After successful trademark registration in Vietnam, in order to maintain the validity and effectively exploit the trademark, the owner should pay attention to a number of points such as: fulfil the obligation to use the mark; carry out trademark renewal; proceed with amendments if there is a change in the name and/or address of the owner; trademark licensing, implement measures to protect and handle trademark infringement (if any), etc. In the framework of this article, Ageless will analyze more clearly the notes after the trademark is registered in Vietnam.
1. Obligation of use trademark in Vietnam
Under the Trademark law, the validity of a Certificate of Trademark Registration in Vietnam shall be terminated in case the mark has not been used by its owner or his licensee without legitimate excuses for a term of 5 consecutive years prior to a request of any third-party for termination of validity, except the use is commenced or resumed at least 3 months before the request for termination.
Accordingly, the following main principles will be applied under the examination of a non-use termination request:
- The use of the trademark in Vietnam means the performance of the following acts:
- Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;
- Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;
- Importing goods or services bearing the protected mark.
- The use of the mark must be commenced or resumed 03 months before the filing date of the termination request. Any evidence after this date will not be considered;
- The use of the mark must be conducted by the owner or its licensee under a license agreement. The use of the mark by any other parties without a license agreement may not be accepted.
In fact, there are many trademark owners who have difficulties or do not have the suitable conditions to deploy the use of their trademark registration in Vietnam, in case the owner has difficulties in the use of the mark in commercial activities, especially for products in the conditional business lines such as tobacco, alcohol, gambling, etc., they could consider providing documents to prove that they have tried to use the mark in Vietnam but the actual use has not conducted yet for a legitimate reason. If it is impossible to prove the justifiable reason, as a solution it is advised to re-file the mark before its vulnerable date for avoiding a non-use termination.
The evidence of use that is sufficient to withstand a third-party’s termination request must satisfy two conditions:
- The first, the use of trademark is official and commercial AND
The second, the use of trademark must take place in the territory of Vietnam. The use of trademark such as sales in the duty free area is not considered as a sufficient condition against an non-use termination request from a third-party.
2. Validity of trademark registration in Vietnam
The trademark registration in Vietnam will remain in force for ten years from its filing date and may be renewed every ten years. The renewal request could be filed within 06 months before the expiry date. Further information on trademark renewal procedure in Vietnam can be found HERE.
Trademark owners should also keep in mind that within five years from the date of registration, the mark can be canceled by a third-party on the grounds that the mark does not meet the protection criteria at the time of registration, the protection based on both absolute ground and relative ground; beyond five years, the mark can only be canceled on the basis of bad faith.
3. Change of trademark registration in Vietnam
In order come into force, any change in the name and/or address of the trademark owner as well as the assignment, license shall be required to examine, approve and record by the IP Office of Vietnam (IPVN).
It is a common practice that if the trademark owner fails to proceed with the procedure to change the name and/or address in his pre-existing trademark applications or registrations in Vietnam, IPVN will refuse registrations for similar trademark applications that filed later because the applicant is considered to be different entities.
Failure to proceed with the procedure to change the name and/or address in a timely manner may also result in notices of IPVN or other Authorities not reaching the trademark owner properly, the trademark owner may be lost right to protect his IPRs when these IPRs are invalidated, etc.
According to the current regulation, it is not required to record the license agreement with the IPVN. However, from our experience, registering the license agreement may bring advantages for the owner, such as:
- The license agreement will be reviewed then recorded by the IPVN in accordance with the Vietnam law system;
- It will be more smoothly in proving the entitlement of use of the registered mark in case of a non-use termination;
- The trademark license may be required under some procedures with other Competent Authorities, which are not familiar with IP regulations, such as Tax Office, Custom Authority, Market Management Bureau, etc; so the registration of trademark license before IPVN may facilitate the procedure before such Authorities.
From the above advantages, once completed, the license agreement should be considered for registration before the IPVN.
Further information on trademark license in Vietnam can be found in our article HOW TO Lisence trademark in Vietnam.
The owner of trademark registration in Vietnam is entitled with rights to use or prohibit others from using any identical or confusingly similar mark to the registered mark, accordingly, the trademark owner can consider to take one of the measures to prevent acts of trademark infringement such as sending Warning letter to the infringing party or proceed with administrative or civil measures before Competent Authorities of Vietnam. In practice, administrative measures are the most common and effective at this time. For domestic infringement, trademark owner can file complaint to the IP Enforcement Agencies such as Market Surveillance Department (under the Ministry of Industry & Trade) or IP Inspectorate (under Ministry of Science & Technology), .
For infringements that the related goods are imported from abroad into Vietnam the trademark owner may also consider filing a customs recordal request to the Customs Authorities of Vietnam to prevent any third-party from exporting or importing goods bearing identical or confusingly similar marks.
Should you need more information or require advice on trademark registration in Vietnam as well as other IP matters in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: firstname.lastname@example.org
More information about trademark protection in Vietnam can be found HERE