How to overcome a trademark refusal in Vietnam?

Table of contents

1. Trademark protection system in Vietnam.
2. Several types of trademark refusals, and ways to overcome them in Vietnam.
3. What EU SMEs should do to avoid or overcome a trademark refusal in Vietnam?

 

1. Trademark protection system in Vietnam.

In the Global Innovation Index 2021 (a yearly report published by the World Intellectual Property Organization (WIPO) providing data, analysis, and trends related to innovation), Vietnam ranked 44^th out of 132 countries and economies[1]. On 8 November 2021, the WIPO released its annual World Intellectual Property Indicators (WIPI) report, and it contained more positive news regarding Vietnam: The Intellectual Property Office of Vietnam (IP Vietnam) ranked 18^th in the top 20 IP Offices which received the most trademark applications in 2020[2]. Between 2019 and 2021, the country received 162 306 trademark applications (among which 26 728 applications were filed by foreign applicants) and IP Vietnam registered 95 520 trademarks (among which 22 217 registrations were for foreign applicants)[3] [4] [5]. A quick analysis of these statistics indicates that a large number of trademarks did not reach the final stage of registration. This article will help you to understand some of the reasons behind this low registration rate.

It is important to know that IP Vietnam will first perform a formality examination (within 1 month from the filing date), followed by a substantive examination (within 9 months[6] from the publication date) to decide whether a specific sign meets the trademark protection criteria[7]. If the criteria for trademark protection are not met, IP Vietnam will issue an Office Action (OA) which will be notified to the applicant or to the corresponding legal representative in the form of a Notification.

During the first stage of the examination (the formality examination), IP Vietnam may inform the applicant that the trademark application comprises issues regarding the classification and wording of goods/services, or any issue related to the application form. These issues are usually less difficult to overcome (usually a written response suggesting reasonable amendments to the wording of the goods/services that were refused by the examiner, or simply accepting the suggested changes mentioned in the OA, will suffice).

However, during the substantive examination stage, some more complex issues may arise, which will be further discussed in this article.

A response to an OA must be submitted within 2 months (for an OA regarding the formality examination) or 3 months (for an OA regarding the substantive examination) from the date of its signature (the official date mentioned on the document). Should you not be able to file the response within the official fixed deadline, it is usually possible to request a time extension before IP Vietnam (special circumstances may be applicable if the delay is due to a force majeure event).

Keep in mind that all documents issued by or submitted to IP Vietnam must be in Vietnamese, therefore it might be a good option to seek legal advice from a local IP expert before replying to an OA.

Furthermore, for any OA issued by IP Vietnam regarding an international trademark designating Vietnam via the Madrid System (for more information about the Madrid System, please refer to our IP guide here), the response to the OA would follow the same principles that apply to the national trademark application route in Vietnam[8].

What else do you need to know in terms of handling an OA? Keep reading to find out.

Are you an EU small or medium-sized enterprise (SME) or start-up doing, or willing to do, business in South-East Asia? Check out the FREE IP services offered by the South-East Asia IP SME Helpdesk.

 

2. Several types of trademark refusals, and ways to overcome them in Vietnam.

In practice, a trademark application may be refused registration for the whole list of the applied-for goods/services (or only part of them) on the grounds outlined below.

    a)  Trademark refusal issued on absolute grounds

This is the situation where a trademark lacks distinctive character (the main purpose of a trademark is to help consumers to differentiate goods and services that originate from different companies). For example, whenever a trademark describes the goods/services to which they are applied or if it is contrary to public policy or morality.

Should your trademark contain elements that fall into a prohibited category under the Vietnamese law currently in force[9], no arguments would be accepted to overcome the refusal. In other cases, you need to prepare and submit arguments to confirm that your trademark has a distinctive character. The objective is quite straightforward: change the mind of the examiner by submitting arguments and relevant evidence.

    b)  Trademark refusal issued on relative grounds

This is the situation where a trademark is identical or confusingly similar to a prior trademark or to several prior trademarks (also called cited trademarks), to the extent that it creates a likelihood of confusion between such trademarks[10].

Here the main objective of the response to the OA would be to argue that the refused trademark is not similar to the cited trademark(s), and that no likelihood of confusion exists between such trademarks.

Some of the techniques that are commonly used to accompany replies to this type of trademark refusal are detailed below.

