Spotlight Changes of Vietnamese Trademark Laws

By Linh Nguyen In a previous article, we announced that an overhaul of the Intellectual Property legislation was enacted in Vietnam. The amended Vietnamese IP law (“New IP Law”) came into effect from January 1, 2023 with over 100 articles being amended and supplemented. For the main takeaways and key points of the amended provisions of the New IP Law, kindly refer to our article at https://www.kass.com.my/articles/key-takeaways-in-vietnams-latest-ip-law-amendments/. With the increasing popularity and importance of trademark registration as a key intellectual property asset for  each business, this article focuses on noticeable changes in the new trademark laws that stakeholders may be concerned about and give attention to. 1. Non-traditional Marks Sound Marks It is thrilling that sound marks are now protected in Vietnam for the first time. Applicants may obtain a sound mark registration by submitting the following for filing:

1. Audio MP3 file not exceeding 3 MB  , and a copy of the musical score in a 5-line stave format  ; and
2. Description of the sound mark. For example, “the musical instruments used and whether the sound mark contains t lyrics…”

In addition, a sound mark that is identical or confusingly similar to the national anthem of Vietnam and other countries, as well as the Internationale, among others, are NOT registrable and will not be protected in Vietnam. 3D Marks In respect of three-dimensional marks (3D marks), under prevailing IP Law and practice, such marks are NOT protected in Vietnam. However, the grounds for refusal of 3D marks are stipulated in a clearer way in the new trademark laws, particularly as follows: 2. Opposition Under the Old Law, opposition procedure is inferred in the provision under “Third party’s observations on the granting” that provides any third party the right to express an opinion to the Intellectual Property Office of Vietnam (“IPVN”) on the grant or refusal to grant a trademark certificate from the date of publication of a trademark until the issuance of Decision on granting. Such opinions must be made in writing and accompanied by documents or must cite the source of information as proof. On the other hand, the concept of “opposition” is explicitly indicated in a newly added article under the New IP Law. Accordingly, to avoid the situation of lengthening and delaying the trademark examination process, the time limit for opposition of a trademark is shortened to 05 months from the publication date of the mark. The opposition must be made in writing together with supporting documents or sources of information with official fees.  3. Stay of Trademark Examination to Overcome the Provisional Refusal over the Cited Trademark in the event Termination/ Cancellation Proceedings against the Cited Mark are Filed A new provision is introduced in the New IP Law which allows the Applicant, whose application is objected to on the grounds of a prior cited trademark registration, to request for a stay or suspension of the examination process of the objected trademark application if the Applicant files an action requesting for termination of the said cited trademark on the ground of non-use or cancellation of the cited trademark. The application will be kept in abeyance and the IPVN shall resume the examination process after a decision of the cancellation/ termination proceedings is made. This provision helps streamline  the examination process of the IPVN and ensure that the decisions made by different bodies are consistent with one another in the above-mentioned circumstances. 4. The Assessment of Distinctiveness of a Trademark in the Case of an Overlap Between a Trademark, Name of Plant Variety and/or Copyright Work In case of an overlap with other prior IP rights such as name of plant variety and/or copyright works, the New IP Law prioritizes the prior existing IP rights as provided under the new provisions on distinctiveness of a trademark. This helps prevent the situation of overlapping rights and difficulties in enforcing other prior IP rights in such cases. Under the provisions of  absolute grounds for refusal, a mark will be excluded from protection if the mark contains a copy of prior well-known copyright work without the owner’s permission. For  relative grounds for refusal, a mark shall be deemed to be non-distinctive and will not be protected  if the mark is a sign falling into one of the following categories:

• Any sign that is identical or confusingly similar to the name of a plant variety that has been protected in Vietnam if such sign is registered for a plant variety of the same or similar species, or for products obtained from such plant variety;
• Any sign that is identical or confusingly similar to the name, image of a character or imagery in another person’s copyrighted work and which has been well-known before the filing date, unless it is permitted by the copyright owner.

5. Additional Grounds for Cancellation/ Termination of a Registered Trademark According to the New IP Law, the validity of a registered trademark  faces the risk of being challenged with further additional grounds for termination or cancellation. Wherein, two new grounds are added for termination of a registered trademark, in particular the validity of a registered trademark shall be wholly or partially terminated in the following cases:

• The use of the registered mark for goods and services by the trademark owner or a person permitted by the trademark owner causes the public to misunderstand the nature, quality or geographical origin of such goods and/or services.
• The registered mark has become a common name for the goods and/or services the mark is registered for.

In respect of new cancellation grounds, the concept of “bad faith” is newly introduced that serves as a basis for the real owner of the trademark to cancel a registered trademark that has been registered by another party in bad faith. 6. Validity Date of International Trademark Registrations Designating Vietnam Finally, the validity date of international trademark registration has also been added. Accordingly, an international trademark registration designating Vietnam  under the Madrid Agreement and Madrid Protocol is effective from the day on which the IPVN issues a decision to grant protection, or on the day succeeding the end date of the 12-month period from the date designating Vietnam, whichever comes first. The effective period of international trademark registration shall comply with the Madrid Agreement and Madrid Protocol. If you are seeking assistance regarding trademark establishment and enforcement in Vietnam, please do not hesitate to reach out to us at kass@kass.asia!