In December 2019, the Intellectual Property Office of Vietnam (IP Vietnam) and Vietnam Intellectual Property Association (VIPA) collectively held two meetings with more than 90 IP agents and practitioners, including representatives of Rouse Legal Vietnam on updated practices of trade mark examination in Hanoi and Ho Chi Minh City.
The discussions, which were lively and highlighted the need for action, included some controversial issues relating to unclear regulations and current practice under the IP Law:
- trade mark distinctiveness assessment
- registration of a trade mark containing a geographical name
- refusal of a trademark due to a cited mark that has been expired for less than five years
- the legal basis for opposing a trade mark application and cancelling a registration based on the grounds of and proof of bad faith
- procedures for handling oppositions and international trade mark registration and regulations on genuine trade mark use, etc.
Following the discussions, IP Vietnam clarified several key examination practices and possible changes to the regulations, namely:
Trade Mark Distinctiveness Assessment
Currently there is no specific guidance on the assessment of the descriptiveness of a trade mark, likelihood of confusion as to its origin, registrability of a trade mark containing a geographical name, implementation of disclaimers and partial refusal. Even though they are common grounds for refusal of trade marks. IP Vietnam confirmed that a new regulation of examination addressing these issues would be released soon.
IP Vietnam will issue a list of acceptable goods and services.
Bad faith filing
IP Vietnam takes the view that the requirements for bad faith filing are clearly and fully specified under three articles of the current IP Law, namely (i) well-known trade mark, (ii) widely used/recognised trade mark and (iii) prohibiting agent’s right in registering trade mark without consent of the manufacturer. Therefore, further elaboration is unnecessary. Additionally, bad faith filing is only permitted to be the ground for invalidation of registrations, rather than for opposition because there is no legal provision for opposition on such grounds in the current IP Law.
Evidence of use (in defense against non-use cancellation)
IP Vietnam only confirmed that the trade mark in use and the one on record have to be identical to ensure the evidence of use is accepted. However, there is no specific guidance on whether evidence of use of the trade mark in a different font from the one in which it is registered would be accepted or the scale and degree of use required to maintain a registration.
Refusal based on citation of a registered cited mark which is vulnerable to non-use cancellation
A new practice was introduced and took immediate effect without any notice to IP agents. Previously, if a trade mark application was refused due to a registered mark which is vulnerable to non-use cancellation, the applicant could initiate a non-use cancellation against the cited mark in response to the refusal then supplement the non-use cancellation result to get protection of the refused mark. From now on, the applicant must initiate the non-use cancellation proceeding against the cited mark prior to the filing date. Otherwise, the applicant has to re-apply after the non-use cancellation.
Refusal based on citation of a registered cited mark that has expired for less than five years
Previously, the applicant could overcome the citation refusal by submitting a formal non-use investigation result evidencing that the cited mark has not been in use for the past five years. The citation was then removed immediately to pave the way for the refused mark to get protection. However, this option is no longer accepted. Instead, IP Vietnam would require a declaration from the cited mark’s owner to confirm such non-use.
IP Vietnam confirmed that there would be a time limit for opposition in the upcoming amended IP Law, contrary to the current practice which allows opposition to run in parallel with substantive examination period. This is to help reduce IP Vietnam’s current backlog.
Overall, the new practices reflect a stricter interpretation of the laws and regulations by IP Vietnam. Brand owners and practitioners are hopeful that by the end of 2020, IP Vietnam will release new regulations governing examination to clarify some of the ambiguities under the current practice.