4 Inadequacies of Trademark Opposition Procedure under the IP Law of Vietnam

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Trademark opposition is the legal procedure allowing any third party (opponent) to submit his/her written request to the Intellectual Property Office of Viet Nam (VNIPO) demanding not to grant registration for a trademark applied for by the applicant in Viet Nam on the grounds that the opponent believes that if such trademark is registered it would result in violation of the opponent’s lawful rights and interests. Therefore, trademark opposition (objection of trademark) is a legal procedure for settling an inter partes dispute between at least 2 subjects as the opposing party (opponent) and applicant (who has filed for registration of a trademark)[1]

According to the author's observations, for more than a decade from July 1, 2006 - the effective date of the Intellectual Property Law, the Vietnamese trademark opposition system has revealed several limitations. Here are four of the most noticeable limitations existing in the trademark opposition regime:

1. The time limit for trademark opposition is too long. As provided by the law, the time limit for opposition may take at least 9 months because the law stipulates that third party has the right to submit the argument demanding not to grant from the date on which the application for trademark registration is published in the Industrial Property Official Gazette until prior to the date of VNIPO’s decision on grant of protection. In the meantime, the time-limit for the VNIPO to finish substantive examination is 9 months counting from the publication date[2]. However, the number of trademarks unexamined by the IPOVN is too large leading to the fact that it may prolong additional period of between 6 and 9 months. As a result, the real time limit for opposition may be 15 months even 18 months. In comparison, no country in the world prescribes period of possible opposition as long as Vietnam (3-months (unextendable) is the deadline for opposition in China[3], 1-month in the US (6 times of extension of time may be granted but not excessive of 6 months).

2. Opposition mechanism is not consistent between the opposition against the Madrid-based trademark and the opposition against nationally filed trademark at the VNIPO. Circular 01/2007 as revised left out a rule on identifying what point of time an opposition against the Madrid-based trademark (international registration of mark) may be lodged (no re-publication of international application is available under the laws of Vietnam). Current opposition system also shows the inconsistency in settlement of opposed national application and international application wherein involves the opposition made by third party objecting grant of protection of a portion constituting the trademark sought for registration. In particular, upon examination the VNIPO may include the disclaimer statement[4] in the certificate of trademark registration and the national register, but for the international registration, no one has ever seen the same mechanism. Some opine that there is the discrimination between international registration and national registration relating to the determination of scope of protection (disclaimer is only existed in national registration while absent from international registration).
3. The opposition system is presently abused. Potential opponents aim at taking advantage of current opposition regime to cause the applied-for trademark being examined much longer than usual. Due to no requirement of standing of any third party, there may be a great deal of oppositions submitted while the time limit for applicants to respond to third party's objections is not included in the time limit for the VNIPO to carry out relevant procedures according to Circular 01/2007[5]. Accordingly, such proceeding in practice may extend for several months because almost no trademark application is completely examined within 9 months. This means the delayed trademark applications (pending under examination) may be continuously abused by third party’s opposition, making them unexamined for indefinite period of one years to several years.

4. No opposition rule based on the well-known trademark[6]. The VNIPO is confused about dealing with oppositions plus a claim for recognition of famous trademark. In almost cases, the VNIPO either rejects them or hangs them unsettled for an indefinite period of time. The main reason may be inferred is that an opposition based on well-known trademark is totally different from an opposition based on ordinary trademark. The procedure for well-known trademark based opposition requires that an earlier trademark (cited trademark) be recognized as well-known amidst there is no procedure and guideline on determination and recognition of well-known trademark under Article 75 of IP Law.

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