trademark protection termination vs. cancellation in Vietnam have different legal grounds. To be specific:

• Trademark protection termination is based on the subjective will of the trademark owner or violations in the use and control of the trademark. It may also result from objective factors (not arising from unlawful acts of the owner at the time of registration).
• Trademark protection cancellation is grounded in unlawful acts committed by the applicant or errors made by the competent state authority during the examination process.

Limitation period:

Both the trademark protection termination vs. cancellation in Vietnam have different limitation periods. To be specific:

• Trademark protection termination: There is no specific statute of limitations. A request for termination may be filed at any time once the grounds for termination arise.
• Trademark protection cancellation: The statute of limitations for requesting cancellation is the entire duration of protection. However, for trademarks, the limitation period is five (5) years from the date of issuance of the protection certificate, except in cases where the certificate was granted due to the applicant’s dishonesty.

Legal consequences

• Trademark protection termination: The protection certificate remains valid from the date of issuance until the termination takes effect. Therefore, all transactions related to the subject matter during that period are considered lawful.
• Trademark protection cancellation: The protection certificate is deemed invalid from the date of issuance. As a result, all transactions related to the subject matter are considered null and void.

In conclusion, key differences between trademark protection termination vs cancellation in Vietnam lie in the legal basis and consequences.

• Trademark protection termination: Initially, the owner of the protection certificate lawfully held rights over the protected subject matter. However, due to certain grounds as prescribed by law, the validity of the certificate must be terminated.
• Trademark protection cancellation: The owner did not have the right to register the trademark from the outset, or the industrial property subject matter did not meet the protection criteria, but the certificate was still granted due to certain reasons

Example of trademark protection termination

A trademark is registered under the name of company A. However, after a period of ineffective business operations, Company A ceases its business activities and proceeds with dissolution procedures. In this case, if a third party submits a request for trademark protection termination to the competent authority and successfully proves that Company A has been dissolved and has no lawful successor, the trademark may be subject to termination of validity.

Example of trademark protection cancellation

On April 14, 2010, A, the owner of trademark protection certificate No. 12345 (issued by the Intellectual Property Office on December 2, 2008), signed a trademark license agreement with B, effective from the date of signing. Under the agreement, A granted B the exclusive right to use the trademark in Vietnam for one year, and B paid the full licensing fee for that period.

However, on June 11, 2010, certificate No. 12345 was cancelled because the industrial property subject matter failed to meet the protection conditions at the time of issuance. As a result, the trademark license agreement was rendered null and void. Consequently, A was not obligated to transfer the right to use the trademark to B, and B was not obligated to pay the licensing fee to A from the effective date of the agreement. (In principle, when a transaction is invalid, the parties must return to each other what they have received.)

This is a legal translation and summary provided by Viet An Law regarding the comparison between trademark protection termination vs. cancellation in Vietnam. For further inquiries or legal consultation on intellectual property matters, please contact Viet An Law for the best support.