FAQs

Can the acquired distinctiveness of a trademark in Vietnam be a valid defense in cancellation proceedings?

Acquired distinctiveness can be a valid defense in cancellation proceedings a trademark in Vietnam based on absolute grounds. The following criteria are used to establish acquired distinctiveness:


1. The number of related consumers who are aware of the mark through purchase or use of the trademark in Vietnam and other countries in the world;


2. Goods or services bearing the mark or through advertising the trademark in Vietnam and other countries in the world;


3. The territorial scope of circulation of the goods/services bearing the mark;


4. The volume of the goods sold or the services supplied or turnover of the sale or supply of the goods or services bearing the trademark in Vietnam and other countries in the world;


5. The period of continuous use of the trademark in Vietnam and other countries in the world;


6. Widespread goodwill of the goods/services bearing the trademark in Vietnam and other countries in the world;


7. Worldwide successful trademark registrations.

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What happen when failing to respond in cancellation of trademark in Vietnam?

The consequences if a respondent fail to file a response or answer to a petition for cancellation of trademark in Vietnam are as follows:

  • Upon request of the petitioner, the court, other judicial tribunal or administrative body may enter a default judgment in favor of the petitioner.
  • The court, other judicial tribunal or administrative body must consider and decide the matter on the merits despite such failure.
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Please describe the proof of respondent’s use may be submitted in cancellation of trademark in Vietnam?

1. In cancellation of trademark in Vietnam, the respondent may submit the following kinds of evidence to prove use:


- invoices;
- catalogs;
- evidence of turnover regarding the cancelled trademark in Vietnam and other countries in the world;
- packaging;
- labels;
- price lists;
- advertisements regarding the cancelled trademark in Vietnam and other countries in the world;
- written statements;
- market surveys regarding the cancelled trademark in Vietnam and other countries in the world;
- use of the mark on the Internet;
- maintenance of a website;
- use of the mark on a social media site;
- other:

• distribution contract;
• processing contract.

2. In assessing whether "use has been made”, “sufficient use” is demonstrated by:


a) affixing the protected mark to goods, packages of goods, means of business or supplying services and communicating papers in business activities regarding the cancelled trademark in Vietnam;
b) circulating, or offering, advertising or storing for sale, goods bearing the protected trademark in Vietnam;
c) importing goods or services bearing the protected trademark in Vietnam.
All in commerce and within the territory of Vietnam.


3. The following factors are considered when determining whether a trademark in

Vietnam has been sufficiently used:
- The nature of the goods or services at issue;
- Market characteristics;
- The scale and frequency of use of the trademark in Vietnam;
- Export use: The transited products for temporary import and re-export or duty-free is not for consideration.


4. The respondent can demand that the petitioner provide additional particulars relating to the petitioner’s proffered evidence, using the following procedure: by submitting their opinion in writing to the Administrative Offices or the Court.

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Please describe the types of evidence may be submitted in cancellation of trademark in Vietnam?

The types of evidence for cancellation of trademark in Vietnam will depend on the cancellation grounds.


1. Evidence to establish absolute grounds for cancellation of trademark in Vietnam:


- The following types of evidence may be submitted to establish absolute grounds: certified professional documents; documents from the third party; official dictionaries; precedent from worldwide trademark registries. All documents are required to be in hard copy (paper).
- Evidence must be submitted to the administrative body or cancellation tribunal of trademark in Vietnam.
- Evidence must be submitted by the following deadline: The evidence must accompany the cancellation request or be submitted by the deadline decided by the administrative body or cancellation tribunal.

