Trade Marks 2019 Comparisons

Last Updated March 01, 2019

Contributed By ALIAT Legal

Law and Practice

Authors



ALIAT Legal is an intellectual property and business law firm, with its head office in Ho Chi Minh City and four other offices, in Hanoi Capital, Ha Tinh Province, Can Tho City, and Phnom-Penh, Cambodia. The firm acts for both domestic and international clients on matters relating to trade marks, industrial design, trade names, trade secrets, copyright, the licensing and assignment of intellectual property rights, and dispute resolution concerning intellectual property.

The current Vietnam IP Law provides for different types of trade marks, including trade marks and service marks (collectively referred to as “trademarks”), collective marks, certification marks, associated marks, well-known marks and unregistered marks.

Any sign, including words, devices, letters, numerals, three-dimensional signs, a combination of colours, sounds, etc, as well as the combination of such signs, might be eligible for protection as a trademark.

A three-dimensional sign might be eligible for registration and protection as a trademark, but a specific definition of the condition of protection is still not yet available in the current Vietnam IP Law. Practically, a three-dimensional sign is accepted for protection as a “three-dimensional trademark” only when it is recognised as a widely used trademark in the market.

All rights to such trademarks are established based on statutory law rather than case law, except for well-known trademarks and those exceptional cases where signs have acquired secondary meaning through wide use for goods and services in the market.

Company names and trade names are regulated under the Vietnam IP Law but not types of trademark. They are also protected through practical and lawful use.

In principle, trademark rights are established by obtaining trademark registration or a statement of protection from the Intellectual Property Office of Vietnam (“IP Vietnam”) following the registration process stipulated by law.

Unregistered trademarks satisfying the criteria of Article 75 of the Vietnam IP Law will be recognised and protected as well-known trademarks by a statement from IP Vietnam or a decision of a judiciary body.

Distinctiveness is required as the basic standard in registering different types of trademarks. However, Article 74.2.a provides an exception wherein common and simple devices, signs, numbers, numerals, or letters of uncommon language could be accepted for protection as trademark when they acquire secondary meaning via practical use in the market.

Trademark applications are filed with IP Vietnam, which is the only State Register in charge of the National Trademark Registry. Trademark registration is recorded into the National Trademark Registry. However, details are published in the Industrial Property Gazette and are available only in the Industrial Property Digital Library (IP LIB) monitored by IP Vietnam.

There is only one system of trademark registration in Vietnam, which is managed and monitored by IP Vietnam.

While it is not statutorily required, a pre-filing search is advisable. It is possible to search the database of IP Vietnam (ie, IP LIB) for prior registered trademarks or trademarks that are already filed but have not yet been registered, provided that such filed application is published in the National IP Gazette, to see whether there is any prior obstacle. IP Vietnam does not provide a search service but IP Agents can provide support and issue advice on the availability and possibility of use of the trademark.

There is no database of trademarks that are in use but have not yet been registered or filed with IP Vietnam.

The formal and basic requirements for registering a trademark are as follows:

  • the application must include the full name, nationality and full address of the applicant;
  • a specimen of the trademark must be provided, at a maximum size of 8cm x 8cm;
  • a list of goods/services bearing the trademark must be supplied, listing each item and classification in accordance with the international classification of goods and services for the purpose of registration of a mark under the Nice Agreement (IP Vietnam adopts the 11th Edition while also issuing the same in Vietnamese); and
  • the application must include a Power of Attorney, duly signed by the applicant if the application is filed through an IP Agent.

Application and all documents filed with IP Vietnam must be in Vietnamese.

Organisations and individuals may register marks to be used for goods they produce or services they provide. Organisations and individuals that conduct lawful commercial activities may register marks for products they are marketing but that are produced by others, provided that the producers neither use such marks for their products nor object to such registration. Lawfully established collective organisations may register collective marks to be used by their members under regulations on the use of collective marks. Organisations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services.

