Understanding How Trademark Opposition Works in Vietnam

Posted by Written by Melissa Cyrill Reading Time: 7 minutes

We discuss the legal grounds on which intellectual property rights holders can register opposition to trademark applications in Vietnam.

Intellectual property rights (IPR) holders are advised to take steps to prevent competitors from registering marks that closely resemble their own. This precaution is crucial for mitigating legal risks, especially in avoiding consumer confusion and thwarting unauthorized trademark usage or exploitation of their brand’s goodwill.

To safeguard their brands and intellectual property in Vietnam, IPR holders must grasp the legal provisions for objecting to a trademark registration or providing third-party observations, as laid out in Articles 112 and 112a of the amended 2022 IP Law.

In this article, we discuss the legal grounds based on which trademark applications can be opposed in Vietnam. [Reference: Law No.: 07/2022/QH15: The National Assembly promulgates the Law on Amending and Supplementing a Number of Articles of the Law on Intellectual Property No. 50/2005/QH11, which was amended and supplemented under Law No. 36/2009/QH12 and Law No. 42/2019/QH14.]

Overlapping, identical, and similar trademarks

A trademark application may be opposed if it closely resembles an earlier mark that is already protected for similar goods or services. This includes marks registered in Vietnam or under international treaties to which Vietnam is a party (Article 74.2e).

According to Article 90.2, the first-to-file principle grants protection to the trademark application with the earliest filing date, given it meets all necessary conditions. Thus, if one has filed a trademark application before another party’s similar or identical application, this can be used as a basis for opposition.

Unregistered trademarks that have gained widespread recognition can also be used as grounds to oppose another’s earlier trademark application (Article 74.2g).

Owners of well-known marks (Article 74.2i), whether registered or not, can oppose pending trademark applications. To challenge a new application under this provision, the opposer must prove that their mark’s well-known status predates the filing of the new application. They must also demonstrate either potential confusion for similar goods/services or potential dilution or unfair advantage for dissimilar goods/services.

Another scenario is with respect to trademarks that have expired within the last three years (previously five years before Vietnam’s IP Law 2022) – they can still be used as grounds for opposing pending trademark applications that are identical or confusingly similar. This means that despite their registration lapsing, marks that have expired but fall within this three-year grace period are still afforded a residual level of protection.

Conflicts over trade names

Trade names in Vietnam receive protection regardless of filing or registration, provided they have been legitimately used (Article 74.2k). If a trade name has established rights through lawful usage in Vietnam, it is safeguarded against unauthorized use of identical or similar signs, whether as a trade name or a trademark, if such usage is likely to deceive the public. Consequently, opposition can be registered against fresh trademarks that resemble existing trade names with established commercial rights in Vietnam. This legal safeguard protects established business identities and seeks to prevent consumer confusion.

Infringement of GI

Geographical Indication (GI) infringement is addressed in Articles 74.2l and 74.2m. A trademark application can be opposed if it is found to potentially infringe upon a protected GI as outlined in these articles. According to Article 74.2(l), opposition may be based on the grounds that the mark is identical or similar to a protected GI, potentially leading consumers to believe the goods originate from a different geographical area.

Article 74.2(m) specifically pertains to trademarks associated with wines and spirits. It allows opposition against trademarks that utilize, translate, or transcribe a GI related to wines and spirits, particularly if the products do not genuinely originate from the indicated geographical areas.

Treaties and reciprocal agreements that Vietnam is a signatory to with regard to intellectual property

Vietnam is a party to various international agreements and treaties concerning trademarks and intellectual property rights, including the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, the TRIPS Agreement (The Agreement on Trade-Related Aspects of Intellectual Property Rights), the Madrid Agreement, the Madrid Protocol, and bilateral and regional trade agreements such as the United States-Vietnam Bilateral Trade Agreement, the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the EU–Vietnam Free Trade Agreement (EVFTA), and the Regional Comprehensive Economic Partnership (RCEP).

Vietnam is not a signatory to the Hague Agreement. Administered by the WIPO, The Hague Agreement Concerning the International Deposit of Industrial Designs provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees.

Infringement of protected industrial design

Under Article 74.2(n) of Vietnam’s IP Law, a trademark application may face opposition if it includes a sign, such as a logo, shape, or symbol, that is identical or minimally different from an existing protected industrial design. This opposition is valid if the industrial design in question was submitted for registration before the filing date of the trademark application.

In such scenarios, opposition against a mark’s registration can be based on a prior design right, particularly if the trademark’s shape is indistinguishable from the protected design. Further, Article 74.2(n) implies that the design right applies regardless of the goods for which the trademark is intended to be registered.

Infringement of plant variety name

If a sign or trademark closely resembles or is identical to the names of plant varieties already safeguarded in Vietnam, it can serve as grounds for opposing the trademark (Article 74.2o).

Infringement of copyright material

Signs, such as trademarks under application, which contain reproductions of copyrighted works, are ineligible for trademark protection unless authorized by the owners of said works. This provision of Vietnam’s IP Law empowers owners of copyrighted works – which covers logos, artistic designs, and other creative expressions – to oppose trademark registrations that directly copy or integrate their copyrighted materials without their consent.

As in the case of protections for industrial design, Article 73.7 allows copyright holders to oppose trademark registration containing their work without permission, regardless of the intended goods or services.

The mechanism for preventing the application of trademarks containing protected works operates as follows:

  • Figurative and three-dimensional elements of trademarks can include artistic works created for logos or labels.
  • These artistic works are protected by copyright law, with the creator holding the copyright.
  • Use of these works in trademarks requires either transfer of rights or a license from the copyright holder.
  • Copyright holders typically own economic rights to commissioned artwork for logos or trademarks.
  • If someone uses artwork without authorization in a trademark, the copyright holder has legal recourse.

