10 remarkable amendments on trademark under Vietnam IP Law 2022

26/08/2022 - 1018 views

Trademark is an important part of the amended Law on Intellectual Property which was ratified by the National Assembly of Vietnam on June 16, 2022, and will take effect on January 1, 2023 (Vietnam IP Law 2022). Among the amended and supplemented contents, there are 10 remarkable trademark-related amendments that we would like to share our point of views as follows:

 

Vietnam IP Law 2022 has a lot of new points of trademark protection.

 

1. The official protection of sound marks in Vietnam

According to the previous regulations of the Intellectual Property Law 2005 amended, supplemented in 2009 and 2019 (hereinafter referred to as the “IP Law 2005”) had just protected trademark under visible signs. Vietnam Intellectual Property Law 2022 has supplemented sound signs (invisible signs) which are also new signs that can be trademarked.

The regulation of sound trademarks protection is considered as one of the most prominent changes of the IP Law 2022. Specifically, the IP Law 2022 has supplemented sound signs in trademark definition as follow: “To be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colors or sound signs able to represented under graphic form (amended, supplemented Clause 1 Article 72)

Accordingly, in the mark registration applications if the mark is a sound, the mark sample must be a sound file and a graphical representation of that sound” (Amended, supplemented Clause 2 Article 105)

Sound marks are created from signs are sounds, which are recognized by hearing instead of sight as traditional trademarks. However, a sound mark still has similar functions of a mark under regulation, capable of distinguishing and helping consumers distinguish goods and services of different organizations and individuals.

The acceptance the sound marks protection shows the country’s efforts to comply with international treaties and agreements to which it is a party, such as the EVFTA and CPTPP, at the same time allows Businesses to have more effective tools to protect their IP Rights.

 

2. Amendment of regulations on the well-known trademark

The Intellectual Property Law 2022 has amended the public domain and the range of criteria when evaluating well-known mark, specifically:

The amendment the definition of well-known mark in the Vietnam Intellectual Property Law 2022 not only suits the regulations of international treaties such as EVFTA, CPTPP, TRIPs and WIPO General Guidelines (1999) but also facilitate rights enforcement activities.

In comparison with the range of “consumers”, “relevant public” is defined more specifically, may be include:

+ Consumers who are relevant to goods/services bearing the mark;

+ Manufacturer or supplier of goods/services bearing the mark;

+ Sellers and persons related to the distribution channel of goods/services bearing the mark…

Besides, limiting the range of the criteria recognizing well-known mark also overcomes the limitations of old regulations. In fact, proving a well-known mark with all 8 criteria according to Article 75 IP Law 2005 cause a lot of difficulties for the trademark owners. IP Law 2022 has adjusted for considering and recognizing well-known status of a mark chosen from several criteria according to Article 75 of Law on Intellectual Property.

 

3. Shorten the time to consider the expired previous cited mark

Previously, with the argument that 5 years was considered the minimum time for consumers to forget the existence of a trademark. Therefore, according to IP Law 2005, an applied trademark will be refused protection if it is identical or confusingly similar to another person’s trademark had registered for identical or similar goods, services and that registered trademark has been expired but less than 5 years.

However, the fact shows that, the 5-year period is too long and no longer suitable, affect to the rights and the need of registering trademark. Understanding this inadequacy, the Vietnam IP Law 2022 has shortened the period to “less than 3 years” (Article 74.2.h), to be compatible with the current economic context:

– The number of trademarks is increasing with the diversity of medias, so that the ability to remember by the public will be lower than before, especially when a trademark had been withdrawn out of the market.

– Meanwhile, resources for trademark names/images are increasingly limited due to the rapidly increasing number of applied trademarks. Therefore, eliminating expired trademarks as reference will creates more opportunities for the parties to register and use the mark they are really passionate about and satisfied with.

 

4. Provisional suspension of trademark examination

IP Law 2005 does not provide for the suspension of the examination of trademark applications. IP Law 2022, has added a provision on suspending the examination of trademark applications (Article 117.3.b) to overcome prior existing cited marks in force or a pre-existing cited mark that has been invalidated for less than 3 years, specifically:

– The applicant submits a request to suspend the examination of the trademark application;

– The applicant submits a request for termination of the cited mark’s validity due to failure to use or invalidate the cited mark;

– Based on the results of the settlement of the request for invalidation or invalidation of the trademark Protection Titles, the IP Office shall continue the application examination process.

From January 1, 2023 (the effective date of Vietnam IP Law 2022), trademark registration applications without a decision to grant or refuse to grant a protection title may apply the adjournment mechanism mentioned above.

 

5. “Bad faith” is legislated as ground for the handling of opposition and invalidation

The registration of a trademark for the purpose of exploitation or unfair competition (such as registration of a trademark for resale to the true owner, registration for reputational abuse or restriction of market access) is no longer a rare story. Although there are sufficient grounds for determining an applied trademark with “bad faith”, previously the grounds for denying the application or invalidating the protection certificate had not been provided for in law.

 

 

Vietnam Intellectual Property Law 2022 has for the first time legislated “bad faith” behavior as a legal basis for:

– Allowing third parties to oppose against trademark applications (Article 117.1.b);

– Refusal to grant Protection Titles (Article 117.1.b);

– Invalidation of Protection Titles (Article 96.1.a);

The addition of the regulation on “bad faith”, the clarification of the content of this term (which will be guided in detail by the Government through a separate Decree) is considered as a clearer grounds that the true owner of the mark can rely upon to provide supporting documents, facilitating the process of handling opposition as well as invalidation of the trademark registration.

