Withdrawal of trademark registration in Vietnam

A trademark is one of the objects of industrial property rights, containing commercial instructions, and a bridge between the manufacturer/service provider and consumers. The trademark is an important sign to distinguish the goods and services of one individual or business organization from those of another. During the trademark registration process, for many reasons, the owner must withdraw the registration application. However, in reality, many clients do not clearly understand the procedures for withdrawing this application. To answer these related questions, Viet An Law Firm would like to issue the following article of withdrawal the trademark registration 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.

What is a trademark?

Presently, intellectual property is considered the most important and valuable asset for every business. In particular, it cannot be denied that a trademark is an industrial property object that brings the greatest commercial exploitation value to the owner.

Trademarks as defined by the World Intellectual Property Organization (WIPO): A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Vietnam’s 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).

The main function of a trademark is to help customers identify the goods/services of this business from the goods/services of other businesses. Once consumers are positive and satisfied with the product, they will tend to buy it again and use it for the long term in the future.

Withdrawal of trademark registration in Vietnam

If patent law aims to protect scientific and technical achievements, trademark law aims to protect commercial identity. Trademark protection is to protect the rights and interests of organizations and businesses, and protect consumers when they participate in buying, selling, and using goods and services on the market.

A trademark registration application is an important legal basis for competent state authorities to consider granting a trademark registration certificate. However, during the trademark registration process, if for certain reasons the owner does not carry on with the registration application, he/she may withdraw the trademark application according to the provisions of the law. This provision is intended to allow applicants to quickly stop pursuing protection for industrial property applications in which they are no longer interested, thereby providing applicants with flexibility in managing intellectual property, application control, and ensuring withdrawal requests are handled appropriately and following regulations.

According to Article 116 of the Intellectual Property Law, withdrawal of industrial property registration application is prescribed as follows:

The applicant entitled to withdraw the application

Until the State administrative authority of industrial property rights makes a notice of refusal of or a decision on the grant of a Protection Title, the applicant shall have the right to declare the withdrawal of the industrial property registration application in written form in his or her name or through an industrial property representative agency provided that the investment of authority for withdrawal of the application is expressly stated in the power of attorney.

Application withdrawal deadline

At the moment an applicant states the withdrawal of the registration application, all further procedures related to the application shall be suspended; fees and charges already paid to the procedures that have not yet commenced shall be refunded to the applicant at his/her request.

Legal consequences

• Any registration application for an invention or an industrial design that has been withdrawn or is considered as withdrawn before publication
• Trademark registration application that has been withdrawn shall be considered as never filed, except where it serves as the basis for a claim for right of priority.

Distinguish between withdrawal and split of a trademark registration

Procedures for withdrawal of trademark registration in Vietnam

Article 17 of Decree 65/2023/ND-CP clearly states the principles, steps, and requirements for the withdrawal of industrial property registration applications. This process requires appropriate authorization, timelines that the applicant or the applicant’s representative must comply with, and related results, accordingly, the procedure for withdrawing a trademark registration is carried out as follows:

Step 1: Request withdrawal of trademark registration application at the competent state authorities.

Step 2: Process the request to withdraw the trademark registration application

Within 02 months from the date of receipt of the request, the national management authority in charge of industrial property rights will process the request and issue one of the following notices for each specific case:

• Issue a notice accepting the withdrawal of the application in case the request to withdraw the application meets the regulations and terminates the processing of the application, recording the withdrawal in the application file.
• Issue a notice of intention to refuse the withdrawal of the application in case the request to withdraw the application does not meet the provisions of Point A of this Clause and set 02 months from the date of notice for the applicant to correct the shortcomings. This is a new point added in the Decree to complete procedures for withdrawing trademark applications and protecting the legitimate rights and interests of relevant entities.
• Issue a notice of refusal to accept withdrawal of application if the applicant does not correct the errors within the prescribed time limit or corrects the errors but does not meet the requirements.

Withdrawal of trademark registration service of Industrial Property Representative in Viet An Law

• Representing clients to conduct application procedures, and monitor and respond to the trademark registration process at the Intellectual Property Office.
• Consulting and supporting customers during the trademark registration process.
• Consulting on increasing trademark protection.
• Representing the customer to draft a dossier to withdraw the trademark application as required.
• Consulting on minimizing risks related to the trademark registration and withdrawal process.

Clients who need advice on the withdrawal of trademark registration in Vietnam, please contact Viet An Law for the best support.