A sign can be registered as a trademark if it is a visible sign – eg, it is in the form of letters, words, names, phrases, symbols, devices, pictures, photographs, or any combination of these elements, in one or more colours. Scent and sound are not eligible for registration and protection as trademarks. A design and a three-dimensional sign can also be registered as an ordinary trademark in Vietnam. 

Other signs that are protected by the Vietnam IP Law besides trademarks include geographical indications (the sign used to identify a product as originating from a specific region, locality, territory or country), trade names (the designation of an organisation or individual used in business activities in order to distinguish the business entity bearing such trade name from other business entities in the same business sector and area), industrial designs (the outer appearance of a product embodied in a three-dimensional configuration, lines, colours or a combination of such elements) and domain names. Rights to an industrial design or geographical indication are established based on statutory law. Rights to trade names arise out of lawful use, while rights to “.vn” domain names are established by registering with the Vietnam Internet Network Information Centre (VNNIC).

Formality Examination and Publication

Within one month of the filing date, an application undergoes the formality examination. If the application meets formal requirements, an official notice of formal acceptance will be issued, followed by the publication in the National IP Gazette within two months.

Substantive Examination

Upon publication, the application continues to undergo substantive examination to determine the registrability and availability of the trademark. If the trademark is registrable and available, IP Vietnam shall issue notice on the acceptance of registration, giving three months for the applicant to pay the granting and registration fee. Otherwise, IP Vietnam shall issue a provisional refusal notice, setting a three-month time limit (which is extendible) for the applicant to respond. Failure to respond in due course or an irrational response will result in a decision of refusal, which is subject to appeal within 90 days on the condition that the applicant files a response against the provisional refusal.

Either the trademark registration, upon granting, or the decision of refusal, upon issuance by IP Vietnam, will be published in the National IP Gazette.

A multi-class application is acceptable in Vietnam, subject to the payment of an additional fee. It is worth noting that a list of goods and services covered in the application must be specified item by item, and that an additional fee shall be charged for each further item after the seventh one in each class.

Vietnam is a first-to-file jurisdiction that does not require use in commerce or intent to use for a trademark application. However, upon registration, if the trademark is not lawfully used in five consecutive years, it will be vulnerable to invalidation by IP Vietnam if challenged by any third party.

Vietnam does not allow the registration of series marks, so separate trademark applications should be filed with IP Vietnam if the applicant wants to protect all of the series marks.

As stipulated in the Vietnam IP Law, the trademark registration process takes 12 months from the filing date of the proper application, provided that no obstacle (registrability of mark, opposition by any third party, etc) occurs during the course of examinations. Practically, it might take up to 14-16 months due to the backlog and heavy workload at IP Vietnam.

Vietnamese and Vietnam-based individuals and organisations may file trademark applications with IP Vietnam directly or through authorised representation – ie, a licensed IP agent. A foreign applicant who has no domicile or place of business in Vietnam must be represented by an authorised IP agent before IP Vietnam.

Typically, the estimated cost for a trademark registration of a single word mark in one class comprising up to six items of goods or services without claiming priority rights is approximately USD400, including an official charge and attorney’s fee.

Article 73 of the Vietnam IP Law provides that a trademark can be refused based on the following absolute grounds: 

    1. if the marks are signs that are contrary to public order or prejudicial to national security; 
    2. if the signs are merely colours and are neither combined with character signs or figure signs nor presented in the form of character signs or figure signs; 
    3. if the signs are identical or confusingly similar to national flags or national emblems, names of Vietnamese State bodies or leaders, political organisations, etc, or international organisations (unless permitted by such bodies or organisations);
    4. if the signs are identical or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries; 
    5. if the signs are identical or confusingly similar to certification seals, check seals or warranty seals of international organisations that require their signs not to be used (unless such seals are registered as certification marks by such organisations); 
    6. if the signs are lacking in distinctiveness, such as simple shapes and geometric figures, numerals, letters or scripts of uncommon languages; conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and are known to many people; signs indicating the geographical origin of goods or services; signs whose characteristics are descriptive of goods or services; or words or phrases that are liable to describe the legal status or business lines of the mark proprietor; and
    7. if the signs cause misunderstanding or confusion, or deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

