Except for a well-known trademark1, Vietnam only recognizes that an individual or organization has the exclusive right to use a trademark (brand name) associated with a specific type of designated goods or service only when it has been granted a trademark registration certificate and still valid in Vietnam.
But for some reason, suppose the trademark right was wrongly granted or registered due to an subjective mistake or error by a trademark examiner, or because the National Office of Intellectual Property of Vietnam (NOIP) did not know or could have not known the fact that such misgranted trademark should have been registered in favor of another person then the law allows a potential third party to petition to revoke it.
Please keep in mind that the Vietnamese laws distinguishes the difference between two procedures for invalidation (also known as validity termination) and revocation (also known as validity cancellation), whereby the procedure for invalidation is the procedure for terminating a trademark right in existence on the grounds that it has been not used in commerce or it has been dissolved or went bankrupt2 while for the process for cancellation action, the said trademark right is not only invalidated or terminated but also such trademark right is not recognized as valid at the time of grant.
Who has entitlement to cancellation action and what are the legal grounds, required documents and evidences?
Nearly like the procedure for trademark opposition3, any third party4 may submit a request for revocation against a registered trademark to the NOIP provided that the petition must contain and satisfy the following:
(a) A registered trademark subject to a cancellation action must has been registered less than 5 years calculated from the date of grant; or
(b) Where a registered trademark that has registered more than 5 years from the date of registration, only one legal ground as per the point (c)(i) below may be invoked and substantiated;
(c) To affirm one of two or both of the legal basises: (i) the registrant of a registered trademark did not have entitlement to register, ie. dishonest behavior at the time of filing application (in fact dishonest behavior may be understood as bad faith filing), or (ii) at the time of grant of protection, the registered trademark did not meet either the Condition 1 – inherent distinctiveness, or the Condition 2 – likelihood of confusion with an earlier trademark or conflicting with the others' IP rights.
(d) Relevant evidences documents and records attached to the argument proving the applicability of the above legal grounds;
(e) A Power of Attorney (eg. in favor of Bross & Partners)
(f) Gorvenment charge of VND680,000 (33USD) per certificate (each subsequent certificate of VND510,000).
Procedure for Settlement of a Cancellation Action
Similar to the procedure for invalidation, after receiving the request for validity cancellation, the NOIP within 1 month, will serve the petition (the first time) to the registrant (the owner of registered trademark) notityfing that there is a third person (petitioner) who submitted a petition for validity cancellation and the NOIP would set the time limit for reply by the registrant in 2 months (applicable for nationally registered trademark) or 3 months (for internationally registered trademark)
The NOIP may, on a case by case basis, repeat the aforesaid procedure one more time for both of the registrant and the petitioner with the same fixed time limit. Only in complicated cases, the NOIP may organize an in-person hearing5 (materially means a direct dialogue) between the registrant and the petitioner.
Within 3 months from the expiry of the 2-month period (applicable for nationally registered trademark) or 3 months (applicable for internationally registered trademark) that the registrant submits no counter-argument, either within 6 months from the expiry the 2-month period (for nationally registered mark) or 3 months (for the Madrid-based international mark) to which the registrant presents its counter-statement then the NOIP shall issue a decision on validity cancellation in part or the whole or release a notice of rejection of such petition for cancellation in whole or in part.
So, theoretically, a cancellation action would take about 7-10 months or may last for a year even a few years depending on whether or not the trademark owner responds with its well-reasoned counter-arguments or depending on the NOIP's busy degree or overload status.
In case of disagreement with the NOIP's decision, the unsatisfactory party can lodge a second-time complaint to the Minister of Science and Technology or initiate an administrative case to the Hanoi People's Court. Where disagreed with the NOIP's notice of rejection, the unsatisfactory party can submit a first-time complaint to the General Director of the NOIP.
- Cancellation action against a register trademark is an inter partes legal dispute but only happens after a trademark right has been established. Thus, the approval or denial of a cancellation action is very serious for the granting authority as the NOIP. In practice, the NOIP will endeavor to defend its viewpoint of grant that it assumes to be correct.
- A successful chance for the petitioner would be practically very difficult because he/she has to fight at the same time against both both of the registrant and the NOIP. For example, it would be a market disaster if the cancellation action against the registered trademark X-Men under Vietnamese registration no. 11455 used for shampoo was approved by the NOIP and the hearing court6.
1 Well-known trademark rights is established without registration. Should esteemed readers be interested in famous trademark, please see more: http://bross.vn/newsletter/ip-news-update/You-are-cordially-invited-to-refer-to-a-published-study-report--on-the-protection-of-wellknown-trademark-in-Vietnam-funded-by-the-INTA-and-MoST-1678; and a Framework Proposal for Well-known Trademark Protection in Vietnam: http://bross.vn/newsletter/ip-news-update/FRAMEWORK-PROPOSAL--FOR-WELLKNOWN-MARK-PROTECTION.
2 See more our previous guide "Outline on trademark cancellation or revocation proceedings in Vietnam" at the link: http://bross.vn/ip-practices/guidance/Outline-on-Trademark-CancellationRevocation-Proceedings-in-Vietnam-1051
3 To understand the procedure for trademark opposition in Vietnam, you can read our guide at the link: "Procedures, deadline and legal grounds for the opposition against a trademark (brand name) applied for registration in Vietnam": http://bross.vn/newsletter/ip-news-update/Procedures-deadline-and-legal-grounds-for-the-opposition--against-a-trademark-brand-name-applied-for-registration-in-Vietnam
4 Article 96 of the IP Law. Cancellation of effectiveness of protection titles
1. A protection title shall be entirely invalidated in the following cases:
(a) The applicant for registration has neither had nor been assigned the right to register the invention, industrial design, layout design or mark;
(b) The industrial property object failed to satisfy the protection conditions at the time the protection title was granted.
2. A protection title shall be partly invalidated as to the part which failed to satisfy the protection conditions.
3. Any organization or individual may request the State administrative body for industrial property rights to invalidate a protection title in the cases specified in clauses 1 and 2 of this article, provided that such applicant pays fees and charges. The statute of limitations for exercising the right to request invalidation of a protection title shall be the whole term of protection of the protection title. For marks, such statute of limitations shall be five (5) years from the grant date, except where the protection title was granted as a result of dishonesty of the applicant.
4. Based on the result of the examination of a request for invalidation of a protection title and the opinions of the parties involved, the State administrative body for industrial property rights shall issue a decision on entire or partial invalidation of the protection title or shall notify refusal to invalidate.
5. The provisions of clauses 1, 2, 3 and 4 of this article shall also apply to the invalidation of international registrations of marks.
5 Direct dialogue between the registrant and the petitioner resembles the one between the opposing party and the opposed party, which means the last minute opportunity for the parties to be additionally explained, supplemented and final argument submission, and wherein may also imply a possible conciliation, amicable agreement or out-of-court settlement before the NOIP resolves the opposition at its discretion. See more "7 Most Essential Features of the Law and Practices Regarding Trademark Opposition Procedure in Vietnam" at the link: http://bross.vn/newsletter/ip-news-update/7-Most-Essential-Features-of-the-Law-and-Practices--Regarding-Trademark-Opposition-Procedure-in-Vietnam-1635
6 You can refer to our comment on this interesting case in article titlted "X-Men vs. X-Men: The Second Classic Intellectual Property Rights Dispute in Vietnam" or see the link: http://bross.vn/newsletter/ip-news-update/XMen-vs-XMen:-The-Second-Classic-Intellectual-Property-Rights-Dispute-in-Vietnam
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.