11 Significant Changes in Trademark in the Intellectual Property Law of 2022

Senior Partner Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Trademark (or brand name often called by consumers) is a form of protection for commercial indications of goods and services specified in the IP Law. In order to ensure compliance with international commitments after joining new-generation free trade agreements including the CPTPP, EVFTA and RCEP, Vietnam has revised quite a lot of provisions with respect to IP subject matters,[1] especially including trademarks in the Third Amendment to the 2005 IP Law (the “2022 IP Law”) just passed by the National Assembly on June 16, 2022. The 2022 IP Law replaces the 2009 First Amendment to the 2005 IP Law and the 2019 Second Amendment (the “2005 IP Law”). Bross & Partners is pleased to help you update 11 major changes in trademarks in Vietnam.

1.      Well-known Mark

The 2022 IP Law modifies the definition of a well-known trademark, ie. Article 4.20 stipulates that a well-known trademark means the trademark is widely known by the relevant sectors of the public in the territory of Vietnam in replace with the 2005 IP Law’s same definition stating that a well-known mark is the trademark widely known by consumers throughout the territory of Vietnam. This new definition is to conform to the eight criteria for recognition of well-known marks under Article 75 as well as to conform to the provisions on protection of well-known trademarks imposed the EVFTA, CPTPP, TRIPs and the 1999 WIPO’s Joint Recommendation   Concerning Provisions on the protection of well-known marks.

In a bid to narrow the possibility of overprotection of well-known trademarks in the 2005 IP Law, the 2022 IP Law additionally provides for that the point of time when the earlier trademark has become famous must take place before the filing date of an applied-for trademark.

To avoid the possible debates during the practical applicability of Article 75 stating that all of 8 criteria for determining a well-known mark must be met, the 2022 IP Law adds a new rule saying that the recognition of a trademark as well-known might be determined on several or all of 8 criteria.[2]

2.      Adding Sound Marks and Amending General Requirements for Registrable Marks

The 2005 IP Law only protects signs that are visible and have trademark functions. To comply with the commitment to protect invisible marks stipulated in the CPTPP, the 2022 IP Law supplements sound signs as new registrable subject matters if they have the same distinctiveness as visible signs. Hence, Article 72.1 provides for that a trademark is a visible sign in the form of letters, words, pictures, figures, including three-dimensional shapes or a combination thereof, represented in one or more colors or is a sound sign represented in graphical representation. Kindly note that for an application for registration of a sound mark, the reproduction of an applied-for mark requires an audio file along with a graphical representation of such sound.[3]

3.      More Grounds for Refusal of Three-dimensional Trademarks

To surmount the limitations of the 2005 IP Law that there is no ground to refuse three-dimensional shapes based on the functionality doctrine,[4] the 2022 IP Law additionally includes grounds for refusal applicable for 3D marks. Particularly, an applied-for 3D mark solely containing a three-dimensional shape spontaneously arising from the goods, or merely consisting of the shape of the commodity necessary for obtaining technical effects shall be excluded from protection. Moreover, an applied-for 3D mark is the generic configuration of the goods, or is the common configuration of a part of the goods, or the generic configuration of the packaging or of the container which has been used continuously and widely before its filing date shall be considered as non-distinctive. In addition, a three-dimensional mark applied for registration containing the shape of the commodity that makes the commodity of substantial value shall be deemed as lack of distinctive character.

4.      Conflict Between an Applied-for Trademark and Expired Trademark Has Been Resolved?

According to the IP Law 2005, a trademark applied for registration must be refused by Article 74(2)(h) if it is identical with or confusingly similar to another person’s trademark which has been registered for identical or similar goods or services, the registration certificate of which has been expired for no more than 5 years. In this case, such earlier expired trademark that is used as ground for refusal of later filed trademark is also known as zombie trademark.[5]

However, the good news is that 5-year time limit for preventing the later filed trademark from protection has been shortened to 3 years (instead of 5 years under the old provision) according to the 2022 IP Law. More importantly, the law also suggests that applicant of the later filed trademark may overcome this ground of refusal by submission of a request for validity termination of such earlier expired trademark is the same as a request for validity termination of a validly registered trademark.