Where a trademark is provisionally refused for registration based on the grounds that it is descriptive of the goods or services, or that it is a sign that lacks distinctiveness as stipulated in f) and g) under 1.15 Refusal of the Registration of a Trade Mark above, in order to overcome the refusal, the applicant should provide IP Vietnam with evidence of the wide use of that mark (eg, the time of beginning of the use, present scope and level of use, etc) and evidence to prove the distinctiveness acquired from the use. The grounds for refusal as mentioned in a), b), c), d) and e) above are impossible to overcome.

In the ex-officio examination, IP Vietnam not only examines whether the subject trademark should be refused on absolute grounds and/or whether it is in conflict with prior-filed or registered trademarks that are identical or confusingly similar, in the name of the other party – it also considers prior rights to trade names, well-known trademarks, industrial designs and geographical indications.

Opposition procedures are not available during the registration process under the current Vietnam IP Law. However, third party observation is acceptable.

Upon publication of the application in the National IP Gazette after completion of the formality examination, any third party can file a third-party observation comprising arguments and evidence to request IP Vietnam not to grant registration for the subject trademark. Generally, upon receipt of such observation, IP Vietnam issues a notice informing the applicant of the observation and setting a time limit of one month for the applicant to respond. The applicant can choose whether or not to file a response against a third-party observation. However, it is advisable to file a response in order to provide IP Vietnam with sufficient and adequate information and documentation to examine the application.

Upon completion of the substantive examination, IP Vietnam shall issue an official notice to the third party to notify its agreement or disagreement with the third-party observation, enclosing a substantive examination result – ie, notice on acceptance of granting registration or provisional refusal notice.

During the registration process and prior to the completion of the substantive examination (ie, issuance of notice of acceptance of registration or provisional refusal notice), it is possible to request the revocation, change, amendment or correction of a trademark application. 

It is worth noting that a change of trademark and/or list of goods and services covered in the trademark application should not broaden the scope of protection of the existing application. In such a case, application will be re-examined.

A written request for revocation/ withdrawal of a trademark application must be filed with IP Vietnam. Applications filed through a representative IP agent and requests for revocation/withdrawal should be accompanied by a power of attorney authorising such IP agent to revoke/withdraw the application at the discretion of the applicant.

Pursuant to the current Vietnam IP Law, assignment of a pending application is acceptable and IP Vietnam shall record the subsequent application and issue an official notice to both parties. Trademark registration or provisional refusal shall be issued under the name of the subsequent applicant. 

A licence for use can be granted as per an agreement between the parties concerned during the registration of the trademark. However, a licence contract is recorded by IP Vietnam only for a registered trademark.

If the mark is provisionally refused at the substantive examination, the applicant will have three months from the issuance date of the provisional refusal notice to file a response. This time limit is extendible one time for a further three-month period. Failure to respond in due course or an irrational response against the refusal notice will result in an official refusal decision. 

Within three months of the decision date, the applicant is entitled to file an appeal against such decision to the Director of IP Vietnam at first instance (first appeal). If the applicant disagrees with the settlement decision at the first appeal, they are entitled to lodge a second appeal at a higher level – ie, with the Minister of Science & Technology – within 30 days. 

Another option for the applicant is to file a lawsuit with the Administrative Court in accordance with the Law on Administrative Procedures against the refusal decision or the decision on settlement of the first appeal or second appeal within one year from the date the applicant receives or knows about these decisions. It is worth noting that these two actions are not allowed to be performed at the same time, so it is usual to proceed with the appeal(s) then a lawsuit with the Administrative Court if the applicant does not satisfy the appeal settlement. 

