ANT Lawyers is a Vietnam-based law firm with offices in Hanoi, Danang and Ho Chi Minh City. We provide legal services to domestic and international clients, helping them navigate Vietnam’s legal and business environment with confidence.
Email: ant@antlawyers.vn
Tel: +84 28 730 86 529
Receiving a trademark registration refusal notice in Vietnam can make you feel unpleasant.
But, that is not the end!
You have the right to appeal against trademark registration refusal in Vietnam, and knowing the right steps can make all the difference.
Foreign companies often encounter unexpected complexities when navigating Vietnam’s trademark laws, potentially jeopardizing their brand protection strategy.
Fortunately, understanding the appeals process clearly and methodically can effectively turn around an initial refusal. This guide walks you through the essentials, answering the of appealing a trademark registration refusal.
Who Can Appeal Against Trademark Registration Refusal in Vietnam?
Any trademark applicant, local or foreign can appeal a trademark registration refusal decision issued by the Intellectual Property Office of Vietnam (IP Vietnam). This includes businesses, individuals, and legal representatives authorized by applicants.
What is an Appeal Against Trademark Registration Refusal in Vietnam?
In Vietnam’s rapidly evolving market, protecting your brand’s identity is more crucial than ever. TheVietnam trademark opposition proceduresserve as a vital legal mechanism for preventing unauthorizedtrademark registrationsthat could harm your business. With the shortened opposition timeframe under Decree 65/2023/ND-CP, businesses must be more proactive in monitoring and challenging conflicting trademarks.
10 Essential Insights into Vietnam Trademark OppositionProcedures for Brand Protection
This article provides a brief guide to Vietnam trademark opposition procedures. Whether you are a business owner, an IP attorney, or a startup looking to safeguard your brand, this guide will help you navigate the trademark opposition landscape effectively.
It usually takes a long time and attempts for your company to gain the trust and belief from customers on your goods and trademark. However, if there is any other same trademark of the same goods like yours, it will easily make customer mistake or confuse and lead many damages to your company such as distinguishing capacity, losing reputation and sale decline.
Cancellation Against of Trademark in Vietnam
In fact, many international companies after co-operating with domestic companies to distribute or sell good, find that co-operators steal their trademark by registered trademark protection in National offices intellectual property. Because trademark is protected independently in each nation, it is easy for violators to do steal trademarks.
To protect your rights and benefits, you should request Vietnam IP authority to cancel violated trademark. With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers would like to support you in cancelling against of trademark in Vietnam as follows:
Cancellation of Trademark in Vietnam
Under the Article 96 of the Law on Intellectual Property of Vietnam (IP Law), a certificate of trademark registration may be cancelled wholly or partly, by any third party’s request.
The applicant may request to the National Office of Intellectual Property (NOIP) in written form to cancel protection titles in the cases specified provided that they pay fees and charges.
Period for Filing Request of Cancellation Against of Trademark in Vietnam
To request cancellation of a trademark due to the Applicant’s bad faith: the period for lodging such a request is the whole term of a Protection Title.
To request cancellation of a trademark due to other legal reasons: the period for lodging such a request is within 5 years as from the granting date.
The Cases for Cancellation of Trademark in Vietnam
A certificate of trademark registration may be cancelled wholly or partly, by any third party’s request, in the following cases:
The registration applicant has neither had nor been assigned the right to register an invention, industrial design, layout-design or mark;
The subject matter of industrial property fails to satisfy the protection conditions at the time the protection title is granted.
Required Documents for Cancellation of Trademark in Vietnam?
Proofs (if any);
Power of attorney;
Written justification of the reason for request (clearly stating the serial number of the protection title, reason, legal grounds, contents of the request for termination or Cancellation of part of or the entire protection title) and relevant documents.
Time and Procedures for Cancellation of Trademark Protection?
In case a request for cancellation of trademark protection title is made by a third party, the NOIP shall notify in writing the third party’s opinions to the protection title holder, setting a time limit of two months from the date of notification for the trademark protection title holder to respond.
After considering opinions of the parties, the NOIP shall issue a decision on cancellation of part of the entire protection title or notify its refusal to cancellation the trademark protection title.
