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VIETNAM: Update on How to Respond to or Appeal against a Provisional Refusal of Protection of Madid-based Trademark
(Ngày đăng: 2018-05-28)

 

Statutory Framework

Response to or appeal against a refusal or objection of protection of a trademark is a procedure mainly available in legal instruments:

  1. Law on complaint No. 02/2011/QH13
  2. Law on administrative proceedings no. 93/2015
  3. Decree No. 103/2006/NĐ-CP as revised, detailing and guiding the Implementation of a number of articles of the Law on Intellectual Property of 2005 as amended (Article 14); and
  4. Circular No. 01/2007/TT-BKHCN as revised in multiple times (Point 22).
  5. Circular No. 16/2016/TT-BKHCN amending and supplementing a number of Articles of Circular No. 01/2007/TT-BKHCN of February 14, 2007.

 

Who is Entitled to File an Appeal/Complaint against a Refusal against an applied-for Trademark[1]?

Applicants, organizations, or individuals whose rights and interests are directly involved in notifications or decisions issued by the National Office of Intellectual Property of Vietnam (NOIP) assume that those notifications or decisions are unlawful then these subjects are entitled to make complaint or appeal against those notifications or decisions.

 

Deadline for Responding/Appealing

To easily figure out the deadline of each kind of appeal, we brief as follows:

  1. For both of the nationally filed applied-for mark (national application) and the internationally filed applied-for mark (Madrid-based application)[2], where the NOIP rejects protection by a notification of refusal or a notification of provisional refusal of protection which is issued by the NOIP’s Trademark Department Nos. 1 or No. 2 or the NOIP’s Geographical Indication and International Mark Department respectively, the applicant (claimant) has the right to submit a review to the department issued that notification in a period of 3 months (only one more 3-month term extendable against a prescribed charge) from the date of issuance or from the date of sending notification by the NOIP[3].
  2. Where the review as filed above is upheld by a NOIP’s upholding decision and the claimant is unsatisfied, he may lodge 2nd review to another independent department under the NOIP being the Appeal Settlement and Enforcement Department within 90 days (non-extendable) from the date of issuance of the above upholding decision (the 1st upholding decision)
  3. In the event the 2nd review is still dismissed, the claimant may continuously appeal to the upper body of the NOIP being the Minister of Science and Technology (MoST) within 30 days from the date of issuance of the 2nd upholding decision or may initiate administrative lawsuit before a court in a period of 1 year counting from the date of receipt of or having known the 1st upholding decision or the 2nd upholding decision.

 

Correct Understanding of Refusal Reasons by the NOIP

There is neither nationally filed mark nor Madrid-based mark is granted protection where such mark falls into either absolute refusal grounds (Section 73 of the IP Law) or relative refusal grounds (Section 74 of the IP Law)

Absolute refusal ground is any of the followings:

  1. Signs identical with or confusingly similar to national flags or national emblems.
  2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, sociopolitico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
  3. Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
  4. Signs identical with or confusingly similar to certification seals, check seals or warranty seals of

international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.

  1. Signs which cause misunderstanding or confusion or which deceive consumers as to the origin,

properties, use, quality, value or other characteristics of goods or services.

 

Relative refusal ground may be applied if the mark subject to a provisional refusal is under any of the below listed: 

  1. Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages,

except where such sign has been widely used and recognized as a mark;

  1. Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
  2. Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration

of the mark;

  1. Signs describing the legal status and business sector of business entities;
  2. Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
  3. Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
  4. Signs identical with or confusingly similar to another person's mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
  5. Signs identical with or confusingly similar to another person's mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
  6. Signs identical with or confusingly similar to another person's mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
  7. Signs identical with or similar to another person's trade name currently in use if the use of such

sign may cause confusion to consumers as to the origin of goods or services;

  1. Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
  2. Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
  3. Signs identical with or insignificantly different from another person's industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.

 

Required Documents

  1. A Power of Attorney (PoA) in favour of a Patent and Trademark agent registered before the NOIP (e.g. Bross & Partners) simply signed by a person with legal authority to bind a juristic applicant. Neither notarization nor legalization is required. A faxed or scanned copy of PoA is accepted at the filing but the original shall be filed within 10 days from the filing date at no cost.
  2. Substantiated documents in support of the response/appeal.
  3. Other evidence and/or other relevant information (where applicable)

 

Our suggestion

A pre-appeal/pre-response advice is highly recommended to help you anticipate how much difficulty, chance of success and cost as well are before you decide to prosecute the rejected mark in Vietnam. As usual, Bross & Partners has been providing clients all around the world with its preliminary advice on the highly-reliable and swift manner on the free-of-charge basis.  

Bross & Partners, a Vietnamese registered Patent, Design, Trademark and Copyright agent, constantly ranked by Managing Intellectual Property, World Trademark Review, The Legal 500 Asia Pacific, AsiaLaw Profiles and Asian Legal Business. We are providing clients all over the world the reliable, affordable contentious and non-contentious IP services including IP enforcement, anti-counterfeiting, litigation and domain name recovery before courts and arbitrations. For further discussion, please get in touch with us via vinh@bross.vn or contact@bross.vn or saigon@bross.vn

 


[1] To focus on the main issue, the refusals mentioned exclusively mean the substantive examination ones, ie. an applied-for mark is rejected because of absolute and/or relative refusal grounds

[2] This general rule took effect for both national application and Madrid-based application after January 15, 2018 provided that the date of refusal occurred after January 15, 2018 – date of entry into force of Circular No. 16/2016/TT-BKHCN

[3] Such date is duly the one mentioned in the WIPO cover-letter featuring “date on which the notification was sent to WIPO”.

 

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