Vietnam adopts the first-to-file principle, and no use or declaration on intent to use is required before the registration is granted.

Prior to the completion of the substantive examination, the applicant may divide the trademark application into different divisional applications. Upon division, there exists the primary application and the newly divided applications, which are so-called “secondary applications”.

The primary application shall continue through the examination as normal, while secondary applications shall undergo the examination process as new applications, including the formality examination, publication of the application and the substantive examination. Secondary applications shall have a new filing date but enjoy the priority filing date of the primary application. The applicant is required to pay all fees for the filing application, publication and examination, but is exempt from the fee for claiming priority rights.

The initial term of protection is ten years from the filing date of the application. This term can be renewed for unlimited terms, each of ten years. A request for renewal can be filed with IP Vietnam within the six months before the expiration date. A grace period of six months after the expiration is acceptable, but an additional fee will be charged for each month of late filing.

The Vietnam IP Law provides full respect to the territorial principle. The replacement of a registered trademark without prior consent, authorisation and agreement of the trademark proprietor is regarded as an act of infringement, as is circulating goods with a substituted trademark into the market. Parallel import is acceptable in Vietnam.

Vietnam is a member of both the Madrid Agreement and the Madrid Protocol, and follows the requirements and regulations of the system. Before 15 January 2018, an applicant had to file an appeal against the provisional refusal notice issued by IP Vietnam. However, upon the effective implementation of Circular 16/2016/TT-BKHCN, an application filed under the Madrid Agreement and/or Madrid Protocol follows the same procedures for examination, response to official actions, including provisional refusal, and appeals as those of a national application. 

Incorrect information such as the name, address or nationality of the applicant can be fixed by filing a request for amendment and correction by the applicant. However, incorrect information in terms of rights to file the application might establish bad faith and serve as grounds for refusal of the application or invalidation of the registration. IP Vietnam will consider and decide on such issues if the observation or invalidation request is filed with the office. Otherwise, it will be determined at the competent courts.

The adjustment of a specimen of a registered figurative trademark may be accepted if it does not create a substantial change in the trademark specimen and principally does not broaden the scope of protection of the existing registration.

Vietnam IP Law does not stipulate the use of denotation such as ® and/or ™. However, the regulation on administrative sanctions against administrative violation of laws in the field of industrial property stipulates a monetary fine for not using such denotation, or for wrongful use of such denotation. ® or “registered trademark” is used to denote that the trademark is registered, while ™ is usually used to denote that the concerned sign is used as a mark in commerce.

Assignment of a trademark is acceptable for either a registered trademark or a trademark under a pending application. Assignment must be made in writing and must be recorded by IP Vietnam in order to be legally effective. It is important to note that assignment should not cause any confusion as to the properties or origin of the goods or services bearing such trademarks. Therefore, all identical or similar marks in respect of identical or similar goods and services in the name of the assignor must be assigned together.

The assignment of a trademark shall be published after it is recorded by IP Vietnam. The assignee, as the subsequent applicant or subsequent proprietor, shall have the exclusive right to the trademark from the date of publication.

Request for recordal of a trademark assignment must be filed with IP Vietnam, and accompanied by a valid assignment agreement. Either the assignor or the assignee can request such recordal of the assignment. If the assignment meets the conditions under the Vietnam IP Law, IP Vietnam shall issue a notice recording the assignee as the subsequent applicant for a pending application, or a decision on the recordal of the assignment, recording the assignee as the subsequent proprietor of a registered trademark.

As stipulated in the Vietnam IP Law, trademark assignment must be recorded by IP Vietnam in order to be effective. Failure to apply for approval of an assignment may jeopardise the validity of the assignment. 

It is also important to note that rights to the assigned trademark are accrued to the assignee only when the assignment is approved and recorded by IP Vietnam. During the recordal process, the assignor is still the lawful proprietor of the trademark and liable for any appeal, complaints, lawsuits and the like relating to such trademark.