If disagreeing with the NOIP’s decision on handling of the request for Cancellation of the trademark protection title, the requester or an involved party may lodge a complaint about that decision or the relevant notice.
A decision on cancellation of a trademark protection title shall be published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within two months from the date of its signing.
Expanding into Vietnam’s thriving market can be a rewarding venture, but protecting your brand is vital. Vietnam operates under a first-to-file trademark system, which can leave your business vulnerable to opportunists filing trademarks similar to yours, risking brand dilution and customer confusion.
Trademark opposition in Vietnam provides a crucial legal avenue to safeguard your intellectual property. Managed by the National Office of Intellectual Property (NOIP), this process allows third parties to challenge trademark applications before registration. For foreign businesses, this mechanism is essential to counter bad-faith filings and protect well-known trademarks, even if unregistered in Vietnam.
The process begins with filing an opposition within five months of the trademark's publication in the Industrial Property Official Gazette. Grounds for opposition include conflicts with existing trademarks, bad faith, lack of distinctiveness, or public interest violations. After filing, the NOIP reviews submissions, notifies applicants, and examines arguments before issuing a decision.
Navigating language barriers, legal complexities, and adhering to procedural deadlines are common challenges. Engaging experienced legal counsel is recommended to ensure successful outcomes. Trademark opposition is a critical tool for securing your business’s legacy in Vietnam’s competitive market.
Trademark is a type of
asset of individual and organization. To be officially recognized as an owner
of that trademark, the applicant needs to submit the trademark registration
dossiers to National Office of Intellectual Property in Vietnam (NOIP), pay the
examination fee and certificate issuance fee to receive the trademark
certificate.
The trademark owner needs
to have the consciousness of protecting the trademark certificate. However, if
unfortunately, the
trademark certificate is misplaced, lost or damaged, torn, stained or faded
out that it can no longer be used, the trademark owner may submit the dossier
to NOIP to request for regranting the trademark certificate.
The specific required
documents for re-granting the trademark certificate are:
-The declaration for
regranting the trademark certificate;
-01 mark specimen;
-Power of attorney (if
submit the dossiers via IP agent).
NOIP will consider the
dossier within 01 month from the date of submitting. In case the dossier
satisfies the provisions of law, NOIP will issue the decision to regrant the
trademark certificate and record into the National Register of Industrial
Property. The information in the duplicate version of the trademark certificate
will present sufficiently the information in the first-granted trademark
certificate and attached with the phrase “regranting version”.
In case of request for
regranting the trademark certificate does not meet the provisions of law, NOIP
will issue the denied decision and clearly sates the reasons.
If the client needs any
other information or requires for further advice, our IP
attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be
available for service.
ANT Lawyers in a law firm in Vietnam, recognized by
Legal500, IFLR1000. We are an exclusive Vietnam member of Prea Legal, the
global law firm network covering more than 150 jurisdictions. The firm provides
a range of legal services to multinational and domestic clients. For advice or
services request, please contact us via email ant@antlawyers.vn, or call us +84
24 730 86 529.
In the progress of world
integration, goods trading activities between countries and regions are
becoming more and more developed, then the matters related to intellectual
property is gradually being focused.
The individuals and
organizations are aware of the benefit of registration the intellectual
property subjects. In particular, they registered internationally for their
trademark when widen their business abroad. After that, when trademark owner
might wish to assign that granted certiicate trademark to others for economic
or other reasons.
What
is the assignment of international trademark process?
In this case, international
trademark was registered under Madrid agreement and Madrid Protocol,
established under decision on acceptance for protection or international
registration protected in Vietnam issued by National office of Intellectual
property Vietnam (NOIP). Accordingly, the trademark application originated from
Vietnam submitted to International office via NOIP. Thus, trademark owner whom
wish to assign or register their trademark internationally pursuant to Madrid
system would submit application via NOIP. However, for the application which
appointed in the country which is the member of Madrid agreement, parties may
request the international office to conduct the assignment procedure.
