[1] protection mechanisms
Viet Nam has adopted the “first-to-file” rule, i.e. where two or more applications are filed by many different parties for protection of the same trademark, a certificate may only be granted to the valid application with the earliest priority or filing date among applications. Accordingly, it is advisable to file an application for trademark as soon as possible after the trademark was invented. However, the “first-to-file” rule shall not apply to cases of well-known trademark under the Paris Convention or those which have been widely used and recognized. In such cases, the priority will be given to the person who can prove that his trademark has been well-known or been widely used and recognized, without subject to the “first-to-file” rule.
As a member of Paris Covention and WTO, an application for registration of trademark filed by nationals of any contracting members can claim priority rights to file their applications within six [6] months from the earlier filing date of Paris Convention or the WTO application from which priority is claimed, in accordance with Vietnam IP Act.
To claim priority rights for trademark application in Vietnam, it is required a identical applicant, trademark and goods/services trilogy [triple identity] between application in Vietnam and priority application. However, the “identical” requirement in goods/services means that the goods/services for which application in Vietnam claims priority are not wider than those registered in the priority application.
One of the rules for protection IPR in Vietnam is to protect the legitimate owner, i.e. any third parties are entitled to request National Office of Intellectual Property (NOIP) for cancellation/opposition against a prior registration/application on the basis of bad faith. The rule is stipulated in Article 96(3) of Vietnamese IP Act, in which the statutory duration for making request for invalidation of trademark is limitted within 5 years as from the granting date in general, however, statutory duration is through 10-year term if the trademark has been granted due to the applicant’s dishonesty. Besides, the proper owner protection rule is also mentioned in Article 6 septies of Paris Convention, which Vietnam is a member. Accordingly, the proprietor is entitled to cancel/oppose the registration applied by his agent or representative without such proprietor’s authorization.
Multiple class applications are acceptable in Vietnam provided that description of goods/services that must be specified one by one in accordance with Nice 10th Classification. The item of goods in general meanings or item in the class headings as well is not acceptable, according to our practice.
The system of examination acceleration for trademark application is available in Vietnam. Accordingly, the applicant can request the NOIP to accelerate the substantive examination stage for the application. In this case, the duration for application can be shortened to about nine [9] months from the filing date instead of [14] to [18] months as usual.
Under Trademark Act, owners are granted certain exclusive rights to trademarks. However, IP rights is considered as relative exclusive rights instead of absolute exclusive rights due to some exceptional situations. Allowing paralel importing in Vietnam is one of exceptional situations as above mentioned.
[2] consent system
Although the Vietnamese Trademark Law system does NOT adopt the Consent System as a reason to exclude the likelihood confusion for registration of trademark, however, in practice, it is still accepted to support in case the confusion is not likely to be happened. It means that if the two trademarks in the question are very similar (nearly identical) so that consumers always believe they are offered from the same source (same trademark owner), the letter of consent shall not be accepted. Otherwise, the letter of consent is accepted just only in case trademarks are considered rather similar, not closely identical, and the goods for which they both are applied are not identical.
[3] cancellation rule
Certificate of trademark registration in Vietnam can be declared to be cancelled on the request of a third party, including on the basis of a counterclaim in infringement proceedings, in the following circumstances:
A cancellation on non-use can be made if, within a continuous period of five years, the trademark has not been put to genuine use by its owner or his registered licensee in Vietnamese market in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use, except the genuine use has been started or resumed at least 3 months before the request for cancellation.
Furthermore, a trademark shall be declared invalid where the applicant of such mark was acting in bad faith when he filed the application for the trademark either.
In addition, a request for invalidity are available under Vietnamese IP Act in the following circumstances:
(a) where the trademark is confusingly similar to prior filed or registered trademark that has an earlier priority date;
(b) where the trademark is confusingly similar to an internationally unregistered famous mark;
(c) where the trademark lacks distinctiveness.
[4] opposition rule
An opposition proceedings are allowable under the Vietnamese IP Act to prevent the pending trademark that are assumed to be indistinctive or in bad faith.
| SUMMARY | [+] |
| PRACTICE | [+] |
| OUTSTANDING ISSUES | [+] |
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