Pursuant to the Civil Code, the rights to trademarks are property rights and therefore subject to rights in rem, and theoretically can be given as a security, assigned by way of security or levied in execution, pursuant to provisions on security transactions.

Practically, such transactions encounter difficulties and shortcomings, especially in valuation, so are hardly ever accepted by credit institutions.

Licensing of rights to a trademark must be established in the form of a written contract (trademark licence contract), which shall be valid as agreed by the parties involved but shall be legally effective against a third party only upon registration with IP Vietnam. Any type of licence agreed by the parties and not contradictory to the law can be accepted, including exclusive licence, non-exclusive licence, sole licence, sub-licence, partial licence, etc. Validity of a trademark licence contract shall be automatically terminated upon the termination of the licensor's trademark rights.

A request for registration of a licence agreement, accompanied by a valid licence contract, can be filed by either the licensor or the licensee. A certificate of registration of the licence agreement shall be issued by IP Vietnam upon completion of the examination. The same is also published in the National IP Gazette.

The trademark licence contract shall be valid as agreed by the parties involved but shall be legally effective against a third party upon registration with IP Vietnam. During the gap between the licence being entered into and its registration, the licence will only be effective between the parties and shall not be recognised by any third party.

The validity of a trademark licence depends on the validity of the trademark registration. The renewal of a licence is required following the renewal of the trademark registration if the parties wish to continue such licence. Therefore, it is not practical or acceptable to grant a perpetual licence in Vietnam.

A written licence contract executed by the parties is compulsory. In addition, a licence contract is required to contain at least the following information:

the full name and address of the licensor and licensee;

  • grounds for the licence;
  • the type of licence;
  • the scope of the licence, including limitations on right to use and territory;
  • the licence term;
  • the licensing price (royalty); and
  • rights and obligations of the licensor and the licensee. 

The right to use collective trademarks must not be licensed to organisations or individuals other than members of the owners of such collective marks.

Opposition against a trademark application is not available under the current Vietnam IP Law, but a third-party observation with a request not to grant registration of a certain trademark is permitted. Grounds for such observation and requests can be absolute grounds and “dishonesty”. Such observation must be filed after publication of the application and prior to the completion of the substantive examination of said application. No extension of time for filing an observation is accepted.

Any organisation or individual may file a third-party observation themselves or through the authorised representatives (eg, a licensed IP Agent). The estimated cost for such a third-party observation ranges upwards from USD500. 

Under the procedure of third-party observation, no definition of discovery is available but a similar system applies – namely, evidence collection. The requesting party is obliged to submit arguments and evidence to support the request. Such arguments and evidence are initially considered by IP Vietnam, and will be forwarded to the applicant for response and counter-arguments. The examination of the application is performed in parallel with the consideration of third-party observations and arguments, and documents provided by both parties.

If necessary, IP Vietnam may organise a face-to-face meeting between the third party and the applicant, enabling the parties to discuss and clarify the dissenting opinion. The final decision is made by IP Vietnam under its sole discretion.

Upon completion of the examination of the trademark application, IP Vietnam shall inform the requesting party if it agrees or disagrees with the arguments. If a party disagrees with the decision of IP Vietnam, it can file an appeal with a higher level, including the Director of IP Vietnam and/or the Minister of Science & Technology, or can initiate a lawsuit at the competent administrative court.

Pursuant to the applicable laws, civil, administrative and criminal remedies are available as a method for a trademark owner to enforce their rights over a trademark against an infringement, which is applicable depending on the nature and level of the violation. In some cases, the applicable laws allow the competent authorities to use injunctive reliefs or measures to control imported and exported goods relating to intellectual property, etc, in order to avoid the expansion of an infringement. 

Under the administrative remedy, the people’s committee, anti-counterfeiting police, market control authority, inspectors of science and technology, customs, etc, are competent to handle the infringement. A monetary fine of up to VND250 million for an individual and up to VND500 million for an organisation might be imposed on the infringer.