When conducting the
assignment procedure via NOIP, applicant needs to prepare following documents:
-The copy of
international trademark certificate in Vietnam;
-The copy record of assignment
to the local trademark;
Besides, other documents
will be required based on specific cases.
If Client needs any other
information or requires for further advice, our IP
attorney in Vietnam at ANT Lawyers, the IP agent in Vietnam will be
available for service.
ANT Lawyers is a law firm in Vietnam located in the
business centers of Hanoi, Danang, Ho Chi Minh city. We provide convenient access
to our clients. Please contact our lawyers in Vietnam for advice via email
ant@antlawyers.vn or call our office at +84 28 730 86 529.
Of the many reasons to
hire a trademark lawyer for a Trademark (TM), here are few...
-The process can be
time-consuming - particularly conducting an exhaustive search of existing
trademarks and handling any office actions that come back. Experienced
trademark and IP lawyers have successfully submitted many trademark
applications, so they will be able to efficiently file your application,
allowing you to focus your energy on other company matters.
-A comprehensive search
of trademarks often must go beyond the USPTO’s (already difficult/confusing to
search) Trademark Electronic Search System. This would be extremely difficult
to accomplish without an attorney and/or professional search. It is much more
cost-effective to hire a lawyer up front, than to hire one to rectify problems
when you either get an office action or realize your protection wasn't as
robust or complete as you'd understood.
-A trademark lawyer can
help you frame your application in the best possible way (by selecting
appropriate categories/drafting how it is being used/deciding whether to apply
for plain text or logo protection-among many other considerations), making it
more likely that your application will be granted on the first try and obtain
the maximum possible protection for your company.
-Finally, a trademark
or IP lawyer can help you after the process is over to help you craft a
long-term IP strategy.
Source: Quora
If you are looking for
a high-quality, experienced lawyer to work on trademark issues for your
company, you should check out ANT Lawyers to get in touch with some of the
best. ANT Lawyers - IP services in Vietnam
is supported by a team of experienced patent, trademark, design attorneys with
qualification and skills handling full range of legal services relating to
intellectual property in Vietnam.We
have specialized in the preparation and registration of patents, trademarks and
designs for our clients.
We assist our clients
in all steps of the prosecution phase of IP management.
Properly used and
promoted, a Trademark may become the most valuable asset of a business.
Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication
of origin of the goods as well as an indication of quality.
It is also essential to
obtain trademark registration for
the business name/trade name under the Trademarks Act. Registration of a
company or business name under the Companies Act does not in itself give
protection against others who might commence using identical or similar marks.
Use of TM, SM and ®
symbols
'TM' stands for
Trademark and 'SM' stands for Servicemark. The use of TM and SM symbols
notifies the public that the company is claiming exclusive ownership of the
trademark and can generally be used by one who has filed a trademark
application.
The ® symbol, can be
used only once the trademark is registered and the registration certificate is
issued. Also, you may use the registration symbol only in connection with the
goods and/or services in respect of which the trademark is registered.
The registration process
is the same for both trademarks and servicemarks.
ANT Lawyers - A Law firm
in Vietnam is supported by a team of experienced patent, trademark, design
attorneys with qualification and skills handling full range of legal services
relating to intellectual property rights in Vietnam. We have specialized
in the preparation and registration of patents, trademarks and designs for our
clients. Please contact our lawyers in Vietnam for
advice via email ant@antlawyers.vn or call our office at +84 28 730 86 529
Trademark is a type of
asset of individual and organization. To be officially recognized as an owner
of that trademark, the applicant needs to submit the trademark registration
dossiers to National Office of Intellectual Property in Vietnam (NOIP), pay the
examination fee and certificate issuance fee to receive the trademark
certificate.
The trademark owner
needs to have the consciousness of protecting the trademark certificate.
However, if unfortunately, the trademark certificate
is misplaced, lost or damaged, torn,
stained or faded out that it can no longer be used, the trademark owner may
submit the dossier to NOIP to request for regranting the trademark certificate.
The specific required
documents for re-granting the trademark certificate are:
-The declaration for
regranting the trademark certificate;
-01 mark specimen;
-Power of attorney (if
submit the dossiers via IP agent).
