FAQs

In case an applicant authorizes an IP representative to cancel a trademark in Vietnam, will a notarized or legalized Power of Attorney be required?

For cancellation proceedings a trademark in Vietnam, a signed power of attorney must be provided to a representative by an applicant.


There are no notarization/legalization requirements for a power of attorney form in cancellation proceedings a trademark in Vietnam.


Before Trademark Registry (the National Office of Intellectual Property) or its higher level (the Ministry of Science & Technology). However, notarization and legalization requirements must be met in trademark cancellation proceedings before a court in Vietnam.

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What are the costs and fees for initiating cancellation of trademark in Vietnam?

1. The following costs and fees are associated with initiating cancellation proceedings a trademark in Vietnam:


- Attorney fees;
- Statutory or regulatory fees;
- Administrative costs relating to legalization and/or notarization.


2. No official fees are refundable if an application for cancellation is withdrawn, regardless of the grounds for trademark cancelation in Vietnam.


3. If an application for trademark cancelation in Vietnam is based on multiple grounds, no additional official fees are due.

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What is qualifications of IP representation in cancellation proceedings a trademark in Vietnam?

1. The applicant is required to appoint a representative (attorney, agent or other legal representative) in cancellation proceedings a trademark in Vietnam in the following circumstances: where the applicant is a foreigner or foreign company without a representative office in Vietnam.

 

2. The trademark representative must be domestic, i.e., with an office in Vietnam.

 

3. Additional professional qualifications required of a representative in cancellation proceedings of trademark in Vietnam are as follow: Practicing License of IP Representative granted by the National Office of Intellectual Property.

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Is it possible multiple applicants cancel a trademark in Vietnam?

Yes. More than one applicant may apply jointly for cancellation a trademark in Vietnam, regardless of the grounds for trademark cancellation.

 

In a court action for trademark infringement in Vietnam, cancellation of the plaintiff's trademark registration may be sought by a defendant (but only under independent proceedings)

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For cancellation of trademark in Vietnam, is there a difference in the legal standing criteria between domestic and foreign applicants?

For cancellations of trademark in Vietnam, the legal standing criteria for domestic applicants and foreign applicants are the same, regardless of the grounds for trademark cancellation.

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How to understand the definition of "interested person" in cancellation of trademark in Vietnam?

For purpose trademark cancellation in Vietnam, an “interested person” is defined as:


- Someone who believes he is being damaged by the registration of trademark in Vietnam;
- Someone who has filed an earlier pending application to register a conflicting trademark in Vietnam;
- Someone who owns an earlier conflicting trademark registration in Vietnam;
- Someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the application of trademark in Vietnam;
- Someone who owns rights in a conflicting trademark in Vietnam that were acquired through use;
- Someone who is a licensee of any conflicting trademark in Vietnam or other intellectual property right;
- Someone who owns a company name that conflicts with the mark that is the subject of the trademark application in Vietnam;
- Someone who is of the opinion that the trademark in Vietnam was not registrable.

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What is the forum for cancellation of trademark in Vietnam

1. The forum for cancellation proceedings of trademark in Vietnam is the same regardless of the grounds on which the proceedings are brought.

- Vietnam trademark cancellation proceedings on all grounds may be brought before the following court or other judicial tribunal: Administrative Court

- Cancellation proceedings of trademark in Vietnam on all grounds may be brought before the following administrative body:

. National Office of Intellectual Property

. Ministry of Science and Technology

2. The administrative body/bodies listed above is/are not independent of the Vietnam trademark registry.

The National Office of Intellectual Property (NOIP) is our Trademark Registry and directly under the Ministry of Science and Technology (MOST). The cancellation proceedings of trademark in Vietnam will be brought before NOIP and the first appeal, if any, is also handled by NOIP. The second appeal, if any, will be handled by MOST.

3. The following parties have legal standing to apply for cancellation a trademark in Vietnam, regardless of the grounds for cancellation:

- Any person. Legal interest is not required.

