Generally speaking, trademark opposition systems are available in almost countries’ trademark laws, whereby they bestow on third parties the opportunity to oppose the registration of an applied-for trademark in a definite period of time prescribed by the applicable laws.
Unlike some countries’ trademark laws, namely United States of America, Singapore, Thailand, China, or other jurisdictions where a trademark opposition is frequently started only after ex officio examination has been completed without refusal raised and that trademark has been published for opposition purpose, the 2005 IP law of Vietnam as amended in 2009 (the “IP Law”) and guiding regulations thereof provide for that a request for opposition of a pending trademark shall be submitted before the National Office of Intellectual Property of Vietnam ( the "NOIP") issues its decision of acceptance of protection.
Time-limit for Opposition
While trademark opposition period in most jurisdictions is typically 60 days or 90 days, the same in Vietnam is very long or up to at least 09 months. Under the prevailing laws of Vietnam, as from the date an application for registration of a trademark is published in the Official Gazette of Industrial Property up until prior to the date of issuance of a decision granting a protection title, any organization or individual shall have the right to oppose an applied-for mark before the NOIP.
Kindly note that separately for international registrations of mark designating Vietnam, at present, no re-publication of those marks is available in Vietnam, however, from our own experience, a time limit for opposition submission is deemed to start from the date of the WIPO Gazette until prior to the date on which Vietnam, as a designated country, must notify the WIPO of its ex officio examination result.
Who is Eligible for Filing an Opposition
As provided in Article 112 of the IP law, any third party shall have the right to express an opinion to the NOIP on the grant or refusal to grant a protection title for such application 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. Accordingly, any organization or individual has the right to oppose a pending trademark without necessarily requiring that he/she be an interested party or aggrieved party.
Opposition Proceedings in Brief
An opposition by third party shall be deemed to be an information source during the process of dealing with applications for registration of that mark.
The NOIP shall, within the time-limit of one month from the date of receipt of a written opposition by a third party, notify such opposition to the applicant and fix a further time of a maximum of one month for the applicant to provide its opinion in reply.
Upon receipt of the counterstatement in reply from the applicant, and if the NOIP considers it necessary, the NOIP shall notify the counterstatement by the applicant to the third party and fix a further time of a maximum of one month from the date of that notice for the third party so that the latter provides its additional opposition in reply [second opposition].
The NOIP shall review the opinions of both the third party and the applicant on the basis of the evidence and arguments provided by those parties and on the basis of the data in the application. In the event that NOIP considers that the opinion of the third party is unfounded, it need not notify such opinion to the applicant, but must notify the third party that it refuses to consider the opinion of the third party and must specify its reasons.
In case that the opinion of the third party relates to the entitlement for registering a mark, and if the NOIP is unable to confirm whether or not such opinion is founded or unfounded, NOIP shall notify the third party to institute court proceedings to resolve the matter.
If within a time-limit of one month from the date of such notice, the third party does not notify the NOIP that the third party has instituted court proceedings, then the opinion of the third party shall be deemed to have been withdrawn. If the NOIP is in fact notified by the third party that the latter has instituted court proceedings, the NOIP shall suspend examining the application to await resolution of the dispute by the court. After receipt of the court's decision, the examination of the application shall continue in conformity with the court decision.
On the case-by-case basis, the NOIP may, if it considers it necessary and if the parties so request, organize direct discussions between the third party and the applicant in order to clarify the matters raised in their opinions.
The time taken for the applicant to provide an opinion in reply to the opinion of the third party shall not be included in the time-limit stipulated for the NOIP to conduct the relevant procedures.
Legal Grounds in Support of Opposition
As Vietnam examines a trademark based on both absolute and relative refusal grounds set out in Articles 73 and 74 of the IP Law respectively, any of these grounds may be used by opponent during opposition
Relative refusal grounds based opposition comprises, inter alia, such situations as an applied-for mark is identical or confusingly similar with other person’s earlier pending or registered mark which has been filed or registered for identical or similar goods/services, or that mark is deemed generic, or that mark is 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, or such mark is 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.
Opposition on the basis of absolute refusal grounds consist of, among others, such scenarios as an opposed trademark is merely descriptive, non-distinctive characters as a trademark, or may cause misunderstanding or confusion or deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods/services.
In addition to the above, Vietnam also allows third party to oppose a trademark application based on the prior use-based rights of unregistered mark even though Vietnam adopts the first-to-file principle. Particularly, a third party may successfully defeat applicant’s application for registration of a mark if the former substantiates that he has established his prior rights of unregistered mark under one of the following grounds:
unregistered mark is a well-known mark within the definition of Articles 4(20) and 75 of the the IP Law; or
(b) unregistered mark is a widely used and recognized one in the territory of Vietnam before the filing date of the opposed mark; or
(c) the applicant was acting in a dishonest manner while applying for registration (similar to the concept of bad faith provided in the Paris Convention).
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