2. The evidence to establish relative grounds for cancellation of trademark in Vietnam

- The following types of evidence may be submitted to establish relative grounds:

a. evidence of earlier use, such as an invoice, advertisement materials or a list of distributors;
b. evidence of famous characters, such as a number of related consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;
c. territorial scope of circulation of the goods/services bearing the mark;
d. turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;
e. the period of continuous use of the mark;
f. widespread goodwill of the goods/services bearing the mark;
g. countries granting protection to the mark;
h. countries recognizing the mark as well known;
i. the value of the assignment, the licensing price or the value of investment capital contribution in respect of the mark;
j. distribution agreement and/or any other evidence for proving bad faith registration;
k. information of prior rights in Vietnam (trademark registration, protected trade name. protected geographical indication, protected industrial design);
l. successful precedents in worldwide trademark registries;
m. social survey. All documents are required to be in hard copy (paper).

- Evidence must be submitted to the administrative body or cancellation tribunal of trademark in Vietnam.
- The evidence must accompany the cancellation request of trademark in Vietnam or be submitted by the deadline decided by the administrative body or cancellation tribunal.

3. The evidence to establish non-use grounds for cancellation of trademark in Vietnam


- The following types of evidence may be submitted to establish non-use grounds: Initial non-use evidence presented by a simple market survey or search result of a competent authority.
- Evidence must be submitted to: the administrative body or cancellation tribunal of trademark in Vietnam.

- The evidence must accompany the cancellation request or be submitted by the deadline decided by the administrative body or cancellation tribunal of trademark in Vietnam.

4. The evidence to establish other grounds for cancellation of trademark in Vietnam


- The following types of evidence may be submitted to establish grounds other than absolute, relative or non-use grounds: evidence proving that (a) the trademark owner has not paid the due fees for the maintenance or renewal as prescribed; (b) the mark's owner has declared the relinquishment of the rights conferred by the Protection Title; (c) the mark's owner no longer exists or no longer engages in business and has no lawful successor; (d) the owner of a collective mark falls to supervise or ineffectively supervises the implementation of the rules on using collective marks; (e) the owner of a certificate of registered certification mark violates the regulation on use of certification marks or fails to supervise or ineffectively supervises the implementation of such regulation; or (f) the mark has become generic or violates public interest due to a change in circumstances. All documents are required to be in hard copy (paper).
- Evidence must be submitted to the administrative body or cancellation tribunal of trademark in Vietnam.
- The evidence must accompany the cancellation request or be submitted by the deadline decided by the administrative body or cancellation tribunal of trademark in Vietnam.

5. Additional evidence for cancellation of trademark in Vietnam


Additional evidence may be submitted at a later stage in the cancellation proceedings of trademark in Vietnam. There is no specific deadline for submitting additional evidence in trademark cancellation proceedings. However, it must be submitted as soon as possible before the IPVN issues a decision on the cancellation of trademark in Vietnam.

6. The applicant submit the evidence for cancellation of trademark in Vietnam


The applicant is not required to submit proof of use of the mark on which the cancellation is based, provided that the mark has already been registered and the cancellation of trademark in Vietnam is not based on a prior reputational and/or famous unregistered mark.


In cancellation proceeding of trademark in Vietnam, extensions of time available for the applicant’s submission of evidence are the same, regardless of the grounds on which the cancellation proceedings are based. The extension is possible for every obligation of providing evidence.


Official fees payable to obtain an extension for submitting evidence are as follows: the official fee is VND 120,000 (USD 5).

7. Evidence in Reply/ Deadline and Extensions for cancellation of trademark in Vietnam


Evidence in reply for cancellation of trademark in Vietnam is optional.


Evidence in reply for cancellation of trademark in Vietnam must be submitted by the following deadline: There is no official deadline. The deadline depends on each case and is normally around 1-2 months.


The following extensions of time for the respondent's submissions are available: same as the time they are required to provide the submissions by the IPVN in the Notice.


The official fees payable to obtain these extensions are USD 5 in case of the administrative body. No official fees are payable to obtain an extension in a case at the court.


The petitioner cannot demand that the respondent provide additional particulars relating to the respondent's proffered evidence for trademark cancellation in Vietnam.

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Are oral hearings applied in the cancellation proceedings of trademark in Vietnam?

