Under Article 95 of the Law on Intellectual Property of Vietnam (IP Law), the validity of trademark registration in Vietnam may be terminated for a variety of reasons either by its owner or a third party.
1. Termination grounds of validity of trademark registration in Vietnam
The validity of a certificate of trademark registration in Vietnam may be terminated in the subsequent situations:
- The owner fails to pay the renewal fee;
- The owner declares relinquishment of their right over trademark registration;
- The owner no longer exists or engages in business activities and does not have a lawful heir;
- The owner of a registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on the use of such mark;
- The owner of a registered certification mark violates the regulations on the use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations.
- A registered mark is vulnerable to a termination request of a third party if it has not been used by its owner or its owner’s licensee without a justifiable reason for 5 consecutive years before the request for termination, except where the use is commenced or resumed at least 3 months before the termination request.
In respect of ground (i), the trademark validity will be automatically terminated without any Decision/Notice of the IP Office of Vietnam (IPVN);
In respect of ground (ii), the trademark validity will be terminated by a Decision of the IPVN;
In respect of grounds (iii), (iv), (v), (vi), the trademark validity will be considered upon a request of a third party in an official procedure that results in a Decision on terminating/not terminating the trademark validity and could be appeal against by concerning parties.
2. Required documents for termination of trademark registration in Vietnam
For filing a validity termination request against a certificate of trademark registration in Vietnam, the following documents may be required:
- 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 corporate seal is not available, only the signature is acceptable. No further notarization or legalization is required.
- Evidence for the termination. Evidence shall be certified by a Notary Public or accompanied by a Notarized Affidavit.
3. Time and procedures
Termination by the ower’s declaration of relinquishment
If the trademark holder declares relinquishment of the trademark registration in Vietnam, the time limit for the IPVN to issue a Decision is 10 working days from the date of receiving the request.
Termination by request of a third party
In case a request for termination of a certificate of trademark registration 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 termination request, setting a time limit of 02 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 IPVN shall issue a decision on the termination of a part or the entirety of the certificate or refusal of the termination request. If disagreeing with the IPVN’s decision, the termination 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 IPVN to examine and come to a final decision for termination of trademark registration in Vietnam.
More information about trademark practice in Vietnam can be found HERE.
In case you require more information or require advice on termination of a trademark as well as other IP matters in Vietnam, Laos, Cambodia, and Myanmar, please do not hesitate to contact us via email: email@example.com