Trademark Oppositions in Vietnam

Oppositions in national trademark registration procedure in Vietnam

 

A trademark is any sign that can be represented graphically and capable of distinguishing goods or services.

After filing the trademark application, there is an examination step in which the examiners from the Patent and Trademark Office checks the proposed description of goods and/or services associated with the given mark and decides whether it can be registered or not.

1.                  Trademark opposition filing deadlines in Vietnam

According to the national jurisdiction, the term of opposition for national trademarks in the initial opposition term commences on the publication date of the trademark application and expires at the date of issuance of a decision granting protection to the trademark.
For international trademarks, the opposition term is 12 months from the date the International Bureau issues the notice to the NOIP.

Given the short time for filing an opposition, most owners of major or valuable trademarks subscribe to the Official Gazette (which contains a list of trademarks published for opposition or have services that monitor the Official Gazette for publication of potentially conflicting trademarks.

2.                  Trademark opposition parties in Vietnam

It is important to note that, at this stage, the official examiner is no longer involved with the application.

The opposition to the grant of a trademark application may be filed by the owner of previously registered trademark or of a well-known trademark or by any other owner of previously registered intellectual property rights: trademarks, company names, domain names, author’s rights, etc.

The opposition must be filed in writing and accompanied by payment of the official opposition fee. If the fee is not paid, the opposition is not taken into consideration by the Office.

The opponent has to prove that there are valid grounds as to why the trademark applicant is not entitled under law to register or to continue holding the mark.

3.                  Trademark opposition grounds in Vietnam

The grounds of opposition must contain a statement showing how the petitioner would be damaged by the registration of the pending trademark, as well as a statement of the grounds for opposition.

An opposition can be filed based on absolute or relative grounds. The absolute grounds may be based on a descriptive or non-distinctive character of the trademark filed for registration, on a conflict with official signs, etc.

The relative grounds state that a trademark is confusingly similar to an existing registered trademark or that it conflicts with an existing prior common law rights established. An opposition based on relative grounds can only be filed by an owner of any prior relative rights.

4.                  Defense to a trademark opposition in Vietnam (answer to an opposition; counter-statement)

The owner of a pending application is given a „notice of opposition” (a copy of the opponent’s claims) and should submit an answer to an opposition filed before the Patent and Trademark Office. If he does not submit a counter-statement, his trademark application is dismissed.

The defense usually consists of a number of simple denials of the notice of opposition.

At this state, there is no need to submit any evidence in support of the defense of the opposition.

There is no official fee to be paid for filing the counter-statement.

5.                  Examination and decision in a trademark opposition file in Vietnam

It is a common procedure that the parties (the trademark applicant and the opponent) come to a settlement agreement regarding use of the trademark (usually, this means a limitation of the number of classes for the pending trademark or adding an element of distinctiveness).

If the opposition is, by any reasons, not settled amicably between the two parties, the opponent must then file evidence in support of the opposition and the applicant must submit his own evidence in support of the grant of the application.

If it is the case, the opponent must also provide proof of use for his previously registered trademark, over five years before the date of advertisement of the opposed application.

Based on the papers filed by each party, or, in some cases, also based on an oral hearing, the Patent and Trademark Office comes up with a decision regarding the grant of the pending trademark.

6.                  Appeals to a trademarks opposition decision in Vietnam

An opposition decision may not be appealed.

If you are facing oppositions in national trademark registration procedure in Vietnam, please contact us at office@trademark-oppositions.com.