Yes. Oral hearings are permitted in the cancellation proceedings of trademark in Vietnam. It is popular in the trial procedure, but very few occur in the administrative procedure.

The determination of whether oral hearings will take place is made by: an administrative body or by the court.

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Please advise the deadline to submit written arguments in cancellation of trademark in Vietnam?

1. Written arguments in cancellation of trademark in Vietnam are mandatory.

2. The deadline for the applicant to submit written arguments is determined by statute, rule or regulation and is 1-2 months from the filling date of cancellation a trademark in Vietnam.


3. The deadline for the respondent to submit written arguments is determined by statute, rule or regulation and is 2-3 months from the signing date of the notification for the cancellation a trademark in Vietnam.


4. The deadline for submitting written arguments is determined by scheduling order or ruling of the court, other judicial tribunal or administrative body and is 2-3 months.


5. Extensions of time are available to the applicant to file written arguments for cancellation a trademark in Vietnam.


- The duration of the extension is: a period of time equal to the set time limit.
- The following number of extensions is available: One.


6. Extensions of time are available to the respondent to file written arguments for cancellation a trademark in Vietnam.


- The duration of the extension is: a period of time equal to the set time limit.
- The following number of extensions is available: One.


7. Extensions do not require the consent of the adverse party in cancellation proceedings a trademark in Vietnam.


8. Extensions require the approval of the court, other judicial tribunal or administrative body.


9. The following official fees must be paid to obtain extensions: the official fee is VND 120,000 (~USD 5).

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Please describe the burden of proof of involved parties in cancellation of trademark in Vietnam?

Initially, the burden of proof is on the requester of trademark cancellation in Vietnam

Then, the burden of proof can shift to the other party during the course of cancellation proceedings a trademark in Vietnam under the following circumstances:

(a) There is a factor showing the given trademark cancellation proof is not true or appropriate;

(b) Other ground(s) for cancellation of trademark in Vietnam arise during the course of the cancellation.

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Whether or not a witnesses be asked during the cancellation procedure of trademark in Vietnam?

in the administrative procedure for trademark cancellation in Vietnam, no party may request that none or more witnesses for any other party appear in person to be cross-examined under oath ("Depositions"). However, it is possible in case of a trial.

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Who has the right to require the related parties to provide documents for cancellation of trademark in Vietnam?

1. Any party may request that any other party produce documents in response to written document requests for cancellation of trademark in Vietnam ("Document Requests").


Only administrative agencies or Court may request concerning party produce document in response for cancellation case of trademark in Vietnam.


2. The general rules concerning the timing, number and scope of Document Requests are: After receiving a cancellation petition a trademark in Vietnam, the administrative body or the court may request the parties to produce documents in response. Each party is invited to produce documents at least once, but additional requests may be made, depending on the complexity of the case.


3. If the requested party fails to provide documents in response to Document Requests, in whole or in part, there is no procedure by which the requesting party can compel compliance.


4. If the requested fails to provide documents in response to Document Requests, in whole or in part, the consequences are as follows: The trademark cancellation in Vietnam will be considered in the available document.


5. The grounds on which the requested party may justify its refusal to produce documents in response to Document Requests, in whole or in part, and the circumstances in which these grounds are applicable are as follows:


a) the question is not related to the cancellation case of trademark in Vietnam;
b) the answer is obvious;
c) force majeure.


6. Documents obtained in response to Document Requests may be used as evidence in the trademark cancellation in Vietnam. Provided that the answer is an official written document and meet the formality requirement.

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Is there any specific regulation on the interrogatories of trademark cancellation in Vietnam?

1. A party may request that any other party answer written questions, under oath ("Interrogatories").


2. The general rules concerning the timing, number and scope of Interrogatories are as follows: After receiving a cancellation petition of trademark in Vietnam, the administrative body or the court may request that a party answer written questions. There is no specific regulation on the number of interrogatories. The scope of interrogatories should be directly or indirectly involved in the cancellation request a trademark in Vietnam.


