Vietnam to Guide How to Determine Bad Faith Trademark Filings

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Circular 23/2023/TT-BKHCN that was released and came into force from November 30, 2023 (“Circular 23”) guides the standards for determining “bad faith” (in Vietnamese: “dụng ý xấu”)[1] in the trademark opposition or trademark cancellation procedures.[2] Bross & Partners below summarizes this long-awaited guidance.

“Bad faith” is a new legal basis that is first time included in Article 117(1)(b) and Article 96 (1)(a) of the 2022 Intellectual Property Law (“IP Law”), whereby if there is a basis to believe that an  applicant had bad faith, VNIPO can apply these grounds to refuse protection of an applied-for trademark during the process of establishing rights or revoking validity of a registered trademark.

“Bad faith” is a legal basis independent of other grounds for refusal provided in the IP Law, namely: (1) the applied-for trademark does not meet the protection conditions (eg., it is descriptive, deceptive or conflicts with prior rights including registered trademarks, industrial designs, trade names, copyrights); or (2) the applicant does not have the right to register and has not been transferred the entitlement to register such trademark by the person who has the right to register.

In accordance with Article 34 of Circular 23, the applicant would be considered as acting “in bad faith" if the relevant evidence simultaneously satisfies both conditions:

1. At the time of filing the application, the applicant knows or has a basis to know that the trademark he/she applied for is identical or similar to the extent that it is difficult to distinguish from other person’s trademark that is widely used in Vietnam or a famous in other countries, designated for identical or similar goods or services; and
2. The applicant’s trademark registration is intended to take advantage of the reputation, goodwill of the other person’s trademark for profit, or mainly for the purpose of reselling, licensing or transferring registration rights to the other person whose trademark is widely used in Vietnam, or recognized as well-known trademark in other countries, or with the goal of preventing the other person from entering the market, or conducting other behaviors contrary to fair commercial practices.

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.