(This person must have the capacity for civil acts of individuals)

- A legal representative acting “in the public interest”

4. For the cancellations of trademark in Vietnam based on absolute grounds, the following parties have standing:

- Any person. Legal interest is not required.
(This person must have the capacity for civil acts of individuals)
- A legal representative acting “in the public interest”

5. For cancellations of trademark in Vietnam based on relative grounds, the following parties have standing:

- Any person. Legal interest is not required.
(This person must have the capacity for civil acts of individuals)
- A legal representative acting “in the public interest”

6. For cancellations of trademark in Vietnam based on non-use grounds, the following parties have standing:

- Any person. Legal interest is not required.
(This person must have the capacity for civil acts of individuals)
- A legal representative acting “in the public interest”

7. For cancellations of trademark in Vietnam based on grounds other than absolute, relative or non-use grounds, the following parties have standing:

- Any person. Legal interest is not required.
(This person must have the capacity for civil acts of individuals)
- A legal representative acting “in the public interest”

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What are the cancellation grounds of International Registration and European Union trademark in Vietnam?

Grounds for cancellation are the same in respect of international mark as they are for national trademark in Vietnam, including: 

 

- Absolute ground

- Relative ground

- Non-Use ground

- Multiple grounds (i.e., on a combination of absolute, relative and non-use grounds).

 

Additional grounds for cancellation of International Registration and European Union trademark in Vietnam may be introduced at a later stage in the proceedings. The deadline for introducing additional grounds is: There is no specific deadline. However, it must be submitted before the issuance of a decision on the cancellation.

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Is it possible to cancel a trademark in Vietnam?

1. Cancellation of a trademark in Vietnam is available for:

- National marks;

- International marks;

- This jurisdiction is not a member of the European Union; we have no European Union Trade Marks

 

2. “Cancellation” of a trademark in Vietnam is defined by legislation as follows:

Article 95 of Vietnamese Intellectual Property Law 2005:

The validity of a Protection Title shall be terminated in the following cases:

 

a. Its owner has not paid the due fees for the maintenance or renewal as prescribed;

b. Its owner has declared to relinquish the rights conferred by the Protection Title;

c. Its owner has no longer existed or the owner of a Mark registration Certificate has no longer engaged in business without a lawful successor;

d. The mark has not been used by its owner or his licensee without justifiable reasons for a term of 5 consecutive years prior to a request for termination of validity, except the use is commenced or resumed at least 3month before the request for termination;

e. The owner of a Mark registration Certificate in respect of a collective mark fails to             supervise or ineffectively supervises the implementation of the rules on using the collective mark;

f. The owner of a Mark registration Certificate in respect of a certification mark violates the rules on using certification mark or fails to supervise or ineffectively supervises the implementation of such rules.

 

Article 96 of Vietnamese Intellectual Property Law 2005:

A Protection Title shall be entirely invalidated in the following cases:

 

a. The applicant for registration neither has the right to registration nor has been assigned such right;

b. The subject matter of industrial property failed to satisfy the protection conditions at the grant date of the Protection Title

 

3. Cancellation actions of a trademark in Vietnam can be filed online at the following URL: https://dvctt.noip.gov.vn. However, it is still in a pilot study and has not been complete yet.

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What are the requirements with respect to recording the license trademark in Vietnam?

  • Required documents

 

For the recordal of a license agreement of trademark in Vietnam, the following documents is required:

 

- ONE original Power of Attorney executed by a person in charge of Licensor or Licensee Party;

- TWO duly executed originals of the Trademark License Agreement which executed by persons in charge of both Licensor and Licensee respectively. In case the Trademark License Agreement includes multi-sheet, the authorized persons of both Licensor and Licensee should sign on each sheet (the initials are acceptable) OR use corporation seals to intercross over all sheet.