3. If the requested party fails to provide answers to Interrogatories, in whole or in part, there is no procedure by which the requesting party can compel compliance.


4. If the requested party fails to provide answers to Interrogatories, in whole or in part, the consequences are as follows: The trademark cancellation case is considered on the available documents and come to a decision.

 

5. The grounds on which a party may justify its refusal to respond to Interrogatories, in whole or in part, and the circumstances in which these grounds are applicable are as follows:


i) The question is not related to the concerning cancellation case of trademark in Vietnam;
ii) The answer is clear;
iii) Force majeure.

 

6. Answers to Interrogatories may be used as evidence in the action. Provided that the answer is an official written document.

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When is the statute of limitations to cancel a trademark in Vietnam?

The following statute of limitations or acquiescence provisions will prevent cancellation a trademark in Vietnam, regardless of the grounds for cancellation:

 

The statute of limitations for exercising the right to request invalidation of a protection title of the mark shall be five years as from the granting date of the trademark in Vietnam, except where the protection title has been granted due to the applicant's dishonesty.

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Has Covid-19 changed your decision-making regarding Intellectual Property in Vietnam issues? If so, are the changes expected to be temporary or permanent?

Yes, COVID-19 pandemic has made a significant change in financial decisions of enterprises related to Intellectual Property matters. In which, there are decisions regarding Intellectual Property that are temporary and also decisions that are permanent to fit into the new context.


- First of all, enterprises must tighten their spending policies related to Intellectual Property. The expenditures should be reviewed more carefully and priority should be given to the fixed items such as salary for staff, maintenance of office operations.


- In another aspect, COVID-19 pandemic could also be viewed as an opportunity for restructuring and optimizing business activities of enterprises to suit the market. A number of measures have been effectively applied by many enterprises such as:


+ Focus on internal training, improve quality and knowledge for human resources, improve processes, redefine business plans and new visions.
+ Apply software and technology applications to work remotely with customers and Competent State Agencies while still ensure the effective and continuous interaction.
+ Switch to working from home instead of going directly to office, especially during the period of social distancing.
+ Enhance security measures to ensure that all services working remotely and data transfer are not compromised.

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What are some best practices for negotiating assignment of trademark in Vietnam?

Assignment of trademark in Vietnam means the transfer of ownership right by owner of such trademark right to another organization or individual.

 

The assignment of trademark in Vietnam is not merely the assignment of that trademark but also needs to consider the following aspects:

 

- The assigned trademark in Vietnam must not be identical or similar to the remaining trademarks of the Assignor. If so, it is necessary to assign all identical/similar trademarks to avoid the possibility of confusing consumers about the origin of the branded goods/services.

 

- The assigned trademark in Vietnam must not be identical or similar to the tradename of the Assignor to avoid the possibility of confusing consumers about the origin of the branded goods/services. In this case, the trademark assignment is only acceptable if it falls into one of the following situation:

 

+ The Assignor transfers to the Assignee all the business establishments and activities under that tradename; or
+ The Assignor eliminates the business sectors related to the branded goods/services and such elimination must be recorded in the Business Registration Certificate; or
+ The Assignor has dissolved, ceases to exist after signing the trademark assignment contract; or
+ In fact, the National Office of Intellectual Property of Vietnam may accept the assignment of trademark that similar to the trade name of the Assignor if it is able to provide documents proving that the Transferor is the Parent Company / Capital Contractor (accounting for more than 50% of the capital contribution) to the Assignee.

 

- In addition, when assigning the trademark in Vietnam, it is necessary to negotiate to transfer all other means/forms of the trademark such as domain names, the system of branded stores, etc.

 

- When negotiating trademark assignment in Vietnam, it is also necessary to note whether or not the assignment fee includes taxes payable to the government such as VAT, income tax.

 

Should you need more information or further advice on assignment of trademark in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email at trademark@ageless.com.vn

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