Cancellation against of trademark in Vietnam

28/01/2016 - 1145 views

Under Article 96 of the Law on Intellectual Property of Vietnam (IP Law), the cancellation against of trademark in Vietnam may be requested by a third party. In means that the validity of a certificate of trademark registration may be canceled wholly or partly, by a third party’s request.

 

 

1. Period for filing cancellation request

The prescribed time for filing a cancellation request against a certificate of trademark registration in Vietnam is 05 years from the granting date, except in the case where the certificate is granted due to the Applicant’s bad faith.

 

2. Grounds of cancellation against of trademark in Vietnam

The validity of a certificate of trademark registration may be canceled wholly or partly, by any third party’s request, in the following cases:

  • The applicant has neither had nor been assigned the right to register the mark; 
  • The mark fails to satisfy the criteria of protection at the time of granting the certificate:

(i) The mark, as registered, is confusingly similar to another registered trademark that has an earlier priority date;

(ii) The mark, as registered, identical or confusingly similar to another trade name that has been protected and used;

(iii) The mark, as registered, is identical or confusingly similar to an un-registered well-known mark or reputable mark;

(iv) The mark, as registered, lacks distinctiveness.

 

3. Required documents

For filing a cancellation against of trademark in Vietnam, following documents may be required:

 

3.1. Power of Attorney (POA)

The original POA should be executed by the legal representative. In case the client owns a corporation seal under their jurisdiction, the POA should be signed by the legal representative and then affixed the corporation’s seal. In case the corporation seal is not available, only the signature is acceptable. No further notarization or legalization is required.

 

3.2. Supporting materials

3.2.1. For proving that the mark is registered due to the bad faith action of the Applicant

  • Distribution Agreement, which shows that before the filing date of the registered mark, the Applicant was one of the client’s distributors and not permitted to file any application for trademark similar to the client’s one in Vietnam;
  • Correspondences showing that before the filing date of the registered mark, the Applicant and the client had established business relation and/or contacted each other;
  • Use evidence of the client’s mark in Vietnam before the filing date of the registered mark.

 

3.2.2. For cancellation ground (ii)

For proving that a tradename has been protected in Vietnam, please provide us with the following materials:

  • Certified document from the home Company Registry proving that client had been established and operated continuously before the filing date of the registered mark; and
  • Use evidence of the tradename in Vietnam.

 

3.2.2. For opposition ground (iii)

For proving the reputation of the mark, the following documents should be submitted:

  • An explanation of origin, history, sales volume, turnover and time of continuous use of the mark by the client in home country, Vietnam and/or other regions all over the world;
  • Successful precedent in home and other countries, if any;
  • Survey result on well-known character of trademark in other countries, if any;
  • Trademark registrations in home and from world –wide trademark registries;
  • The advertising expense for the period of last 05 years including materials, brochures of products bearing trademark, typical advertising invoices in home country, Vietnam and/or other regions over the world;
  • Prizes and medals awarded on the trademark by national or international organizations or the mass media;
  • Rating, evaluation of reputation and recordal of well-known of the trademark by national or international organizations or the mass media.

The supporting documents should be accompanied with an Affidavit. Additionally, the Affidavit should be notarized and enclosed exhibits should be affixed by Notary’s seal or have a legal linking with the Affidavit.

 

4. Time and procedures for cancellation against of trademark in Vietnam

In case a request for cancellation against of trademark in Vietnam is made by a third party, the IPVN shall notify in writing the third party’s opinions to the holder within 01 month from the date of receiving the cancellation request, setting a time limit of two months from the date of notification for the trademark holder to present its critical opinion. The IPVN may organize an exchange of opinions between the third party and the holder of the trademark registration.

After considering the opinions of the parties and the available documents, the NOIP shall issue a decision on the cancellation of part of the entire certificate or refusal of the cancellation. If disagreeing with the IPVN’s decision, the cancellation requester or an involved party is entitled to file an appeal against that Decision.

Under the current practice, it often takes several years for the NOIP to examine cancellation against of trademark in Vietnam and come to its Decision.

 

More information about trademark practice in Vietnam can be found HERE.

 

In case you require more information or require advice on cancellation of trademark as well as other IP matters in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: info@ageless.vn