Trademark opposition is a legal procedure for settling an inter partes dispute thereby allows an individual or organization to submit his/her written objections to the Trademark Registry Office as the National Office of Intellectual Property of Vietnam (NOIP) requesting not to grant protection for another person's trademark applied for registration for the reason that such would-be registered trademark will infringe his/her legal rights and interests.
As provided by the Intellectual Property Law, the trademark opposition belongs to a part of Article 1121 titled "the third party's opinion on the granting of protection titles" stipulating the general principle applicable for the opposition mechanism against a request for grant of title of protection regarding all industrial property rights whose exclusive rights arise only on the basis of registration. Readers can refer to our earlier article "7 most essential features of the law and practices regarding trademark opposition procedure in Vietnam2
Within this short paper, we only summarize the basic issues relating to when and where to lodge an opposition, procedure, process, legal grounds therefor for your reference.
Where and when do you file an opposition?
If you want to prevent or at least delay or slow down the process of examination of someone else's applied-for mark, submitting an opposition is the right way to do it. An trademark opposition must be made in writing and filed to the NOIP together with a required official fee of VND 550,000 per trademark per class, clearly stating which trademark and application serial are subject to the opposition coupled with evidence and legal grounds that you think the trademark is objectionable, if granted, will be detrimental to your legal rights and interests.
The earliest point of time you can file an objection is the one immediately after the opposed mark has been published in the Industrial Property Official Gazette - Volume A (see a picture below) and the latest is before the NOIP issues its decision on grant of protection. As such, you will have at least 9 months to file an objection or maybe even much more depending on whether the examination progress by the NOIP of the opposed trademark application is timely or delayed.
What are the opposition procedure and handling thereof?
Upon receipt of an opposition, the NOIP will issue a notice (first time) addressing to the applicant (the opposed party), notifying that his/her as-filed trademark application is opposed, and requesting him/her to send back his/her counter-opposition within one (01) month from the date of notice of opposition
Next, after receiving the opposed party's reply to the objection by the opposing party, depending on case by case basis, the NOIP may issue another notice (second time) with feedback from the opposed party addressing to the opposing party, demanding the latter to respond in a period of one (01) month
Finally, the NOIP will consider and handle the opinions presented by the opposing party and opposed party based on the actual documents, evidence and arguments. Upon the expiry of the time limit for substantive examination of the opposed mark, the NOIP shall notify the result of the opposition settlement together with the result of substantive examination of the opposed trademark to the opposing party.
Only in very complex cases, especially with respect to the dispute involved in the question who is entitled to register the opposed trademark (also known as the right to register under Article 87 of the IP Law3), the NOIP may issue a notice requesting the opposing party to initiate a civil lawsuit before a court and will suspend its substantive examination and opposition settlement as soon as its receipt of a copy of a notice of acceptance by the court and the NOIP would only return to the case after receiving an effective judgment decided by the court.
Depending on the nature and complexity of the opposition, the NOIP may also hold a direct dialogue between the opposing party and the opposed party at its own disretion or based on the request for direct dialogue made by both of the opposing party and opposed party.
Legal grounds commonly invoked by the opposing party
Any opposition must be accompanied by a legal basis with evidence, documents proving the reason for opposition made by the opposing party to be accepted. The following are 3 main types of legal bases that are commonly used in practice:
1. The opposed trademark does not satisfy the Condition 14 – inherent distinctiveness - (eg. descriptive, deceptive, deceptively misdiscriptive) in violation of Article 73 & 74 of the IP Law; or
2. The opposed trademark does not satisfy the Condition 2 - conflicting with a prior trademark (filed earlier or previously registered) or conflicting with other IP rights such as copyright, industrial designs, widely used and recognized trademark, or well-known trademark in breach of Article 6(3)(a), Article 74(2)(g), 74(2)(i) or 74(2)(e) of the IP Law; or
3. The opposed trademark is filed by applicant without entitlement, that is, he/she does not have the right to register, or is filed in the form of bad faith filing in violation of Article 87 of the IP Law.
Should you be more interested, please refer to our previous opposition cases represented by Bross & Partners, namely in the successfully opposition case "Vinacafé vs. Vinamorning Café"5, or in the successfully counter-opposition cases "The Body Shop vs. the Beauty Shop"6 and "Burger King vs. King ice cream7".
1 Article 112. Third party opinions on the grant of protection titles
As from the date an application for registration of industrial property is published in the Official Gazette of Industrial Property up until prior to the date of issuance of a decision on grant of a protection title, any third party shall have the right to express an opinion to the competent State administrative body for industrial property rights on the grant or refusal to grant a protection title for such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information.
3 Article 87 Right to register marks
1. Organizations and individuals shall have the right to register marks to be used for goods such
organizations or individuals produce or for services such organizations or individuals provide.
2. Any organization or individual lawfully engaged in commercial activities shall have the right to register
a mark for a product which the latter puts onto the market but which was manufactured by others, provided that the manufacturer does not use such mark for a product and does not object to such
3. Lawfully established collective organizations shall have the right to register collective marks to be
used by the members of the collective organization pursuant to the regulations of the collective
organization on use of collective marks. For signs indicating geographical origins of goods or
services, an organization with the right to register means a local collective organization of [other]
organizations or individuals engaged in production or trading in the relevant locality.
4. Organizations with the function of controlling and certifying quality, properties, origin or other relevant
criteria of goods or services shall have the right to register certification marks, provided that such
organizations are not engaged in production or trading of such goods or services.
5. Two or more organizations or individuals shall have the right to jointly register a mark in order to
become its co-owners on the following conditions:
(a) Such mark is used in the names of all co-owners or used for goods or services which are
produced or traded with the participation of all co-owners;
(b) The use of such mark does not cause confusion to consumers as to the origin of goods or
6. Persons with the registration right stipulated in clauses 1, 2, 3, 4 and 5 of this article, including those
who have already filed registration applications, may assign the registration right to other
organizations or individuals by a written contract, bequest or inheritance in accordance with law,
provided that the assignee satisfies the conditions applicable to persons with the registration right.
7. For a mark protected in a country being a contracting party to a treaty of which the Socialist Republic
of Vietnam is a member, which treaty prohibits the representative or agent of a mark owner from
registering such mark, the representative or agent shall not be permitted to register such mark
without agreement from the mark owner unless there is a justifiable reason
4 Regading the Conditions 1 and 2, see more: http://bross.vn/newsletter/ip-news-update/2-LEGAL-STANDARDS-AND-6-FACTORS-FOR--DETERMINING-LIKELIHOOD-OF-CONFUSION-UNDER-THE-LAWS-OF-VIET-NAM
5 Vinacafé vs. Vinamorning Café: http://bross.vn/newsletter/ip-news-update/Merely-Similar-in-terms-of-Form-of-Expression-May-Suffice-Likelihood-of-Confusion-1567
6 The Body Shop vs. the Beauty Shop: http://bross.vn/ip-practices/lawyer-perspective/Is-The-Beauty-Shop-similar-to-The-Body-Shop
7 Burger King vs. King ice cream: http://bross.vn/ip-practices/lawyer-perspective/Whether-Does-Burger-King-Stop--the-Use-and-Registration-of-King%E2%80%99s-Ice-Cream-1110
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.