5.      Provisional Suspension of Trademark Examination

No provision under the 2005 IP Law to permit the applicant or VNIPO to suspend examination and processing of a rejected trademark due to a likelihood of confusion with a previously registered trademark or a registered trademark whose validity has been terminated for not more than 5 years. As a first time, the 2022 IP Law allows the applicant to actively file a request to suspend examination of such rejected trademark so that he/she may carry out a procedure for invalidation of both types of previous trademarks. The VNIPO will return to handle he rejected trademark application after it has received the outcome of procedure for termination of validity.

6.      Complaints and Settlement of Complaints in the by-law Documents up to the Law

Provisions on complaints and settlement of complaints in industrial property procedures concerning trademarks such as applications for establishment of rights, renewal, amendment, termination of validity, or cancellation of validity of trademark registration, which are currently being subject to the revised Decree No. 103/2006/ND-CP, have now been brought into the law under Article 119a. Article 119a stipulates that only individuals and organizations with rights and interests directly relating to decisions or notices with respect to the above-mentioned industrial property procedures have the right to complain or initiate lawsuits at a competent court according to the law on complaints and the law on administrative procedures. A new point to note is that for complaints related to the right to register or contents subject to re-examination, the time for re-examination, or the time for amendment and supplementation, shall not be included in the time limit for complaint settlement.

7.      Two Mechanisms for Trademark Opposition

The 2022 IP Law adds for the first time a new mechanism allowing a third party to oppose a trademark application in addition to third party’s written opinion kept unchanged. It is worth noting that while the third party’s written opinion would only serve as a reference source for examining a trademark application, it seems that legislators seek to develop an additional mechanism to oppose the trademark application as an independent new opposition procedure (not a reference source for the processing of a trademark application). Unlike a third party’s written opinion that can be filed any time calculating from the point of time an applied-for trademark is published in the Industrial Property Official Gazette until prior to the date of decision on grant of title of protection, any third party may only file an opposition to a trademark application within 5 months since the publication date of the trademark application.

8.      More Legal Grounds to Oppose Trademarks Due to “Bad Faith”

The 2022 IP Law, for the first time, legalizes the act of “bad faith” into a legal ground allowing a third party to oppose a trademark application. Furthermore, the 2022 IP Law also supplements other legal grounds to refuse grant of a protection title such as the applicant's lack of right to register the mark, or any trademark registration application as revised or modified which has changed the nature of originally filed trademark, or there are 2 identical/similar trademarks applying for registration for identical/similar products filed by 2 different applicants having the same priority date/filing date and both meet the same requirements for protection but these two applicants could not come to an agreement to withdraw either of those applications.

9.      More Legal Grounds for Termination of Validity or Validity Cancellation

The 2022 IP Law adds 2 more grounds for termination of validity of a registered trademark if (1) such registered trademark has become the common name (generic) of goods or services bearing that registered trademark; and (2) the use of the protected trademark for goods or services by the owner of the trademark or by a person authorized by the owner misleads consumers as to the nature, quality or geographical origin of such goods or services.

Also, there are two new legal grounds for revocation of registered trademark in the 2022 IP Law: (1) a registered trademark may be partly or entirely cancelled if the applicant for that trademark is determined as having bad faith; (b) an applied-for trademark as revised or modified has changed the nature of originally filed trademark.

10. Revising the Definitions of Use of Trademark and Parallel Import

The 2022 IP Law does not consider circulation as an act of using the mark anymore but adds the act of transporting goods bearing a protected trademark as an act of use of the trademark, specifically the 2022 IP Law defines acts of selling, offering for sale, advertising, displaying, storing for sale, transporting goods bearing a protected trademark is one of three types of acts of use of a trademark.

The 2022 IP Law explains more coherently the act of parallel import included in the 2005 IP Law, specifically, it stipulates that the circulation, importation, and exploitation of the utility of a product has been put into the market including foreign market by the owner, or whoever is licensed to the right to use it, including the transfer of the right to use under a compulsory decision (compulsory license), or whoever has the right of prior use.

11. Counterfeit Trademark Goods

The 2022 IP Law expands the scope of determining acts of production and sale of counterfeit trademark goods, specifically acts of forging stamps and labels containing signs identical or similar to the extent that it is difficult to distinguish from the registered trademark used for the same item of goods without the trademark owner’s permission

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, domain name, copyrights, patents, plant varieties.

Should you have any query, please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.