As you may know, Vietnam Amended IP Law has taken into effect from January 1, 2023 with over 100 articles being amended and supplemented. For the main takeaways of all IPRs throughout the Amended IP Law, kindly refer to our article at https://www.kass.com.my/articles/key-takeaways-in-vietnams-latest-ip-law-amendments/.
With the popularity and importance of trademark registration among intellectual property assets of each business, this article focuses on noticeable changes in trademark laws that stakeholders may be concerned about and give attention to.
1. Non-traditional marks
Firstly, sound marks are protected in Vietnam for the first time. Necessary information and documents related to the sound mark for filing:
i) Audio file (digital format .MP3) with file size does not exceed 3 MB, and the document indicates the sound in the form of a graphic (in 5-line stave)
and 
ii) Description on the sound mark: complete description on the sound (for example: the sound made by which kinds of musical instrument, with or without lyrics…)
In addition, the sound mark that is identical or confusingly similar to the national anthem of Vietnam and other countries, and The Internationale are NOT protected.
Regarding three-dimensional mark, under prevailing IP Law and practice, such mark is NOT protected in Vietnam. The grounds for refusal of three-dimensional marks are stipulated in a clearer way in the New Laws, particularly as follows:
|
Old Laws |
New Laws |
|
Article 74.2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: (a) Simple shapes and…, except where such sign has been widely used and recognized as a mark; (b) Conventional signs or symbols, pictures… that have been widely and regularly used and known to many people;
(c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark; (n) Signs identical with or insignificantly different from another person's industrial design which is protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark. |
Article 73. Signs ineligible for protection as marks (Newly added) 6. Any sign that has the inherent shape of the product or a shape that is the result of the technical properties of the product;
(Amended) Article 74.2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: (a) Simple shapes and…, except where such sign has been widely used and recognized as a mark; b) Conventional signs or symbols, pictures or … that are normal shapes of the goods or part of the goods, normal shapes of the packaging or containers of the goods which have been regularly used and widely recognized before the filling of the application; c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, or signs that significantly increase the value of the goods, except where such sign has acquired distinctiveness by use before the filing of the application; n) Signs that are identical with or insignificantly different from another person's industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the mark registration application; |
2. Opposition
Under the Old Laws, opposition procedure is inferred in the provision on “Third party’s observations on the granting”, wherein from the date of publication until the issuance of Decision on granting, any third party shall have the right to express an opinion to the IPVN on the grant or refusal to grant trademark certificate for such application. Such opinions must be made in writing and be accompanied by documents or must cite the source of information for proof.
On the basis of New Laws, the concept of “opposition” is specifically indicated in a newly added article. Accordingly, to avoid the situation of lengthening and delaying the trademark examination process, the time limit for opposition of trademark is shortened to 05 months from the publication of the mark. The opposition must be made into written documents enclosed with supporting documents or sources of information with official fees.
3. Cease of trademark examination to overcome the provisional refusal over the cited trademark
A new provision is added to IP Laws which allows the applicant, when requesting termination (on the ground of non-use in five consecutive years prior thereto without justifiable reason, except where use is commenced or resumed at least three months before the request) or cancellation of the cited trademark, can request to cease examination process of their pending mark to wait for such result. The IPVN shall carry on the examination process then. This provision helps legalize the examination process of the IPVN in case of falling into mentioned circumstances.
4. Distinctiveness assessment of trademark in case of overlapping between trademark, name of plant variety and work under copyright
The addition of provisions on distinctiveness of trademark in case of overlapping with other IPRs such as the name of plant variety and copyright works helps prevent the situation of overlapping rights and difficulties in enforcing rights in such cases. Accordingly, the IP Law prioritizes the prior existing rights.
On the absolute ground, a mark will be excluded from protection if it contains a copy of the work without the work owner’s permission. On the relative grounds, a mark shall be deemed to be indistinctive to be protected if it is a sign falling into one of the following categories:
- Any sign that is identical to 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 work owner.
5. Validity of trademark certificate
According to the New Amended Law, the validity of a trademark certificate faces the risk of being challenged with more grounds on termination or cancellation.
Wherein, two new grounds are added for trademark termination, particularly the validity of a protection title shall be wholly or partially terminated in the following cases:
- The use of the protected mark for goods and services by the mark owner or a person permitted by the mark owner causes users to misunderstand the nature, quality or geographical origin of such goods or services.
- The protected mark has become a common name for the goods or services registered for the mark.
Regarding cancellation grounds, the concept of “bad faith” is newly introduced and is a basis for the real owner of the trademark to claim their trademark.
In addition, the validity date of international trademark registration is newly added. Accordingly, international mark registration with Vietnam designation 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 ending date of the 12-month period from the date of designating Vietnam, whichever comes first. The effective period of international mark registration shall comply with the Madrid Agreement and Madrid Protocol.