NOIP will consider the
dossier within 01 month from the date of submitting. In case the dossier
satisfies the provisions of law, NOIP will issue the decision to regrant the
trademark certificate and record into the National Register of Industrial
Property. The information in the duplicate version of the trademark certificate
will present sufficiently the information in the first-granted trademark
certificate and attached with the phrase “regranting version”.
In case of request for
regranting the trademark certificate does not meet the provisions of law, NOIP
will issue the denied decision and clearly sates the reasons.
If the client needs any
other information or requires for further advice, our IP attorney in Vietnam at
ANT Lawyers, the IP agent in Vietnam will be available for service.
What material is
required to register a trademark?
The two main things you
need to register for a trademark are
money and a little homework. The homework comes into play when selecting your
mark. You need to first conduct a trademark search to assure it’s available for
use. After doing the search, you need to ensure that you have a mark that can
be protected in the first place. Not all marks are may be protected, for
whatever reason, whether another owner has a legal claim to it or because it is
too weak, or anything in between. In your application make sure to include (as
per the USPTO website):'
A completed application
form submitted in hard copy or electronically as noted above.
The appropriate fee.
A drawing of the mark to
be registered - this is true even if the mark is just an unstylized word.
Specimens of use of the
mark if the application is based on actual use in commerce.
Although it’s not
required, it’s highly recommend hiring an IP attorney to guide
you through this process. There are many requirements, strict deadlines, and
non-refundable filing fees, all in a system that is not forgiving in case you
mess up. An attorney will do the research to make sure the mark isn't already
taken, ensure the filing gets accepted by the USPTO, and provide sound legal
advice throughout the whole process.
How can I check if a
quote is trademarked or copyrighted?
You will want to conduct
an extensive search. Sure, there are free and “easy to use” options, but keep
in mind, IP searches are not as easy as you think. Phrases or quotes aren’t as
common under copyright protection, but
as other answers have indicated, it does happen. Most of your concern will
center on your ability to coin the phrase so that you can sell products or
services.
It’s a good idea to do a
preliminary search, but before you use the phrase to make money then you need
to be POSITIVE that it doesn’t belong to anybody else. Your best bet is to hire
an IP attorney to help you double check through extensive researches. These
guys are professionals when it comes to researching and reviewing trademarks
and copyrights.
If you are interested in
finding an IP attorney in Vietnam, let
ANT Lawyers help. We can connect you with a skilled lawyer that is much more
affordable than a traditional law firm attorney. Check us out and please get in
touch if you’d like more assistance. Best of luck!
In the progress of world
integration, goods trading activities between countries and regions
are becoming more and more developed, then the matters related to intellectual
property is gradually being focused.
The individuals and
organizations are aware of the benefit of registration the intellectual
property subjects. In particular, they registered internationally for their
trademark when widen their business abroad. After that, when trademark owner
might wish to assign that granted certificate trademark to others for economic
or other reasons.
What is the assignment
of international trademark process?
In this case, international trademark was registered
under Madrid agreement and Madrid Protocol, established under
decision on acceptance for protection or international registration protected
in Vietnam issued by National office of Intellectual property Vietnam (NOIP).
Accordingly, the trademark application originated from Vietnam submitted to
International office via NOIP. Thus, trademark owner whom wish to assign or
register their trademark internationally pursuant to Madrid system would submit
application via NOIP. However, for the application which appointed in the
country which is the member of Madrid agreement, parties may request the
international office to conduct the assignment procedure.
When conducting the
assignment procedure via NOIP, applicant needs to prepare following documents:
-Declaration for international trademark
assignment;
-Declaration of international office;
-The copy of international trademark certificate
in Vietnam;
-The copy record of assignment to the local
trademark;
Besides, other documents
will be required based on specific cases.
If Client needs any
other information or requires for further advice, our IP attorney in Vietnam at
ANT Lawyers, the IP agent in Vietnam will be available for service.
According to Vietnam law on intellectual property, when detecting
the trademark infringement act, the trademark owner has the self-protection
right includes (i) apply technological measures to prevent acts of trademark infringement (ii)
request organization or individual who commits an act of trademark infringement
of the holder to terminate such act, make a public apology or rectification,
and compensate damages; (iii) request the competent authority to handle with
acts of trademark infringement in accordance with the provisions of laws.
