Trademark Cancellation/Invalidation in Vietnam
Overview:
A trademark cancellation in Vietnam is a legal challenge to the continued registration of a particular trademark. A trademark cancellation is instituted by filing a petition for cancellation with the Vietnam IP Office and paying the required fee. In most cases, a cancellation must be filed within five years of the date that the trademark registration issued in Vietnam. However, there are some limited circumstances under which a trademark registration may be canceled at any time.
A cancellation against a trademark registration in Vietnam must allege one or more grounds for challenging a particular trademark registration. Most often, a trademark registration in Vietnam is challenged by someone who owns prior rights in an identical or confusingly similar trademark. But, a trademark registration can also be challenged on a number of other grounds. For example, cancellations against trademark registrations in Vietnam may be based on the petitioner’s evidence that the trademarks are no longer in use and have been abandoned, or that the trademarks are merely descriptive and not entitled to registration.
If you have received notice that a trademark cancellation has been filed against your trademark registration, or you wish to attack validity of a trademark registration in Vietnam, the first thing you should do is immediately seek the help of an experienced and dedicated trademark attorney. Our attorneys are here, ready to assist you. We understand that a trademark cancellation is a serious and complex legal proceeding that requires specialized knowledge and skills to properly navigate, you will want a trademark lawyer to provide you with valuable advice and guidance throughout the entire proceeding in Vietnam. Our trademark attorney will not only be able to assist you in defending the trademark cancellation, but can also enter into settlement negotiations in the hope of reaching an amicable resolution that is satisfactory to both parties.
1. Trademarks subject to invalidation in Vietnam
Our advice: The following types of trademark may be subject to invalidation in Vietnam
• Vietnamese registered trademarks;
• Vietnamese designations of International trademarks, which have been accepted for protection in Vietnam.
2. Time limit
Our advice: The statutory time limit for a third party to initiate a cancellation/invalidation against a Trademark Registration in Vietnam is provided as follows:
• 5 years from the date of registration/protection granted for the trademarks;
• Indefinitely in case of invalidation action based on bad-faith ground.
3. Grounds for initiating a cancellation/invalidation against a Trademark Registration in Vietnam
Our advice: The principal grounds for initiating a cancellation/invalidation against a Trademark Registration in Vietnam are as follows:
• The owner has no right to file the application for the trademark in Vietnam;
• The trademark does not meet protection requirements at the time of registration/protection granted (i.e. being signs excluded from trademark protection; lacking of inherent distinctiveness; indistinguishable);
• Bad-faith filing.
• 5-years non-use of the mark after its registration;
• The non-use arguments, cancellation action against trademarks can be taken on following grounds: (i) The owner fails to pay the stipulated validity maintenance or extension fee; (ii) The owner declares relinquishment of the industrial property rights; (iii) The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir; (iv) The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark; and (v) The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations.
4. Examination
Our advice: A cancellation/invalidation against a Trademark Registration in Vietnam will be settled as follows:
• The owner is normally assigned a 2-month period, which may be extended by up to 4 months, from the first notification by the Vietnam IP Office to submit their counterstatement or response.
• The Vietnam IP Office may seek additional arguments/documents from the parties if necessary.
• Once arguments and supporting documents from both sides are deemed sufficient, the Vietnam IP Office shall issue their opinion/conclusion on the invalidation action.
After the cancellation/invalidation request is filed with the Vietnam IP Office, it will be assigned to an examiner for examination thereon. If the cancellation/invalidation request is found reasonable, the Vietnam IP Office will send its first Notification to the trademark owner for their counterstatement or response. The Vietnam IP Office may also seek additional arguments/documents from the parties if necessary.
When a Decision on cancellation/invalidation or rejection of the cancellation/invalidation request is issued by the Vietnam IP Office (the first Decision), the trademark owner or the involved party may file an appeal against such first Decision with the Vietnam IP Office. The appeal will be then examined and a second Decision on settlement of the appeal will be issued by the Vietnam IP Office. If unsatisfactory with the Vietnam IP Office’s second Decision, the concerned party may files lodge their appeal (second-time appeal) with the Science and Technology Minister or initiate lawsuits at court. Due to various levels of settlement of the cancellation case, the time frame for a cancellation proceeding may range from 2-3 years or even more.
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