Cancellation of a registered mark is a procedure presently available in the 2005 IP Law as amended 2009 of Vietnam in which allowing a third party to request an authority with jurisdiction to cancel or invalidate a registration of mark.
Under the IP Law, a potential claimant may request to invalidate or revoke a certificate of trademark registration on either legal ground applicable for validity termination or for revocation proceeding set out at Section 95 and Section 96 of the IP Law respectively.
National Office of Intellectual Property of Vietnam (NOIP) has jurisdiction, i.e. its Appeal Settlement and Enforcement Department, as an initially required authority, to receive and settle both requests for validity termination or revocation of a trademark registration.
Legal consequence for a trademark registration invalidation/termination is that validity of such registered trademark is declared invalid at the time of the issuance of an effective decision on invalidation/termination. For revocation/cancellation action, a registered mark subject to a valid decision on cancellation shall be deemed void ab initio.
Who May File a Cancellation Action
Since both Sections 95.4 and 96.3 of the IP Law provide for that organizations and individuals shall have the right to request the state management agency in charge of industrial property rights to terminate the validity of protection titles, therefore, it is understood that any third party may request NOIP to invalidate or cancel a protection title/a trademark registration without proving that he/she has his/her interests relating to the mark subject to proposed cancellation or invalidation actions.
Legal Ground for Validity Termination/Invalidation Action
Pursuant to Section 95 of the IP law, a third party has the right to request NOIP to terminate validity of protection title of a registered mark including an internationally registered mark designating Vietnam under the Madrid system in one of the following cases:
- No renewal fee is paid by trademark owner in prescribed time or in grace period; or
- The holder of a registered mark declares relinquishment of industrial property rights over such trademark; or
- The owner no longer exists or the owner is no longer engaged in business activities without having his/her lawful heir. The registered mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination; or
- The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark; or
- The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations.
Legal Ground for Revocation/Cancellation Action
Only 2 scenarios for submission of a cancellation action are accepted by NOIP as provided for in Section 96.1 of the IP Law, namely:
- The applicant for registration has neither had nor been assigned the right to register the trademark; or
- The trademark subject to cancellation action failed to satisfy the protection conditions at the time the protection title was granted
As far as Section 96.1(a) mentioned above is concerned, the phrase “the right to register the trademark” implies to have same meaning as the matter of entitlement for filing an application for registration of a trademark, whereby the same is stipulated in Section 87, particularly:
- Organizations or individuals shall have the right to register marks to be used for goods they produce or services they provide.
- Organizations or individuals lawfully trading in products produced by others shall have the right to register marks for such products, provided that the producers neither use such marks for their products nor object to such registration.
- Collective organizations lawfully established shall have the right to register collective marks to be used by their members under the regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations having the right to register them shall be collective organizations of organizations or individuals engaged in production or trading in relevant localities.
- 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 they are not engaged in production or trading of such goods or services.
- 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:
(i) Such mark is used in the names of all co-owners or used for goods or services which are produced or dealt in with the participation of all co-owners;
(ii) The use of such mark causes no confusion to consumers as to the origin of goods or services.
In compliance with Article 6septies of the Paris Convention regarding the prevention of bad faith filings, Section 87 of the IP Law also further provides that for a mark protected in a country being a contracting party to a treaty which prohibits the representative or agent of a mark owner to register such mark and to which the Socialist Republic of Vietnam is also a contracting party, then such representative or agent shall not be permitted to register such mark unless it is so agreed by the mark owner, except where a justifiable reason is available.
With respect to Section 96.1(b), the validity of a registered mark may be attacked by proving that the trademark subject to cancellation action should have been felt into any of absolute refusal grounds or any of relative refusal grounds at the time the protection title was granted.
Absolute Refusal Grounds Likely Applicable for Section 96.1(b) Cancellation Action:
- Signs identical with or confusingly similar to national flags or national emblems.
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, sociopolitical-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
Relative refusal grounds Likely Applicable for Section 96.1(b) Cancellation Action:
- Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
- Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
- Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
- Signs describing the legal status and business sector of business entities;
- Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
- Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
- Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
- Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
- Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
- Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
- Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
- Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
- Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.
Statutory Time-limit for Cancellation/Invalidation Action
Statute of limitations for exercising the right to request cancellation/revocation of a trademark registration is five (5) years from the grant date, except where such trademark registration was granted as a result of dishonesty of the applicant.
It is worth noting that since the 2005 IP Law came into effect as from July 1, 2006, thus grounds for revocation of a trademark registration provided for in this law shall be not applicable if that trademark registration subject to a cancellation action had been granted before July 1, 2006.
Features of Some Types of Most Frequently Used Trademark Cancellation/Invalidation
5-Year Consecutive Non-use Based Trademark Validity Invalidation
- In case where applied-for trademarks are rejected by NOIP because of a likelihood of confusion with an earlier registered mark, a request for partial or whole invalidation of such earlier mark due to 5-year consecutive non-use reason for the purpose of overcoming refusal is commonly rendered by applicants. It is unofficially reported that likely not less 50% of the whole of registered marks over 5 years has never been put into actual use partly or entirely in commerce in Vietnam;
- Initial burden of proof of non-use, i.e. in the form of a trademark non-use investigation report, requisite to the party seeking invalidation at the time of submission can be positively obtained in around 10 business days, conducted by an invedependent agency under the Ministry of Trade and Commerce;
- To avoid possibility of loss of its exclusive right, during the litigation, registrant may proactively usually contact the party seeking validity termination for an amicable settlement, i.e. he consents to registration and use of the mark in question by granting a written consent letter, in return, the opponent agrees to withdraw its invalidation as filed. Kindly note that a written letter of consent issued by the holder of earlier marks against the mark seeking protection is practically accepted by NOIP to surmount a refusal.
Tradename/Widely Used Unregistered Marks Prior Use Right based Cancellation/Revocation
- As tradename is automatically protected in Vietnam without registration, you are able to successfully revoke validity of a trademark registration if the mark subject to proposed cancellation action is confusingly similar with your tradename currently in use provided that the use of registered mark may cause confusion to consumers as to the origin of goods/services;
- Regardless of applying the first to file principle, Vietnam also allows third party to cancel a trademark registration based on prior use based rights of unregistered mark in some limited circumstances. Particularly, said unregistered mark shall be a widely-used and recorgnized one before the filing date of the registered mark
Bad faith Registration Based Trademark Cancellation/Revocation
- Although no specific definitions and regulations on bad faith filings or bad faith registrations are found under the laws of Vietnam, the acts such as “the registrant’s dishonesty” or “the registrant’s deliberately false statement of its right to register a trademark” set out in Section 96.1(a) and 96.3 are practically implied bad faith ones in establishing a trademark right. In these circumstances, bad faith based trademark registrations may be declared void ab initio;
- The crucial factors in demonstrating a bad faith are commonly accepted by NOIP through the weight of evidences around “the registrant is aware of genuine holder’s trademark” as well as “relationship” between the registrant and genuine trademark holder manifested by investment, license or contract relations.