7 Most Essential Features of the Law and Practices

Regarding Trademark Opposition Procedure in Vietnam

Email to: vinh@bross.vn

The law states that all industrial property subjects of which exclusive rights are only established on the basis of registration[1] (including 7 types of industrial property registration applications: invention, utility solution, industrial designs, trademark, geographical indication, plant varieties, lay-out design of integrated circuit) may be potential objections to protection by third parties[2].

With respect to trademark opposition and counter-opposition (defense), we summarize below its 7 most basic characteristics under the Vietnamese laws and practices:

1. No third party standing is required. The Vietnamese law allows any third party to entitle to file an objection to a trademark application of another person based on the absolute or relative refusal ground, which is different from the requirement of interested third party or aggrieved third party imposed by the laws of the United States, European Union or China. For example, in 2014, Bross & Partners, on behalf of an Italian customer, successfully objected to an applied-for mark Artègo/app. no 4-2012-27616 on the basis of several earlier trademarks owned by right holders other than our client in accordance with Article 74(2)(e) of the IP Law.

2. Be free to choose when to oppose. You have plenty of time to prepare and file an opposition, namely that you will have at least 9 months from the point of time the applied-for mark is published until prior to an issuance of decision on grant of protection. Where the applied-for mark is being delayed for substantive examination, you would even have additional time from several months to a whole year to file an opposition.

3. Early prevention of competitors' market access. Opposition is a legal tool helping you obstruct or impede rivals’ penetration to market through their opposed. For instance, in 2018, Bross & Partners assisted Vinacafé to successfully stop a new brand name Vinamorning Café in an opposition proceeding, although Vinamorning Café is significantly different from Vinacafé in terms of structure and pronunciation[3].

4. Opposition totally independent from taking legal action against the opposed party having infringing upon the opposed trademark in the market. Under some circumstances, you can stop and deal with the opposed party if he/she has produced, traded in or used the opposed trademark that you are holding validly exclusive right of it through administrative measures, civil lawsuit or even a request for prosecution a criminal liability based on Section 226 (in case of counterfeit mark goods on a commercial scale)[4] without regard to the result of handling of opposition because these are completely independent of each other.

5. More advantageous time and expenses than procedure for cancellation action against a registered trademark. The reason is that a notice of settlement of opposition issued by the NOIP's is final and unactionable (whether via administrative complaint or bringing an administrative lawsuit at a court). In other words, the inter partes proceeding has ended and this would transform the inter partes opposition into the ex parte proceeding together with the different fates of the opposed trademark (assuming in the absence of opposition, of course, the opposed trademark is entitled to protection): (a) it is rejected protection meaning the opposition is accepted, or (b) it is granted protection meaning the objection is refused. Thus, in the case of the opposition denied, the opposing party must wait for until the time of change in legal status of the opposed trademark, ie. it has been transformed into a validly registered trademark then he/she may subsequently commence lodging a revocation action against such validly registered trademark. In contrast, where the opposition is accepted, the opposed party must await receipt of a notification of refusal of protection (non-final office action) issued by the NOIP so as to start a multi-year possibly-lasting-for journey, ie. responding to the NOIP’s non-final office ation, appealing against the NOIP’s decision on confirmation of refusal (final office ation) in accordance with under the Law on complaint of 2011 as revised or initiating a administrative case before an administrative court under the 2015 Administrative Proceedings Law.

6. Opposition is sometimes a tactic for bullying newly established enterprises intending to enter the market. Small businesses are often bewildered, afraid of getting involved in litigations when they receive objections from big competitors, so they are more likely to quit defending themselves, ie. failure to respond to notice of opposition. Of course, if doing so, they have officially given up their ideas for start-up that may have been thought twice before beginning their business project, or that may have spent a lot of money on market research, renting and fitting-out, salary payment for employees. Our practical experience shows that many objections are either groundless or insufficient evidence or have shown the abuse of industrial property rights like "big fish eat little fish" for the purpose of obstructing or limiting free competition or new competitor. The lesson is that if you should consult with a professional lawyer to assess the legal nature, grounds and evidence presented by the opposing party before you decide whether you should continue it and defend yourself or abandon your enthusiastic project.

7. Direct dialogue between the opposing party and the opposed party. Unlike the legal features of a case trial by the hearing panel in a civil or administrative case, and also unlike the dialogue procedure under Article 30 of the Law on complaints of 2011[5] as revised, the direct dialogue (meeting in person) in the opposition proceeding characterizes in that it is the last minute opportunity to be additionally explained, supplemented and final argument submission by the two parties, and wherein may also imply a possible conciliation, amicable agreement or out-of-court settlement before the NOIP resolves the opposition at its discretion.

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.