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.
According to the IP legal provisions of Vietnam, the validity of a trademark registration in Vietnam shall be cancelled if that trademark has not been used by its owner or his/her licensee without justifiable reasons for five consecutive years prior to a request for cancellation of validity, except where the use is commenced or resumed at least 3 months before the request for cancellation.
The use of trademark in Vietnam also stipulated by the Law as follows:
a/ Affixing the protected trademark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;
b/ Circulating, offering, advertising for sale or stocking for sale goods bearing the protected trademark;
c/ Importing goods or services bearing the protected trademark.
In case of not having any actual business activities related to the protected trademark in Vietnam for five consecutive years, the trademark owner may consider the followings in order to create an evidence of use to protect IP Rights before a possible request for cancellation:
* SOLUTION 1: No sooner or later than the time of 4 years and a half since the date of registration (or the last use of that trademark in Vietnam) comes, the trademark owner may conduct a similarity trademark search in Vietnam to identify whether any identical or similar trademarks filed by any third-parties.
. If NO, the trademark owner may file another identical application of trademark in Vietnam before the National Office of Intellectual Property (NOIP) to maintain the IP Rights even when the unused trademark’s validity terminated by a third-party;
. If YES, the trademark owner may conduct opposition proceedings against the identical or similar trademark in Vietnam filed by a third-party before the NOIP.
* SOLUTION 2: As prescribed by IP legal provisions as above stated, advertising for sale or stocking for sale goods bearing the protected trademark may constitute an evidence of use (worked in some cases). The trademark owner may consider the placement of an advertisement for the protected goods and services under that trademark on a specific newspaper/magazine which included in the list of publications archivable and scannable by the Industry & Trade Information Centre (ITIC) under the Ministry of Industry and Trade (MOIT) of Vietnam. In practice, the survey conducted on the database of ITC acts as a supporting document to accompany the request for cancellation, preferred by third-parties in cancellation proceedings of trademark in Vietnam.
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