Cancellation of Registered Trademarks in Vietnam and Practical Lessons

Attorney Le Quang Vinh – Bross & Partners

Web: www.bross.vn; Email: vinh@bross.vn

Trademark cancellation (do not confuse invalidation procedure) is a legal procedure conducted by a third party against a registered trademark with the main purpose of helping a junior trademark overcome the Intellectual Property Office of Vietnam (VNIPO) refusal due to a likelihood of confusion with a senior trademark. In addition, a successful revocation of a trademark also paves the way for the junior trademark owner to bar the senior trademark owner from doing business with such cancelled trademark. Our short article below provides helpful information on cancellation procedures and practical lessons in Vietnam

Trademark Cancellation Process

In general, any individual or organization can file a request (petition) with VNIPO demanding revocation of validity of a registered trademark if he/she has enough evidence to prove that such registered trademark (that has been registered less than 5 years) does not meet the protection conditions at the time of grant and/or, in case of having registered more than 5 years) the registrant has no entitlement to register it as provided by  Article 96(1)(a),(b) of the IP Law.

Within 1 month counting from the date of receipt of the request, the VNIPO will serve the same (1^st time) to the registrant (trademark owner) notifying there is a third party’s petition against the registrant’s register trademark and requiring that the registrant submit a written response in a prescribed period of 2 months (for nationally registered trademarks) or 3 months (for Madrid-based registered trademarks).

On a case-by-case basis, the VNIPO may repeat the above process one more time for both parties with the same fixed time limit. Only in complicated cases, it may an in-person dialogue between the parties.

Within 3 months from the expiry of the 2-month period (applicable for a nationally registered trademark) or 3 months (applicable for an internationally registered trademark) that the registrant submits no counter-argument, either within 6 months from the expiry the 2-month period (a nationally registered mark) or 3 months (a Madrid-based international trademark) to which the registrant presents his/her counter-statement then the VNIPO shall issue a decision on cancellation of validity (in part or the whole), or decision on rejection of such petition. Regardless of whether the registrant responded to the petition or not, the registered trademark subject to a cancellation petition, must be re-examined by the VNIPO in terms of its criteria for protection.

As such, an annulment case will theoretically take about 6-10 months, or it may prolong a year, or a couple years depending on various factors, such as whether or not the petitioner’s evidence and arguments submitted is grounded and persuasive, how does the registrant counter-argue, or how busy is the VNIPO’s department in charge, etc.,

If dissatisfied with the VNIPO's decision, the petitioner or registrant may file a complaint with the Minister of Science and Technology or initiate an administrative case to the competent court.

Lesson Learned: Figurative Element Must be Highly Similar to Exist a Likelihood of Confusion

Even if a trademark holder lodges no argument in reply to the VNIPO’s notice of cancellation, it does not mean that a claimant can succeed in cancellation. For example, according to Decision 2400/QD-SHTT of May 26, 2022, despite no reply from a Taiwan-based trademark owner "the Alley & device", the VNIPO still refused the petitioner’s cancellation action against the senior trademark, considering that the junior trademark “the Alley & an arctic deer’s head device” is the actual image of the body of a reindeer or arctic deer with a stripe underneath that contains the words “the Alley”. Meanwhile, the senior trademark (IRN1311081) only contains an arctic deer’s head shown in stylized strokes with distinct black and white feathers, wherein the whole head is placed in two concentric circles with the top having a small haloing cross. Likewise, the other senior trademark (IRN664610) comprises the head of an arctic deer whose neck is uniquely stylized, on top of which is a large cross radiating aura around it. Therefore, in view of global assessment, the VNIPO found that junior trademark "the Alley & device" is not confusingly similar to the two senior trademarks.

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

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.