 

  • Required content of License Agreement trademark in Vietnam:

 

Please be noted that there is no a standard form of license agreement. However, under Vietnam regulations, the Trademark License Agreement must include the following necessary contents and provisions:

 

+ Full name and address of the Licensor and the Licensee;

+ Bases of the license;

+ Type of the contract;

+ Scope of the license (limitations to use; territorial limitations);

+ Term of license;

+ Price for the license;

+ Rights and obligations of the Licensor and the Licensee.

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What are the additional provisions should sub-licensing trademark in Vietnam be allowed?

In principle, the contents of the secondary Licensing Agreement a trademark in Vietnam may be detailed but shall not be exceeded or extended in relation to the relevant contents of the base Licensing Agreement, such as:

 

- The Licensing time duration in the secondary Licensing Agreement a trademark in Vietnam may be shorter or equal to the base Licensing Agreement but not exceed.

- The Licensing territorial scope in the secondary Licensing Agreement a trademark in Vietnam may be narrower or equal to the extent specified in the base Licensing Agreement.

 

Please be noted that the secondary Licensing Agreement cannot contain terms that allow Licensee Party to improve or amend the licensing trademark in Vietnam.

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What are the typical mistakes when licensing trademark in Vietnam?

The first, the frequent formal and procedural mistakes when licensing trademark in Vietnam can be listed as:

 

- Licensing without checking the legal status of the licensing trademark in Vietnam. For example:

 

. Whether the licensing trademark is valid protection in Vietnam or not?

. In case of signing a secondary trademark licensing agreement, whether the Licensor Party in that secondary Licensing Agreement is permitted by the Licensor Party in the base trademark licensing agreement or not?

 

- Signing the trademark licensing agreement before the establishment of rights of trademark in Vietnam.

 

- In order to licensing an IP object in general, as well as in particular a trademark in Vietnam, such object must be already protected in Vietnam, i.e. it has been granted protection title. Those IP objects not yet registered in Vietnam cannot be licensed.

 

- The Agreement of trademark licensing in Vietnam missing the stamps and/or signatures adjoining all the pages in the Agreement of both Licensor Party and Licensee Party.

 

- Another point, the Agreement of trademark licensing in Vietnam is not registered with the National Office of Intellectual Property (NOIP), therefore, it will be not valid to the third-party. According to Article 148.2 of Vietnam IP Law 2005: “an industrial property object license contract shall be valid as agreed upon by the involved parties but shall be legally effective to a third party upon registration with the state management agency in charge of industrial property rights”.

 

The second, the frequent substantive mistakes when licensing trademark in Vietnam can be listed as:

 

- The licensing contents (such as time duration, territorial scope…) are in excess of the base Trademark Licensing Agreement;

- Missing a clause that defining the obligation to record indications on goods or packaging that such goods are manufactured under a Agreement of trademark Licensing in Vietnam (According to Article 142.4 of Vietnam IP Law 2005).

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What are the recent changes on the fee of trademark in Vietnam?

In accordance with the Circular No. 263/2016/TT-BTC issued by the Ministry of Finance on November 14, 2016; came into effect since January 01, 2017, the official Government’s fees for patent, design and trademark in Vietnam increased. The main changes on the fee of trademark in Vietnam in Circular No. 263 as below:

 

+ The occurrence of Trademark usage fee which calculated based on the number of class(es) under that Trademark Certificate, requested to pay at the time of trademark renewal every 10 years (previously, not counted);

 

+ The fee of trademark opposition in Vietnam will be calculated based on the number of class(es) under the opposed trademark, instead of number of application as before.

 

+ The appeal fee will be calculated based on number of class(es), goods & services that exceed the 6th in a class, instead of number of application as before. It can be viewed as a volume of works that a Trademark examiner needs to perform when re-examines in appeal process. However, this calculation has not been applied yet due to some inadequacies may arise in reality. Thus, at the moment, the National Office of Intellectual Property (NOIP) will not collect appeal fee at the filing stage, a specific Notice on necessary fees will be issued separately.

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