Firstly, to apply the technological measures to prevent acts of
trademark infringement measure, infringed party may give our the information
related to original of emergence, trademark certificate, protection and
duration scope and other information related to the right of trademark owner in
order to inform that the infringed trademark are under protection warn the
infringing party not to infringe. Besides, the owner of infringed trademark may
use the technical means or measures to mark, identify, distinguish and protect
the infringed trademark.
Secondly, the owner could also request organization or individual
who commits an act of trademark infringement of the holder to terminate such
act, make a public apology or rectification, and compensate damages. In
particular, the trademark owners may themselves or authorize to individual or
organization, IP attorney in Vietnam to
send to the infringed party to stop the the infringement by indicating the
information regarding origin of infringement, trademark certificate, protection
scope, protection duration and set a reasonable period of time for the
infringer to terminate the act of infringement. In addition, depending on the
case and level of infringement, the written request will bear different
content. It can be said that this is a prior-should-use measure before taking
other measures including application of technological measures. If the
violating party cooperates and stops the infringement, it will save time and
money of both parties when not taking other stronger measures.
Thirdly, owner of trademark could request the competent authority
to deal with acts of trademark infringement in accordance with the provisions
of laws. When the trademark owner sends the request as mentioned above to
infringing party, and, the violated party does not cooperate and continue the
infringement, infringed party may sent a request to competent authority with
the information such as: date of making the request; name and address of
infringed party or their legal representative; name of receiving request
authority; name and address of infringing party; name and address of the
suspected violator in the case of request for temporary cessation of customs
clearance for exports or imports suspected of infringement; brief information
of infringed trademark and infringement; proposed measures to handle
infringement; documents and evidence accompanying the request. Depending on the
seriousness of the infringement, the petitioner may submit a request to the
relevant authorities to apply administrative, civil, criminal or customs
measures. Be noted that if the request is sent to custom authority for
temporary cessation of customs clearance for imports or exports suspected of
infringement, it is required to provide the additional information on the mode
of import or export, country of exportation, mode of packaging, the lawful
importer or exporter, features of lawfully imported or exported goods for
distinction from infringing goods.
Overall, it is important to protect the intellectual property
rights. Further, engaging with IP attorney in Vietnam will help the process
efficiently from registration, managing the intellectual properties, protecting theintellectual property from
infringement, and handling the disputes against theIP violators in
Vietnam through administrative measures, civil litigation or even criminal
prosecution.
After filing of the application for a trademark registration, applicants might wish to transfer theirs application to others. There
are lots
of reasons for this but most of them derives from practical business
activities and development needs of market, and society. For instance, two subjects transfer the
application to each other for profit purpose; individuals want to set up an
enterprise in the future and register a trademarkas individualsand then transfer the
application to the legal personto get early the priority date; at the
moment,individuals
are unqualified to be applying in applicants’
s name then individuals
have others to do in application, in the appropriate time, and when the individuals are
qualified according to statutory, they would
implement the procedure of transfer the application.
Transfer of application
for a mark registration is implemented on voluntary basis between the
parties or decision of the competent authority and
shall be presented in the form of a written contract. However, owner of application is only allowed to
transfer applicationat the following times: before National Office of Intellectual Property of Vietnam makes a
decision on refusing
to accept the application, decision on issuing
or refusing to issue protection
titles. If one of the parties in contract transfers application for transfer
registration after the time
mentioned above, that application shall not be accepted.
Necessary documents when implementing the procedure of
transferof
application for a trademark
registration include:
-Transfer
contract: Contract must show name and address of transferor and transferee; the number
of transfered
applications orsufficient
information to determine that application;
-
-Declaration for
registration of transfer;
-
-Power of
attorney (if authorized to
industrial property agent i.e. ANT Lawyers).
According
to regulations, duration of examining applicationfor transferregistration
is 2 months from the date
of submission the application. However, this duration can be
faster or slower, depending on the workload of National Office of Intellectual Property at
the time the application is examined.
