Letter of Consent Acceptable or Rejectable

in the ASEAN Region according to the 2010 WIPO Questionnaire?

Email: vinh@bross.vn

Viewpoint of some ASEAN countries on Letter of Consent

It is known that a Letter of Consent (also known as Consent Letter, Consent Agreement, Coexistence Agreement) is deemed as one of the four effective remedies that may help you overcome a refusal of protection of trademark based on a likelihood of confusion with a pre-existing trademark[1].

However, Letter of Consent is approved by this country but may be rejected by another country. Let’s take a look at the viewpoint of 4 countries including Vietnam, Singapore, the Philippines and Malaysia through the 2010 survey comprising 9 key questions rendered by the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications as below:

Our Additional Comments

1. Letter of Consent (other similar wordings as Consent Letter, Consent Agreement, Coexistence Agreement) is in nature a written agreement, whether in the form of a simple statement or a co-existence agreement, according to which the owner/registrant of cited trademark (which is already registered and used by the Trademark Authority to reject the applied-for trademark due to a likelihood of confusion with the cited trademark) consents to the registration and use of that applied-for trademark. However, even if applicant already presented a Letter of Consent, it is not possible to ensure that the public or consumers would not be misled about the commercial origin of good, service because the purpose of trademark law is to protect not only the trademark owner’s legitimate rights and interests but also to prevent the consumer from confusion. This is the rationale explaining why there may be different viewpoints decided by the different countries regarding Letter of Consent.

2. The term “Consent Letter” is not specified in the legislation of each questioned country and similarly there is no definition “Letter of Consent” available in the 2005 Law on Intellectual Property of Vietnam. Because Letter of Consent represents the right to dispose of earlier trademark holder, who is holding the exclusive right to use the registered trademark, therefore, many countries suppose that the Trademark Office should respect[2]. On the other hand, the majority of countries participating in the survey (accounting for 68%) favor the practice of acceptance of Letter of Consent as a way to overcome refusal of protection in the trademark prosecution

3. For example, according to the above survey, although Malaysia declares not accepting Letter of Consent as a way to overcome refusal of protection in registration procedure, Malaysia may in practice approve Letter of Consent if the relevant parties could additionally provide the MyIPO with co-existent evidence in the form of honest concurrent use as the example below:

Bross & Partners has experience in trademark opposition, counter-opposition and trademark cancellation due to non-use in Vietnam including those in negotiating and obtaining letter of consent. Should you have needs, please contact us at Email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.

Bross & Partners, an intellectual property renowned law firm founded in 2008, regularly ranked as top tier by Managing Intellectual Property (MIP), World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). With many years of outstanding experience and distinctive expertise, Bross & Partners can help clients effectively protect or defend in complex intellectual property disputes in Vietnam and overseas.