Due to the importance of trademarks in economic development in general and for each owner in particular, Vietnamese law has stipulated the procedure for registering trademarks at the competent state agencies. However, in some cases, trademark signs may be required to be invalidated. Viet An Law has compiled solutions to address the common question: when can a trademark be invalidated in Vietnam?
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Essentially, the invalidation of a trademark involves the removal of the legal value of a trademark registration certificate issued by a competent authority when one of the grounds for invalidation is established according to the provisions of law.
The certificate of trademark registration will have no legal value from the time of issuance; accordingly, all legal rights and obligations established based on the certificate of trademark registration will not be recorded. Thus, the cancellation of the validity of the certificate of trademark registration can be defined as follows: Cancellation of the validity of a trademark is a procedure conducted by a competent state agency upon request of an organization or individual to eliminate the legal value of the certificate of trademark registration from the time the certificate of trademark registration is issued when one of the grounds for cancellation as prescribed by law appears.
According to Clause 4, Article 96 of the 2005 Law on Intellectual Property, amended and supplemented in 2009, 2019, and 2022, organizations and individuals have the right to request the state management agency of industrial property rights to cancel the validity of protection certificates, if state fees and charges are paid.
According to Article 96 of the Law on Intellectual Property 2005, amended in 2009, 2019, and 2022, a protection certificate is terminated in whole or in part in the following cases:
If the applicant intentionally commits a fraudulent act, intends to cause confusion or damage to others when registering a trademark, the trademark protection certificate may be revoked, such as filing an application to obstruct another person’s business or registering a counterfeit trademark.
If the applicant does not have the legal right to register or if this right has not been legally assigned, the protection certificate may be cancelled. For example, if the applicant is not the legal owner or has not been assigned the right by the owner, the trademark registered by that person will be cancelled.
Objects such as inventions, industrial designs, and trademarks that do not meet the protection conditions prescribed by law will be invalidated: Inventions that are not new, not creative, or not capable of industrial application…
Amendments that change the nature of the subject matter or expand the scope of the description will invalidate the patent, for example, changing the patent content to include new elements not included in the original description.
If the applicant is not the first to file, or there is a dispute over the right to file, the validity may be revoked.
According to Clause 5, Article 96 of the Law on Intellectual Property 2005, amended and supplemented in 2009, 2019, 2022, based on the results of the examination of the request to cancel the validity of the protection certificate and the opinions of the relevant parties, the state management agency of industrial property rights shall decide to cancel the validity of the protection certificate or notify the refusal to cancel the validity of the protection certificate. Specifically, the management agency will be the Intellectual Property Office under the Ministry of Science, Technology, and Digital Transformation.
Note: Organizations and individuals requesting to invalidate a trademark will have to pay the following state fees:
When a trademark is requested to be invalidated and the cancellation takes place, the owner’s trademark protection rights will be terminated or reduced from the date of issuance, and will no longer have legal effect.
The statute of limitations for exercising the right to request the cancellation of the validity of a protection certificate is the entire protection term, except for the case of requesting the cancellation of the validity of a protection certificate for a trademark for the reason specified in Clause 2, Article 96 of the Law on Intellectual Property 2005, amended and supplemented in 2009, 2019, 2022, the statute of limitations is five years from the date of issuance of the protection certificate or the date of international registration of the trademark taking effect in Vietnam.
The above article presents details on the issue: When can a trademark be invalidated in Vietnam? If you have any difficulties or problems related to intellectual property law, please contact Viet An Law for specific and detailed advice!
