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Viet Nam – An Overview on the TradeMark Protection in the Form Of Questions and Answers part 3

09/11/2016 - 01:55

VIETNAM – AN OVERVIEW ON THE TRADEMARK PROTECTION

IN THE FORM OF QUESTIONS AND ANSWERS

(PART 3)

In the previously post , we have answered some of the questions about overview and registered trademark . Following this post, we will continue to answered about some other issues related to that some problems may be occur during registering a brand and after a brand has been registered.

1. Opposition.

1.1 On what grounds can a trade mark be opposed?

 

The grounds on Which a trademark can be opposed are:

 

  1. The applicant for registration neither has the right to registration nor has been assigned such right.

 

  1. The subject matter of the trademark failed to satisfy the protection conditions at the grant date of the Certificate.

1.2 Who can oppose the registration of a Vietnam trade mark?

 

Any legal entity or natural person can oppose the registration of a Vietnam trademark.

 

1.3 What is the procedure for opposition?

 

During the period from the date a trademark application is published (which takes place within two months from the date of the notice of acceptance by the NOIP) to the date of decision on the grant of a trademark registration certificate, any third party can file a written opposition with the NOIP to oppose against the grant or refusal to grant a trademark registration certificate.

 

2 Registration

 

2.1 What happens when a trade mark is granted registration?

 

Registration of a trademark is published in the Industrial Property Official Gazette and a registration certificate is sent to the owner of the trademark.

 

2.3 From which date following application do an applicant’s trade mark rights commence?

 

Trademark rights commence from the granting date.

 

2.4 What is the term of a trade mark?

 

The term of a trademark is ten years counted from the filing date, and is renewable indefinitely for consecutive terms of ten years.

 

2.5 How is a trade mark renewed?

 

The request for renewal must be filed and the renewal fee be paid within six months before the expiration of the running period, or within six months after the expiration provided that a surcharge amounting to 10% of the renewal fee shall be paid for each month of late filing.

 

3. Registrable Transactions

 

3.1 Can an individual register the assignment of a trade mark?

 

Yes. A trademark owner can assign his/her trademark rights. The assignment (contract/agreement) must be in writing and registered with the NOIP in order to be effective.

3.2 Are there different types of assignment?

 

Yes. For instance, a registered trademark may be partially assigned, or may be assigned with or without the goodwill of the business. However, the assignment is allowed only to the legal entity or individual who fulfils requirements for the person having the right to registration in respect of that mark.

3.3 Can an individual register the licensing of a trade mark?

 

Yes. A trademark owner can license his/her trademark rights. The licence (contract/agreement) must be in writing and registered with the NOIP in order to be effective.

A collective mark is not allowed to be licensed to legal entities or individuals other than members of the collective mark owner.

3.4 Are there different types of licence?

 

Yes.  An exclusive licence permits the licensee, within the scope and term of the licence, to use the property to the exclusion of all others, including the owner. A non-exclusive licence permits any number of licences to be granted and the owner is not barred from using the property. A sub-licence is a licence, the licensor of which is a licensee of the property under another licence.

3.5 Can a trade mark licensee sue for infringement?

 

Yes. If infringement is prejudicial for a licensee, the licensee may request the competent authority to take action if the following conditions are met:

 (i) there is a term of licensing agreement/contract that allows the licensee to do so; and

 (ii) the licensee has acquired a statement in writing from the licensor that the latter has no objection to that action.

3.6 Are quality control clauses necessary in a licence?

 

Yes. Quality control clauses are necessary in a licence and the licensee must guarantee the quality and characteristics of the goods bearing the mark.

 

4. Trademark revocation

 

4.1 What are the grounds for revocation of a trademark?

 

A trademark can be entirely revoked if:

 

  1. the applicant for trademark registration has no right to registration; or

 

  1. the trademark application does not meet the protection conditions at the filed date of the trademark application.

A trademark can be partly invalidated if that part fails to satisfy the protection conditions.

 

4.2 What is the procedure for revocation of a trademark?

 

A request for revocation of a trademark is submitted to the NOIP with the payment of a fee.  Based on the result of the examination of the request for trademark revocation and interested parties’ opinions, the NOIP will make either a decision to entirely or partly grant a notice of refusal to revoke the trademark. When a trademark is revoked, the rights of the owner are deemed to cease to the extent that they have been revoked from the date of the NOIP’s decision on the trademark revocation.

The time period for making a request for revocation of a trademark is 5 years as from the grant date, except for the case where the trademark has been granted due to the applicant’s dishonesty.

 

4.3 Who can commence revocation proceedings?

 

Any legal entity or natural person can commence revocation proceedings.

 

4.4 What grounds of defence can be raised to a revocation action?

Relevant counter-measures should be raised to prove that the grounds for revocation are not applicable, for instance in case a trademark is revoked as “lacking distinctive characteristics”, the grounds of defence can be raised that the mark has acquired the distinctive character through extensive use and has been widely known by customers.

 

4.5 What is the route of appeal from a decision of revocation?

 

The appellant must file a first instance appeal to the NOIP. In case that the appellant does not agree with the NOIP’s decision on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) against the first instance appeal’s decision to the MoST, or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision in accordance with the civil proceedings.

 

 

5. Invalidity

 

5.1 What are the grounds for invalidity of a trade mark?

 

A trademark may be declared invalid in the following cases:

 

  1. in case the use requirement is not complied with and there are no legitimate reasons for the non-use; and

 

  1. if the owner of the registered mark is deceased (if a natural person), or no longer carries out business activities and has no legal successor. Furthermore, the registration of a mark will be invalidated if it was not duly renewed.

5.2 What is the procedure for invalidation of a trade mark?

 

A request for invalidation of a trademark is submitted to the NOIP with the payment of a fee. Based on the result of the examination of the request for trademark invalidation and interested parties’ opinions, the NOIP will make either a decision or a notice of refusal to invalidate the trademark.

 

5.3 Who can commence invalidation proceedings?

 

Any legal entity or natural person can commence invalidation proceedings.

 

5.4 What grounds of defence can be raised to an invalidation action?

 

Relevant counter-measures should be raised to prove that the grounds for invalidation are not applicable, for instance in case a trademark is invalidated as “non-used”, it can be proved with evidence that the trademark has been being used for more than 5 consecutive years (non-use for 5 consecutive years being the ground for trademark invalidation).

 

5.5 What is the route of appeal from a decision of invalidity?

 

The appellant must file a first instance appeal to the NOIP. In case that the appellant does not agree with the NOIP’s decision on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) against the first instance appeal’s decision to the MoST, or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision in accordance with the civil proceedings.

 

Please contact with Our if you need more information about trademark.

 

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