Following our article Vietnam: Amended IP Law sees significant changes to IP ownership & enforcement published in June 2022 on the Amended Intellectual Property Law (“Amended IP Law”) in Vietnam, further practical developments are occurring at IP Vietnam.
In 2022, Vietnam’s National Assembly passed the Amended IP Law which took effect on 1 January 2023. The Amended IP Law sought to better align Vietnam’s intellectual property (IP) system with international treaties and practices.
Among the important and wide-ranging changes, a notable aspect is that relating to Trade Mark Opposition.
Under the Amended IP Law, any third party is entitled to (i) submit its opinion about the registration (or refusal) of a concerned mark (“Third Party Opinion”), and (ii) oppose the registration of a concerned mark (the “Opposition”).
Shortened timeframe for filing Opposition
The timeframe for filing of any Opposition is now shortened from nine months to five months from the trade mark publication date. This applies to all trade mark applications which are filed on and after 1 January 2023.
Controversial practice
However, the Intellectual Property Office of Vietnam (IP Vietnam) is applying the five months deadline for filing Oppositions retrospectively to all trade marks filed before 1 January 2023, even if the old practice should still apply. If an Opposition has been filed beyond this five-month milestone, the submission will not be accepted as an Opposition but considered a Third Party Opinion. Despite IP practitioners challenging this application of the Amended IP Law, IP Vietnam remains unmoved.
What this means for brand owners
If brand owners think they will need more than five months to file an Opposition, we recommend filing a Third Party Opinion as soon as possible. This can be submitted at any time before a decision is made by IP Vietnam.
Unlike an Opposition, the examiner will not provide a response to a Third Party Opinion, which means that brand owners will need to regularly monitor the status of the Third Party Opinion.
The content of this article is intended to provide a general guide to the subject matter. Please reach out to us for advice about your specific circumstances.