• Submitting a Letter of Consent (LOC)[11]

The LOC is a document issued by the owner of the cited trademark, in which they clearly express that the refused trademark is not a threat to their established rights i.e. giving consent and not objecting to the registration and use of the refused trademark. This document needs to be submitted to the examiner by the applicant of the refused trademark.

Currently, LOCs are considered and accepted on a case-by-case basis by IP Vietnam, therefore contacting a local IP expert to analyse the situation beforehand is recommended.

• Requesting the division of a trademark application or removing the refused goods/services

Your trademark may be refused registration for only the part of the list of goods/services that is considered identical or similar to those protected by the cited trademark(s). Requesting the division of your trademark application can be a good solution (one application for the accepted goods/services and another comprising the rest of the goods/services that were refused). The objective is to obtain a smoother and faster application process for the accepted goods/services and, in parallel, file arguments regarding the refused goods/services in the newly created application. Alternatively, you may simply remove the refused goods/services from your trademark application and the registration process will resume.

• Filing a non-use cancellation[12] or an invalidation action[13] against the cited trademark(s)

The goal of these actions is to obtain the removal of the obstacle to your trademark application (i.e., obtaining a cancellation or invalidation of the cited trademark(s)). Such actions may be filed only against registered trademarks and a successful outcome would imply the resumption of the registration process.

 

3. What EU SMEs should do to avoid or overcome a trademark refusal in Vietnam?
    

• Apart from the information listed above, seeking legal advice from a local IP expert in Vietnam is always recommended. Please note that if you are not permanently residing in Vietnam, appointing a specialised legal representative is mandatory for the trademark registration procedure at IP Vietnam. The procedures for registering a trademark in South-East Asia (SEA) differ from one country to another, therefore seeking help from local IP experts is usually recommended when entering any market in this region.
• Conducting a prior trademark search to detect the existence of any trademark that could be cited in an OA is also crucial before you file any trademark application. For more information about trademark searches, check out our article Trade mark search: Why it is important and how to conduct it properly. The SEA IP SME Helpdesk can also handle identical trademark verifications for EU SMEs. This service is free.
• Visit our website at https://intellectual-property-helpdesk.ec.europa.eu/regional-helpdesks/south-east-asia-ip-sme-helpdesk_en  for more information about IP in SEA and subscribe to our Newsletter (here) to receive the latest IP updates in terms of legislation and practice.

The SEA IP SME Helpdesk has also developed and published a Guide to trade mark protection in South-East Asia (here) and Vietnam IP factsheet (here).

The SEA IP SME Helpdesk is a European Commission initiative that provides free, practical IP advice to EU SMEs in South-East Asia. You are invited to send your questions to questionsoutheastasia-iprhelpdesk [dot] eu (question[at]southeastasia-iprhelpdesk[dot]eu) and will receive a reply within 3 working days.

[1] https://www.wipo.int/edocs/pubdocs/en/wipo_pub_gii_2021/vn.pdf

[2] World Intellectual Property Indicators 2021 (wipo.int), p.92

[3]IP Vietnam: Annual Report on Intellectual Property Activities,  Statistics for the 2021 Annual Report on Intellectual Property

[4]Ibid, 2020 Annual Report on Intellectual Property

[5] World Intellectual Property Indicators 2021, p. 126–127

[6]According to the Vietnam Intellectual Property Law – No. 50/2005/QH11 (Vietnam IP law), the prescribed time for substantive examination is no longer than 9 months from the publication date of the application. However, the timeframe may be prolonged to 1.5–2 years in light of the workload at IP Vietnam.

[7]See more at https://www.ipvietnam.gov.vn/en_US/web/english/trademarks

[8] Circular 16/2016/TT-BKHCN, Article 34(a)

[9]See more about the prohibited category in the Vietnam IP Law, Article 73

[10] http://bross.vn/newsletter/ip-news-update/2-LEGAL-STANDARDS-AND-6-FACTORS-FOR--DETERMINING-LIKELIHOOD-OF-CONFUSION-UNDER-THE-LAWS-OF-VIET-NAM

[11]See more about LOCs in Vietnam at https://kenfoxlaw.com/a-letter-of-consent-to-overcome-a-refusal-against-a-trademark-application-in-vietnam/

[12]See more about non-use cancelation in Vietnam at https://abbfirm.com/how-to-use-non-use-cancellation-in-vietnam/

[13] https://vietnampatenttrademark.com/trademark-cancellation-invalidation/