2 Mechanisms for Trademark Opposition in the World

and Vietnamese Trademark Opposition Regime is Like no Other

Email: vinh@bross.vn

A quick look at the mechanisms for trademark opposition in the world through the INTA survey

Trademark opposition[1] is a legal procedure for settling an inter partes dispute mostly available in the countries in the world including Vietnam. Such procedure allows individuals or organizations to submit opinions in a written request addressing to the trademark registration office demanding not to grant registration to an applied-for trademark by the applicant on the grounds that the opposing party believes that if such trademark is registered it will result in violation with the laws or infringement upon the opposing party’s lawful rights and interests.

According to INTA[2], there are two common legal mechanisms for trademark opposition in the world: the pre-registration opposition proceeding and the post-trademark opposition proceeding. They are characterized by the fact that the applied-for trademark is examined by the Trademark Registration Office as to both of the absolute refusal grounds and relative refusal grounds.

The INTA’s survey revealed that through a review of 111 territories, 99 out of which are permitted to submit opposition (objection), and out of such number only 10 nations (Denmark, Finland, Germany, Iceland, Japan, Norway, OAPI, Poland, Sweden and Switzerland) adopt the post-trademark opposition proceeding. In the meanwhile, other countries such as Germany and the European Union (formerly called as Community Trademark and now as EU Trademark) have a pre-registration opposition system, but each EU member state allows to do the post-trademark opposition proceeding under its own national laws. As a result, the involved parties may use both of the two systems.

Also according to INTA, both of the above trademark opposition mechanisms have pros and cons. The advantage of the pre-registration opposition is to offer an early opportunity for stakeholders to protect their legal rights by opposing identical or similar applied-for trademarks submitted by others but its disadvantage is that the opposition process may significantly extend the time limit for the examination, or may be particularly abused by third parties as a tactic to slow down the applicant's registration process. For the post-registration opposition, the advantage is that the application is faster, allowing the trademark owner to start handling the infringement early but the downside is that it can increase the counterfeit goods or impersonation due to the fact that there is little chance that the genuine right holder can oppose the fake trademark before being granted.

Vietnam's close-up trademark opposition mechanism is like no other?

There is no the phrase "opposition" in the Intellectual Property Law. Instead, the opposition is called the delivery of opinion by the third party against the grant of protection title mentioned in Article 112[3] which permits the third party to have opinions about the grant or refusal of grant of protection title of all type of industrial property registration application whose exclusive right arises only on the basis of registration. Thus, in consideration of the nature, either the third person’s opinion or opposition has the same legal meaning as the legal right that the law allows a third party to submit a written request demanding not to grant registration because the opposing party assumes that if the opposed trademark is registered, it will infringe upon his/her legal rights and interests or contrary to the protection standards prescribed by law.

The procedure for opposing trademark applications is mainly mentioned in Circular No. 01/2007 / TT-BKHCN guiding the implementation of Decree 103 / ND-CP of September 22, 2006 detailing and guiding the implementation of a number of articles of the Intellectual Property Law. Circular 01/2007 / TT-BKHCN has undergone 4 revisions under Circular 13/2010 / TT-BKHCN, Circular 18/2011 / TT-BKHCN, Circular 05/2013 / TT-BKHCN, and Circular 16/2016 / TT-BKHCN (hereinafter referred to as "Circular 01/2007").

According to Circular 01/2007, from the date on which the application for trademark registration is published in the Industrial Property Official Gazette until the date of issuance of the decision to grant protection titles, any organization or individual has the right to send a written opinion to the Vietnamese Intellectual Property (now as the “IPO”, formerly as “NOIP”) on entitlement to register, priority right, protection conditions and other matters related to the application for registration of industrial property rights according to the provisions of Article 112 of the Intellectual Property Law. The opponent must pay a fee for settling the objection to the industrial property application as prescribed. A third party's written opinion is considered a source of information for the processing of industrial property registration applications.

In cases that the IPO finds the opinion of a third person grounded, the IPO shall notify that opinion to the applicant and set a maximum time limit of 1 month as counting from the date of the notice to the applicant in writing. After receiving the applicant's feedback, if deeming it necessary, the IPO shall notify the feedback to the third person and set a maximum time limit of one month from the date of notification so that the third party responds in writing to such feedback. After the said time limit, the IPO shall handle opinions of applicants and third parties on the basis of evidence, arguments provided by the parties and documents included in the applications. The third person is also informed of the results of the examination of the respective application.

Where the IPO takes the view that the opinion of a third person is unfounded, it shall not notify that opinion to the applicant, but must notify the third party of the refusal to consider the opinion with clearly stating the reason.

Where the opinion of a third person relates to the right to register, if deeming it impossible to determine whether such opinion is grounded or not, the IPO shall notify the third person to file a lawsuit to a competent court in accordance with the Civil Procedures Code of 2015. Within 01 month from the day on which the IPO issues a notice and a third person fails to send to the IPO a copy of the court's notice of acceptance of the case, the IPO shall treat it as a third person has abandoned his/her opinions and shall continue examining applications as if there is no third party opposition. Where the IPO receives a copy of the court's notice of acceptance of the case by a third party within the above time limit, it shall suspend examining the disputed application pending the result of the dispute settlement by the court. After receiving the court’s valid judgement or decision, the examination of the disputed application will be conducted in accordance with that judgement or decision.

