The trademark opposition proceeding in Vietnam

1. Which trademarks can be opposed in Vietnam?

The following trademarks subject to opposition in Vietnam:

Vietnamese trademark applications;

Vietnamese designations of International trademarks.

2. Who can be the opponent of the trademark application in Vietnam?

Any natural or juridical person. Legal interest is not required for filing an opposition against a trademark application in Vietnam.

3. What is deadline for filing an opposition to a trademark application in Vietnam?

You can file an opposition when a trademark application is published  in the Industrial Property Gazette of the National Office of Intellectual Property of Vietnam (“NOIP”- for Vietnamese trademark applications), or  in WIPO’s Gazette (for Vietnamese designations of International trademarks) till the date of trademark registration/protection granted

4. Could you please tell us the grounds which we could base for filing an opposition to a trademark application in Vietnam?

You may file an opposition based on the following grounds:

Being signs excluded from trademark protection;

Lacking of inherent distinctiveness;

Indistinguishable;

Bad-faith filing.

5. Could you brief us about the trademark opposition proceeding in Vietnam?

In Vietnam, the applicant is normally given a 1-month period, which may be extended by up to another 1 months, from the first notification by the NOIP to submit their counterstatement or response.

The NOIP may request the concerned parties to provide additional arguments/documents if necessary for the consideration of the opposition. Once arguments and supporting documents from both parties are deemed sufficient, the NOIP may issue their opinion/conclusion on the opposition.

In case that the opposition action concerns any issues that fall beyond the scope of authorization of the NOIP (the right to file the application, for example) the NOIP may request the opponent to submit the case to a court, and  then suspend the examination, awaiting the court’s ruling.

5. If an opposition against an trademark application is filed in Vietnam, would National Office of Intellectual Property of Vietnam issue a Decision on the opposition separately from a Decision on an examination of the trademark application?

Upon filing an opposition against a trademark application in Vietnam, the National Office of Intellectual Property of Vietnam (NOIP) shall not issue a Decision on the opposition. Instead, the NOIP issue an official Letter on opposition after it finishes its examination of the opposition. We are not aware of any legal regulation on filing an appeal against such official Letter.

The above-mentioned official letter is issued separately from a Decision on an examination of the trademark application. In a broader sense, opposition is a separate proceeding and the opposition result is considered as a reference during the substantive examination in Vietnam.

6. Whether we can file an appeal against the decision of the opposition in Vietnam?

As above specified, the NOIP issues an official letter on the opposition, not the Decision.

Also, the practice of opposition proceeding in Vietnam indicates that it is not possible for the concerned party to appeal the afore-said letter.

If the third party wishes the NOIP to re-consider the opposition settlement, he may further submit evidence. However, the NOIP will only re-consider the opposition settlement when the submitted evidence is new, not the one which had previously submitted to the NOIP.

7. In order to cancel the third party’s application,  can we provide the Examiners with information (i.e., the existence of identical/similar trademarks, lack of distinctiveness of the trademark application, bad faith of an applicant, etc.) instead of filing the opposition?  If yes, please let us know the pros and cons regarding an opposition versus providing of information.

In Vietnam, there is no procedure for cancelling the third party’s application as you explained.

Normally, if the interested party wishes the NOIP to consider a cited trademark or the bad faith of the trademark applicant, they need to files an opposition. However, it remains possible for the interested party to provide the NOIP with the information as you mentioned so that the in-charge examiner may consider during the examination process.

(i) Pros and cons regarding an opposition:

If an opposition is filed, it is evident that the examiner is obliged to settle the opposition. In such regard, it will minimize the risk of technical errors which possibly make the examiners not to find out the cited mark so that the trademark application may mature into registration.

We are not aware of the disadvantage of filing an opposition. In light of the above-mentioned, it is advisable that an opposition should be filed even you may determine yourself that the pending trademark is closely similar to your trademark.

(ii) Pros and cons in respect of providing information to the NOIP instead of filing an opposition:

If the information is provided to the NOIP for assisting the examiner during the examination process, the interested party does not have to pay the official fees for such filing. Despite the afore-said, such

information may just be considered a reference source of information. The examiner may ignore such information due to various reasons in a deliberate or unintentional manner. In such regard, it is obvious that the efforts made by the interested party in information provision are highly likely to be pointless.

 

 

 

Leave a Reply

Your email address will not be published. Required fields are marked *

Scroll to top