Trademark Opposition in Vietnam under the 2022 IP Law

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Under the Vietnamese 2022 IP Law, any third party can prevent the Intellectual Property Office of Vietnam (“VNIPO”) from granting the exclusive right to use an applied-for trademark via the procedure for trademark opposition. However, please do not confuse trademark opposition with third-party observation.[1] Bross & Partners updates the key features of trademark opposition procedure guided by Circular 23/2023/TT-BKHCN into force as from 30 November 2023.

Procedures for Trademark Opposition

A Section 112a trademark opposition is a legal procedure for settling an inter partes dispute, whereby any third party can object a trademark sought for registration within a period of 5 months (non-extendable) from the date of publication of such trademark (IP Gazette Volume A).

After receiving the opposition with relevant evidence by the third party (the “Opponent”) and the official fee of 550,000 VND/trademark/class, the VNIPO will issue a notice (first notice) addresing to the applicant (“Opposed Party”) notifying that his/her applied-for trademark is objected to, along with a copy of the opposition, and requesting the Opposed Party to respond within two (02) months from the date of notice.

If deemed necessary, the VNIPO may continue to send another notice (second notice) to the Opponent informing that the Opposed Party has replied to the opposition and demanding the Opponent to respond to it in 2 months.

Please keep in mind that where the opposed trademark and goods/services pertaining thereto are identical with another trademark and goods/services pertaining thereto raised by the Opponent, or there is a basis to believe that the opposed trademark and goods/services pertaining thereto are confusingly similar to, or not confusingly similar to, the trademark and goods/services pertaining thereto invoked by the Opponent then the VNIPO will handle the opposition in combination with conducting the substantive examination, and will notify the Opponent of the result of handling of the opposition together with the substantive examination report. In other words, in this case no notice will be sent by the VNIPO in favor of the applicant.

Principles for Resolving Trademark Opposition

Only where the VNIPO itself finds it necessary to more clarify the content of the opposition, or upon the request made by both the Opponent and the Opposed Party, the VNIPO will organize an in-person dialogue between the parties.

For the cases where the relevant parties have received the first notice or the second notice without/with the result of the dialogue between the parties (if any), the opposition will be settled, and the Opponent will receive the result of handling of the opposition along with the substantive examination report against the opposed trademark.

We draw your attention to the fact that the VNIPO does not accept an opposition by issuing a notice requesting the Opponent to initiate a civil lawsuit before a competent court, if the content of the opposition is related to rights to register the opposed trademark (except where it is clear that the applicant does not have the right to register the opposed trademark, or the opposed trademark is/contains geographical names, or other signs indicating the geographical origin of local Vietnamese specialties).

The opposition will be considered withdrawn, and the opposed trademark will continue to be examined as if there was no opposition, if within 2 months from the date of notice by the VNIPO requesting the Opponent to file a civil lawsuit but he/she has not yet sent to the VNIPO a notice of acceptance of the case by the court. In case a copy of the court’s notice of acceptance is received on time, the VNIPO will temporarily suspend the examination against the opposed trademark pending the result of the court's judgement.

Circular 23 also stipulates that if an opposition under Article 112a of the 2022 IP Law was filed after January 1, 2023, but no later than 5 months from the date the opposed trademark was published in the Official Gazette A, and such opposition has been not yet handled, then all principles for handling the opposition stated in Circular 23 as described above will be applied.

Under circumstance that the opposition was filed before August 23, 2023, in compliance with Article 112 of the 2005 IP Law as revised but the VNIPO has not yet finished processing it, the opposition will be dealt with according to the provisions of Circular 01/2007/TT-BKHCN as amended.

Bross & Partners, an intellectual property firm ranked Tier 1 in 3 consecutive years 2021-2023 by Legal 500 Asia Pacific, has rich experience in trademark opposition and trademark cancellation in Vietnam.

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