The IPO shall organize direct dialogues between third parties and applicants to clarify issues of opposition if deeming it necessary and at the request of both parties.

The time limit for applicants to respond to third party's objections is not included in the time limit for the NOIP to carry out relevant procedures according to regulations.

However, because Article 112 opposition right is entitled from the time of the Industrial Property Official Gazette until before the date of issuance of the decision to grant the title of protection, there will take place one more circumstance of possible opposition that occurres after the IPO has issued a notice of grant of protection along with request for payment of grant fee but before the point of time the IPO’s decision on grant of title of protection is released (this decision is archieved internally, no attaching to a certificate of trademark registration under the name of the applicant/trademark owner). Where there is any objections lodged within this interim period between the date of notice of grant and date of decision on grant then the IPO is forced to return to the procedures for examining applications, re-examining application even though the very application was previously concluded to be eligible for protection. This is a paradox incident but as the laws states that in the event of an objection to the notice of grant of a protection title, the corresponding industrial property registration application shall be re-examined against the issues being opposed[4]

However, according to Circular 01/2007, the re-examination of applications is conditional, meaning that not all cases of filing opposition (protest or letter of protest) after the IPO has issued a notice of grant are accepted. In particular, an objection must meet three conditions in order to be accepted:

(a)        A written opinion by the applicant is filed with the IPO during the period from the date of notice of grant/notice of provisional refusal until shortly before the date of decision on grant/decision on rejection; a written opinion, protest, letter of protest[5] by third party is submitted opposing the notice of grant together with good reason for justifying why the opposition cannot be filed earlier;

(b)        The written opinion/protest/letter of protest referred to (a) above shall be substantially justified, accompanied by evidence or indications to reliable sources of information;

(c)        The arguments, evidence supporting the opinions stated at (a) above must be different from the arguments and evidence (if any) presented in the previous period, or although such arguments or evidences are not different but have not yet been answered by the IPO.

The time limit for re-examination of an application shall comply with Clause 3, Article 119 of the Intellectual Property Law, specifically for trademarks, which shall not exceed 06 months. For complicated cases with many details that need to be verified or to solicit expert opinions, the re-evaluation time limit may be extended but must not exceed the time limit for first-time evaluation under Clause 2 Article 119 of the Intellectual Property Law, that is, no later than 9 months from the date of publication of the application. It is also important to note that the re-examination is done only once applicable for the applicant and for every third party.

The scope of re-examination of an opposed application is similar to that of examination of a unchallenged application. Particularly, the examination includes: (i) assessing the suitability of the subject matter stated in the application with the type of protection title requested; (ii) assess the subject matter according to each condition of protection; (iii) check the first-to-file rule. The assessment referred to herein shall be conducted, respectively, with respect to each component of the trademark for each goods or service listed in the list of goods and services.

The re-examination is considered completed when the subject matter has been assessed with all criteria for protection and there are sufficient grounds to conclude that the subject matter does not meet or meet the protection conditions, namely: (i) find reasons to conclude that the subject matter does not meet one / some / all of the protection conditions; or (ii) do not find any reason to conclude that the subject matter does not meet at least one protection condition.

Completion of re-examination of an application, the IPO shall send the applicant one of the following notices:

1. Notification of substantive examination, clearly stating the intended refusal to grant a protection title, the reason for refusal, may guide the amendment of the scope (volume) of protection and the time limit 03 months from the date of the notice for the applicant to give comments; or
2. Notification of substantive examinatio, clearly stating the intention to refuse to grant a protection title (if the subject matter stated in the application satisfies the protection conditions but the application has deficiencies), it is necessary to remedy and fix a time limit of 03 months from the date of notification for the applicant to comment on or correct errors.
3. Notification of substantive examination, if the subject matter stated in the application satisfies the protection conditions, or the applicant has satisfactorily corrected the deficiencies, or has justified explanation within the prescribed time limit, the IPO shall issue notice: (i) state the intention to grant a protection title and set a time limit of 03 months from the date of notification for the applicant to pay fee of grant of protection title; or (ii) intend to grant a protection title but exclude one or several elements contained in the mark (protection as the whole, one or several element of the trademark is not separately protected) and set a time limit of 03 months from the date of notification for the applicant to give comments.

International registration of trademarks under the Madrid system[6] designating Vietnam may also be opposed by third party. The fact that Circular 01/2007 does not specifically provide a mechanism of opposition specifically applicable to an internationally registered trademark allows us to understand that the entire process of handling and resolving opposition against the Madrid-based trademark would be the same as that of nationally filed trademark. However, the process of accepting and resolving an opposition against international trademark registration designating Vietnam has a number of characteristics:

1. Vietnam does not re-publish[7] an international application for the purpose of opposition, so the earliest point of time to file an objection begins immediately after the date of publication by WIPO or the date of subsequent designation by WIPO. In practice, perhaps the earliest date is allowed for a third party to file an objection is immediately after the date of notification by WIPO recorded on the WIPO Madrid monitor online data (called as the date of recording) and would last for no longer than 12 months until shortly before the IPO issues a statement of grant of protection.

2. The time limit for such an objection is theoretically to be 12 months (not 9 months like the case of nationally filed trademark) because the deadline for the notice of provisional refusal of protection declared by Vietnam when it joined the Madrid system is 12 months[8]

Bross & Partners is rich in experience in handling trademark opposition as well as trademark counter-opposition in Vietnam. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.