 

6. Introduce a new mechanism to oppose against trademark applications

In addition to the mechanism of third party’s written opinion being unaltered, for the first time, the Vietnam’s amended IP Law 2022 introduces a new mechanism allowing a third party to oppose against a trademark application.

It is important to note that while the third party’s written opinion would only be considered as a reference source when examining a trademark application, it appears that the new mechanism was developed for the purpose of creating an independent opposition procedure (not a reference source for the processing of a trademark application).

Unlike a third party’s written opinion which may be submitted at any time from the publication date of the trademark application in the Industrial Property Official Gazette until prior to the date of decision on grant of protection title, the opposition under new mechanism must be filed within 05 months since the publication date of the trademark application. The procedures for handling opposition under new mechanism will be detailed in writing by the Ministry of Science and Technology of Vietnam.

 

7. Define more signs that shall not be protected as trademarks

The IP law 2022 amended clause 1 and implemented clause 6 and clause 7 to Article 73. Signs shall not be protected as marks:

“The following signs shall not be protected as marks:

  1. Signs identical with or confusingly similar to the national flags, national emblems, national anthem of Socialist Republic of Vietnam and countries, The International

[…]

  1. Signs are the inherent shape of the goods or because the technical characteristics of the goods are required;
  2. Signs containing a copy of a work, unless authorized by the owner of the work.”.

 

The above regulation is also one of the remarkable amendments on trademark protection that has been added in the IP Law amended 2022.

The amendment of Clause 1 is to be consistent with the addition of a sound sign that can be registered as a trademark as mentioned in part 1 above, which lists the excluded sign as the national anthem or “The Internationale”.

The supplement of Clause 6 will overcome the limitation of the IP Law 2005 is groundless to refuse 3-D trademark protection. According to the new provisions of the Vietnam IP Law amended 2022, signs that are inherent in the shape of the goods, or which are required by the technical characteristics of the goods, are considered to be the subject of exclusion from trademark protection.

 

8. Supplement grounds for termination or invalidation of trademarks

Regarding the grounds for trademark termination, in addition to the grounds specified at Points (a) to (g), Clause 1, Article 95 of the 2005 IP Law 2005, the amended IP Law 2022 has added two more grounds:

“1. The validity of a protection title shall be terminated in the following cases:

[…]

h) The use of a protected mark for goods or services by the owner or by the person authorized by the owner to mislead consumers as to the nature, quality or geographical origin of such goods or services;

i) The protected mark becomes the common name of the goods or services registered for the mark itself;”

Regarding the grounds for invalidation of trademarks, the amended IP Law 2022 has some adjustments as follows:

– Adding a ground that a trademark registration certificate may be invalidated in its entirety in the event that “the filing a trademark registration application with malicious intent” (Article 96.1.a)

– Adding a ground that a trademark registration certificate may be invalidated partially or in a whole in case of an amendment to the mark that expands or changes the original nature of the mark in the registration application (Article 96.2.c)

 

9. Supplement provisions on appeal and settlement of appeal to the Vietnam IP Law 2022

Previously, IP Law 2005 does not have provisions on appeal and settlement of appeal related to IP procedures in general and trademarks in particular. These contents are specified in the amended Decree 103/2006/ND-CP (sub-law documents).

Now, the provisions on appeal have been specified in Article 119a of the amended IP Law 2022. Accordingly, there are a number of notable amendments as follows:

– The applicant and organizations and individuals who have rights and interests. benefits directly related to decide or notify the processing of applications for registration, maintenance, renewal, amendment, termination, invalidation of industrial property protection titles, assignment of industrial property right issued by the authorities in charge of industrial property rights has the right to appeal to authorities about industrial property rights or initiate a lawsuit at a court in accordance with the provisions of the Intellectual Property Law and other relevant laws.

– In case the appeal is related to the right of registration or other contents that need re-examination, the appellant must pay the re-examination fee.

– The time limit for appeal settlement shall comply with the provisions of the law on appeal. In case the authorities in charge of industrial property rights re-examines the cases specified in Clause 4 of this Article or the complainant amends or supplements the appeal file, the time for re-examination, the time for amending and supplementing the complaint file is not included in the time limit for appeal settlement according to the provisions of the law on appeal.

The above adjustment has corrected the inconsistency of the time limit for complaint settlement of the Law on Appeal in the field of Industrial Property. The work on reviewing and appraising trademark dossiers takes more time and cannot be done within 30 days or 45 days as prescribed in the Law on Appeal.

 

10. Supplement provisions on the effective time of international registration of marks under the Madrid system

The IP Law of 2005 does not provide for the effective time of international registration of marks under the Madrid system.

The amended IP Law 2022 has added this provision to Clause 8, Article 93 as follows:

“8. International registration of marks under the Madrid Protocol and Agreement on international registration of marks designating Vietnam is effective from the date on which the authorities in charge of industrial property rights issues a decision to accept protection for the mark in that international registration OR from the day following the expiration of the twelve-month period counting from the date that the international office issue a notice of international registration of such mark designating Vietnam, whichever is earlier. The validity period of an international registration of a mark is calculated according to the provisions of the Madrid Protocol and Agreement“.

The Vietnam IP Law 2022 has a lot of new points on trademark protection, effective from January 1, 2023, especially the provisions on the protection of trademarks as sound signs come into force from January 14, 2022. It can be seen that the above-mentioned additional changes contribute to building a more transparent and fairer mechanism for trademark registration and protection in Vietnam.

 

In case you require more information or require advice to register trademark in Vietnam, Laos, Cambodia and Myanmar as well as other IP matters, please do not hesitate to contact us via email: info@ageless.vn  

                       

More information about trademark protection in Vietnam can be found HERE

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