Trademark opposition in Vietnam

Registration in the trend of global integration in trade and legislation, Vietnam promulgated the Law on Intellectual Property (IP Law), in which regulations on opposition are particularly stipulated. In the context of increasing imitation of trademark, procedure of trademark opposition in Vietnam facilitates trademark examination and became an effective administrative measure against misappropriated (imitation) application of trademark.

1. Deadline for filing a trademark opposition in Vietnam

The deadline for filing an opposition to a trademark application in Vietnam is stipulated particularly in the IP Law.

According to Vietnam Trademark system, within 05 months from the date when a trademark application is published on the Industrial Property Official Gazette, an opposition request should be filed to the IP Office of Vietnam (IPVN). Therefore please be noted that possible opposition should be filed as soon as possible in this opposition period.

After this period, Third parties concerned with the registrability of trademark applications can only submit written opinion letters to the IPVN for reference during the examination process. However, the IPVN is not obligated to handle these opinion letters.

2. Grounds of trademark opposition in Vietnam

Under the current regulation and practice, the trademark opposition in Vietnam may be based on single or multi grounds, which are indicated below:

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

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

(iii) The mark, as filed, is a Bad faith application;

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

(v) The mark, as filed, lacks distinctiveness.

3. Required documents

3.1. Power of Attorney (POA)

Pursuant to the IP Law, foreign opponents are not allowed to file opposition requests directly at the IPVN but must authorize a lawful IP representative in Vietnam to proceed with such action based on a required original Power of Attorney (POA). Under current practice in Vietnam, a copy of POA may be acceptable for filing opposition and the original one could be filed later. However, the IPVN will not consider the opposition until the original POA is filed and all formality requirements are satisfied.

In case the third party is a legal entity (company or corporation) and owns a corporation seal under their jurisdiction, the POA should be signed by the authorized person 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

Depending on the grounds of trademark opposition, supporting materials may be included:

• The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising;
• The territorial area in which goods or services bearing the mark are circulated;
• Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;
• Number of countries protecting the mark, provide the copy of Certificate of Trademark;
• Duration of continuous use of the mark and wide reputation of goods or services bearing the mark;
• The picture, photos for advertising products bearing the Trademark;
• Assignment price, licensing price, or investment capital contribution value of the mark (if any);
• Use evidence of the tradename in Vietnam…

The supporting materials 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. Trademark opposition procedure

The opposition request must be in written form and the source of its accompanied supporting materials (if any) must be specified.

A possible opposition will be considered at the time of the trademark application’s examination as to substance.

As a general rule, within 01 month (in fact, the time can extend to 02-04 months) as from the receiving date of our opposition, the IPVN will consider and then may convey its contents to the Applicant and fix about 01 month for them to present opinions. After receiving response of the Applicant (if they submit), the IPVN will inform and give the Opponent 01 month for filing response, submission of opinions.

In some cases, the IPVN may give conclusion upon consideration of opposition without conveying its contents to the Applicant if they think that it is clear enough to conclude. It is possible for the IPVN to organize conversation between the Opponent and the Applicant, upon request of the two parties, to clarify the matter (if necessary).

Upon considering the evidences submitted by the two parties, the IPVN will make a decision to accept opposition or not.

In case you need assistance on trademark opposition in Vietnam, please do not hesitate to contact us via email: rubby@ipcells.com