Case studies

According to the Notice No. 13235/TB-SHTT dated November 23, 2018 of the National Office of Intellectual Property (NOIP) of Vietnam, as of January 01, 2019, the new version of IPC (2019.01) under Strasbourg Agreement shall be officially applied for the classification of technical solutions which claim protection in the application for patent registration in Vietnam. Besides the versions in two authentic languages as English and French provided by WIPO, the Vietnamese version also translated from English to assist individuals or organizations to register patent in Vietnam.

According to the Notice No. 13234/TB-SHTT date November 23, 2018, as from January 01, 2019, The Vietnamese version of the Nice Classification 11th Edition (11-2019), translated by the National Office of Intellectual Property (NOIP) from the English version published by WIPO, will be applied to the classification of goods and services for trademark registrations in Vietnam.

There has been an increasing global issue of the so-called “bad faith trademark filings” in which a trademark is filed for unfair purposes in order to take advantage from the reputation of a well-known trademark whether registered or not registered yet in the country or region concerned. Nowadays, there are more and more free-riders with sophisticated ways of registering trademark in Vietnam in order to mislead the Trademark Office’s examination, notably, the recent bad faith filing over the registered trademark of Doosan Corporation.

Nowadays, among tens of thousands trademark in Vietnam filed and registered every year, there is a large number of trademarks that are not actually in commercial use or just used for first few years only. Meanwhile, many other individuals or organizations may desire to use those trademarks for their business activities to free-ride on the existing reputation by filing an identical application and requesting for cancellation of the cited trademark. As a consequent, those trademarks can be subjects for cancellation proceedings based on the basis of non-use trademark in Vietnam.

Through scanning the Industrial Property Gazette periodically, Ageless found that an entity has filed an application of trademark in Vietnam which is similar to the registered trademark “SYM” of Sanyang Industry Co., Ltd regarding the presentation and designated goods. Ageless instantaneously notify Sanyang file opposition to NOIP to invalidate this application at the early stage.

In recent years, along with the increase of number of applications and registrations of Intellectual property rights (IPRs), Vietnam is also facing with numerous IP infringements, especially trademark infringement. It causes annoyance, not only to trademark holders, but also for consumers and society. The following case of trademark “SANTAK” will ring a bell to trademark infringer in Vietnam.