Let’s Compare Section 74(2)(h) of the Vietnam IP Law with Similar Legal Concepts in the Trademark Laws in China, Malaysia, Singapore and Hong Kong
Refusal of Protection of Trademark by Section 74(2)(h) Zombie Trademark
Your trademark shall be rejected if it is governed by Section 74(2)(h) providing that an applied-for mark contains signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than 5 years, except where the ground for such invalidation is non-use of the mark according to Point d, Clause 1, Article 95 of this Law.
Senior mark (earlier mark) as mentioned in Section 74(2)(h) is materially a dead trademark (in contrast to the live registered trademark provided for at Section 74(2)(e)). The senior mark by Section 74(2)(h) is presumed by the law to have been dead (dead trademark is also known as zombie trademark) but it must be retained as a refusal ground in a certain period of time (ie. 5 years under the law of Vietnam), helping the consumer avoid a possible confusion as to the source of origin where goods or services bearing the dead trademark may be residual in the market while goods or services bearing the junior mark may have entered the market
The dead trademark, which aims to prevent the junior mark (applied-for mark) from registration by reason of a likelihood of confusion, may exist in one of three forms: (a) expired trademark due to renewal non-payment; (b) the owner of senior mark no longer exists or no longer operates without an heir; (c) the owner declared relinquishment of the industrial property rights pertaining to his senior mark.
How do the trademark laws of some Asian countries say about the dead trademark?
Similar to Section 74(2)(h) of the Vietnam IP Law, the China Trademark Law of 2013 in Article 50 stipulates that within one year from the time where a registered trademark is cancelled or declared invalid, or is not renewed upon the expiry of its validity period, the trademark office shall not approve any application for registration of a trademark identical with or similar to the aforesaid trademark
Section 5(3) Hong Kong Trade Marks Ordinance Cap. 559 stipulates “a trade mark which is an earlier trade mark under or by virtue of subsection (1)(a) shall continue to be taken into account in determining the registrability of a later trade mark for a period of 1 year after the date on which its registration expires unless the Registrar is satisfied the trade mark has not been used in good faith in Hong Kong during the 2 years immediately preceding that date”
The 1976 Malaysia trademark law as revised in 2006 is quite similar to the Hong Kong Trade Marks Ordinance Cap. 559 when Article 42 stipulates that where a trade mark has been removed from the Register for non‐payment of the fee for renewal, it shall, nevertheless, for the purpose of an application for the registration of a trade mark within one year from the date of expiration of the last registration be deemed to be a trade mark which is already on the Register except that this section shall not have effect when the Registrar is satisfied either— (a) that there has been no use in good faith of the trade mark which has been removed during the two years immediately preceding its removal; or (b) that no deception or confusion is likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed
In explaining the purpose and legal implications of Article 50 of the China Trademark Law of 2013, the December 2006 guidance titled ”Strategic Partnership and Cooperation between the EU and China on Intellectual Property (IPkey), Standards Trademark Examination and Trials” wrote in the event that a registered trademark is canceled or suspended, or not renewed after the expiry of the validity period, the following may occur if new identical or similar trademark registration is approved without setting up an isolation period: before the goods or services designated by the trademark of the original registrant which is cancelled or declared invalid, or is not renewed upon expiry of its validity period exit from the market, the goods or services of the new trademark registrant have entered into the market, and there will be goods bearing identical or similar trademark produced by two enterprises on the market, which may cause confusion to the consumers. In order to avoid this, it is necessary to apply Article 50
Singapore in its Relative Grounds for Refusal of Registration, the Intellectual Property of Singapore, Version 5 (June 2017), provides for that where the search discloses an earlier trade mark which is an unrenewed mark whose registration has expired no more than one year before the application date of the trade mark, the earlier trade mark will be cited. In such a situation, the Registrar will make it clear to the applicant that the Registrar is invoking Section 8(11) in relation to the citation. This will put the applicant on notice that the citation is in its final year of validity. The same applies to partial renewal where particular classes are not renewed. The applicant may then consider the following options:
- await the end of the Section 8(11) period by requesting for extension(s) of time via Form CM5 to respond to the citation until the expiry of the one-year period to reassess if the citation will remain valid;
- demonstrate to the satisfaction of the Registrar that there was no bona fide use of the mark during the two years immediately preceding the expiry;
- obtain the consent of the expired mark proprietor in the normal way
Malaysia expresses its clear position in the Manual of Trade Marks Law and Practice of 2003 when it considers that there are two reasons for a one-year term under Article 42. Firstly, an expired trademark may still have residual reputation, which may still be confusing with similar trademarks applied for registration during that period. Second, until the mark is actually removed from the register it will still make sense to the public as a registered trademark.
Like Singapore, Malaysia guides the applicant 3 options to overcome Article 42:
(a) that there has been no use in good faith of the trade mark which has been removed during the two years immediately preceding its removal; or
(b) that no deception or confusion is likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.
(c) This is simply to wait until the year has lapsed.
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Article 74(2)(e) of the IP Law states that a mark applied for shall be deemed to be indistinctive if it is or contains signs other than associated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member.
This presentation was prepared and presented according to the invitation of the Vietnam Intellectual Property Association (VIPA) on the occasion of the roundtable "Industrial property representatives with innovations in the system" jointly held by the VIPA and NOIP taking place on July 24, 2018 at the Muong Thanh Hotel, 78 Tho Nhuom Street, Hanoi. Interested readers can view our full article titled “Vietnam to muddle with the zombie trademark and its residual goodwill” at the link: http://bross.vn/newsletter/ip-news-update/Vietnam-to-Muddle-with-the-Zombie-Trademark-and-Its-Residual-Goodwill-1313