Registration in the trend of global integration in trade and legislation, Vietnam promulgated the Law on Intellectual Property (IP Law), in which regulations on opposition are particularly stipulated. In the context of increasing imitation of trademark, procedure of trademark opposition in Vietnam facilitates trademark examination and became an effective administrative measure against misappropriated (imitation) application of trademark.
1. Deadline for filing a trademark opposition in Vietnam
According to Vietnam Trademark system, there is no official deadline for a third party to file an opposition against a trademark application. Instead of this, during the examination of trademark applications, which lasts from the publication date of a trademark application on the Industrial Property Official Gazette to the date of decision on granting Certificate of registration or official refusal of the aforesaid mark, an opposition could be filed to the IPVN..
In theory, the above duration last for 09 months. However, under our current practice, the applicant could request for a shorter time to quickly obtain the final result of the trademark registration. Therefore, trademark opposition in Vietnam, is any, should be filed as soon as possible.
2. Grounds of trademark opposition in Vietnam
Under the current regulation and practice, the trademark opposition in Vietnam may be based on single or multi grounds, which are indicated below:
(i) The mark, as filed, is confusingly similar to another registered trademark that has an earlier priority date;
(ii) The mark, as filed, identical or confusingly similar to another trade name that has been protected and used;
(iii) The mark, as filed, is a Bad faith application;
(iv) The mark, as filed, is identical or confusingly similar to un-registered well-known mark or reputable mark;
(v) The mark, as filed, lacks distinctiveness.
Procedure of trademark opposition in Vietnam
3. Requirements for trademark opposition in Vietnam
3.1. Power of Attorney (POA)
Pursuant to the IP Law, foreign opponents are not allowed to file opposition requests directly at the IP Office of Vietnam (IPVN) but must authorize a lawful local IP representative to proceed with such action based on an original Power of Attorney (POA). Under current practice in Vietnam, a copy of POA may be acceptable for filing opposition and the original could be filed later. However, the IPVN will not consider the opposition until the original POA is filed and all formality requirements are satisfied.
In case the third party is a legal entity (company or corporation) and owns a corporation seal under their jurisdiction, the POA should be signed by the authorized person and then affixed the corporation’s seal. In case the corporation seal is not available, only the signature is acceptable. No further notarization or legalization is required.
3.2. Supporting materials
3.2.1. For trademark opposition ground (ii)
For proving that a tradename has been protected in Vietnam, please provide us with the following materials:
- Certified document from the home Company Registry proving that client had been established and operated continuously before the filing date of the registered mark; and
- Use evidence of the tradename in Vietnam.
3.2.2. For trademark opposition ground (iii)
For proving the bad faith action of the Applicant, the following documents should be submitted:
- Distribution Agreement, which shows that before the filing date of the applied mark, the Applicant was one of the client’s distributors and not permitted to file any application for trademark similar to the client’s one in Vietnam;
- Correspondences showing that before the filing date of the applied mark, the Applicant and the client had established business relation and/or contacted each other;
- Use evidence of the client’s mark in Vietnam before the filing date of the applied mark.
3.2.3. For trademark opposition ground (iv)
For proving the reputation of the mark, the following documents should be submitted:
- An explanation of origin, history, sales volume, turnover and time of continuous use of the mark by the client in home country, Vietnam and/or other regions all over the world;
- Successful precedent in home and other countries, if any;
- Survey result on well-known character of trademark in other countries, if any;
- Trademark registrations in home and from world –wide trademark registries;
- The advertising expense for the period of last 05 years including materials, brochures of products bearing trademark, typical advertising invoices in home country, Vietnam and/or other regions over the world;
- Prizes and medals awarded on the trademark by national or international organizations or the mass media;
- Rating, evaluation of reputation and recordal of well-known of the trademark by national or international organizations or the mass media.
The supporting documents should be accompanied with an Affidavit. Additionally, the Affidavit should be notarized and enclosed exhibits should be affixed by Notary’s seal or have a legal linking with the Affidavit.
4. Procedure of trademark opposition in Vietnam
More information about trademark practice in Vietnam can be found HERE.
Should you need more information or further advice on Trademark in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email at info@ageless.vn