Additionally, under Article 74.2(p), trademarks resembling names or images of well-known characters or figures from copyrighted works can also be opposed, but only if they were widely known to the public before the trademark application’s filing date. This requirement ensures that not all characters or figures are eligible for opposition and that only those with significant public recognition can be protected.

Lacking distinctiveness

Vietnam’s IP Law defines the categories of signs ineligible for trademark protection, particularly those lacking inherent distinctiveness because of their generic, descriptive, or misleading characteristics (Articles 73 and 74.2a-d,dd).

Non-entitlement to register a trademark

Article 87.2 grants producers the right to oppose trademark registration attempts by third parties, such as distributors or other entities, for products associated with that producer. If a producer discovers unauthorized trademark registration attempts by their distributor or marketer with IP VIET NAM (Intellectual Property Office of Vietnam, Ministry of Science and Technology), they can oppose this application based on lack of consent.

Under Article 87.7, if a representative or agent tries to register a mark in Vietnam on behalf of the mark owner, and there is a treaty prohibiting such registration, the mark owner may oppose it. They can argue that the registration is not allowed under the treaty unless they have given consent or there is a justifiable reason for the registration.

Bad faith applications

Article 187.2 allows third parties to file trademark oppositions in Vietnam if they believe the applicant is seeking trademark protection in bad faith. “Bad faith” refers to situations where the applicant knowingly applies for registration of a mark that already belongs to another person with a legitimate claim to it, without their consent.

The interpretation of “Bad Faith” as a ground for challenging trademark application or registration is outlined in Point 34.2 of Circular No. 23/2023/TT-BKHCN, effective from November 30, 2023. The applicant is deemed to have acted in bad faith if the presented evidence meets both of the following criteria:

a. At the time of filing the application, the applicant knows or has reasonable grounds to know that their applied-for trademark is identical or confusingly similar to another person’s trademark widely used in Vietnam or internationally for identical or similar goods or services.

b. The motive behind the applicant’s trademark registration is to capitalize on the reputation or goodwill of the other person’s trademark for profit, mainly through resale, licensing, or transferring registration rights to the other person, or to prevent the other person from entering the market or engage in other behaviors contrary to fair commercial practices.

Awareness of the mark can arise from various sources, including its recognition domestically or internationally, or its established reputation within Vietnam. Furthermore, knowledge of the mark may be demonstrated if the applicant has a previous connection or business relationship with the mark’s owner, evidenced through past correspondence or negotiations between the parties involved.

Circular 23/2023/TT-BKHCN introduces changes regarding the handling of opposition requests

Circular 23 has made changes to the “deadline for parties’ submitting opinions/arguments,” which are as follows:

  • Parties now have 02 months, instead of the previous 01 month, to respond after receiving the Notification of the Opposition and/or the applicant’s response.
  • Opposing parties are given 02 months, instead of 01 month, to submit a copy of the Court’s Acceptance if the Vietnam IP Office requests legal action.
  • The Vietnam IP Office will handle oppositions related to registration rights without requiring legal proceedings in certain cases specified in Article 11.5:
  1. When there is clear evidence indicating that the applicant lacks the right to file under Clause 7, Article 87 of the Law on Intellectual Property.
  2. When the objection concerns the right to file mark registration applications for a sign that is a place name or another sign indicating the geographical origin of a Vietnamese local specialty, as specified in Clauses 3 and 4, Article 87 of the Law on Intellectual Property.
  • Language used by the objecting party must be Vietnamese; accompanying documents may be in other languages but must be translated upon request by the Vietnam IP Office.

Best practices advisory for IP protection in Vietnam

For new market entrants and foreign investors looking to establish a presence in Vietnam, it’s imperative to prioritize intellectual property protection from the outset. Understanding the nuances of IP rights in Vietnam and implementing proactive measures can safeguard your valuable assets and mitigate risks. Assign a dedicated manager or team to oversee IP matters, ensuring that everyone in your organization is aware of their responsibility in protecting IP assets. Trust your business instincts and prioritize IP protection as a core component of your market entry strategy.

Take proactive steps to prevent IP infringements by implementing robust security measures and confidentiality agreements. Conduct thorough market research to assess potential risks and develop strategies to mitigate them. Secure legal protection for your IP assets by registering trademarks, patents, and copyrights in Vietnam, leveraging the expertise of local legal professionals to navigate the registration process effectively.

Educate your team about the importance of IP protection and foster a culture of awareness and compliance within your organization. Build strong relationships with local partners, legal firms specializing in IP law, and industry associations to access resources and support for IP protection efforts.

Consider alternative dispute resolution mechanisms such as mediation to resolve IP disputes efficiently and amicably. By adhering to these best practices, new market entrants and foreign investors can navigate the complexities of IP protection in Vietnam and safeguard their valuable assets effectively.

For support with trademark applications or advice on intellectual property in Vietnam, please reach out to us at vietnam@dezshira.com or visit our website www.dezshira.com.

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Vietnam Briefing is published by Asia Briefing, a subsidiary of Dezan Shira & Associates. We produce material for foreign investors throughout Asia, including ASEAN, China, and India. For editorial matters, contact us here and for a complimentary subscription to our products, please click here. For assistance with investments into Vietnam, please contact us at vietnam@dezshira.com or visit us at www.dezshira.com.

Dezan Shira & Associates assists foreign investors throughout Asia from offices across the world, including in Hanoi, Ho Chi Minh City, and Da Nang. We also maintain offices or have alliance partners assisting foreign investors in China, Hong Kong SAR, Dubai (UAE), Indonesia, Singapore, Philippines, Malaysia, Thailand, Bangladesh, Italy, Germany, the United States, and Australia.