Regarding the civil remedy, the trademark owner may seek enforcement by initiating a lawsuit at the civil court, in line with the Code of Civil Procedure. The Court may apply one of or a combination of the following measures:

  • compulsory termination of the infringing acts;
  • compulsory public apology and rectification;
  • compulsory performance of civil obligations;
  • compulsory payment of damages for losses, which includes the attorney’s fee; or
  • compulsory destruction, distribution or use for non-commercial purposes of goods, raw materials and materials, and facilities used principally for the production or trading of goods that infringed intellectual property rights, provided that such destruction, distribution or use will not affect the exploitation of the rights of the trademark owner.

Criminal prosecution against trademark infringement is also available under the Penal Code. 

Trademark registration is the base from which to pursue an infringement case. However, for unregistered trademarks it is necessary to prove that the trademark is well known and that rights to such trademark are established accordingly.

A trademark owner can initiate a lawsuit against trademark infringement at a civil court from the district level upward, where the defendant resides or is located. Criminal prosecution cannot be initiated by a trademark owner but by the competent agents at the criminal court. 

The decision on granting the trademark registration or the decision on the recognition of a well-known trademark by IP Vietnam serves as the legal basis for action against infringement. The decision on the invalidation or cancellation of the validity of the trademark registration concerned might jeopardise any action against trademark infringement.

In addition, upon request by the competent authorities, IP Vietnam may issue an expert opinion on potential infringement or non-infringement, which might serve as a reference for competent authorities to handle the infringement case.

Declaratory judgment proceedings are not available in Vietnam.

Cases in Vietnam go through two trials before final settlement, which is known as “two-tier proceeding” or a “final after two trials” system. The first instance of trademark infringement cases is generally handled by a basic district court. The second instance is handled by the people’s court at the next higher level.

The party who deems that an effective judgment or ruling is erroneous may file a petition for retrial with the competent court at the next higher level.

The prevailing laws of Vietnam do not require the trademark owner to fulfil any prerequisite before filing a lawsuit. Formal demand letters, warning letters, mediation, etc, could be the options for trademark owners before initiating a lawsuit. Only certain remedies exist for unregistered trademarks (except for well-known ones), including cease & desist letters, warning letters, etc, until the trademark is registered.

For well-known trademarks, apart from certain remedies mentioned above, the trademark owner may file a lawsuit with the submission of arguments and evidence to prove that the trademark, though not yet registered, is already well known and recognised by customers in the market.

It is not compulsory for a party to a dispute to be represented by a lawyer. However, it is advisable, in order to ensure compliance with formal requirements and to better protect the legitimate rights of the party.

Pursuant to the IP Law and the Civil Code, preliminary injunctions that are available upon or after the initiation of the lawsuit include retention, seizure, sealing, prohibiting any alteration of the original state, prohibiting any movement, prohibiting transfer of ownership, etc. 

The owner of intellectual property may request the court to apply the preliminary injunctions if there is a danger of irreparable damage to the intellectual property right holder or if goods suspected of infringing intellectual property rights or evidence relating to the act of infringement of industrial property rights are likely to be dispersed or destroyed unless they are protected in time.

In some cases, the plaintiff is requested to submit a guarantee letter and to deposit a certain amount of money, precious metals, precious stones or valuable papers as determined by the courts, which must be equivalent to the property obligation to be performed in order to protect the rights and interests of the party(ies) against whom the provisional emergency measures are applied. Based on the certain advance deposit submitted, the court will request the plaintiff to compensate the defendant’s loss if the request for preliminary injunctions is groundless.

A potential defendant should pursue and follow the case in order to protect itself. The defendant may submit protective briefs along with evidence proving their non-infringement, or may make a counterclaim for the damages or for the challenge of the validity of the registered trademark to the Court. 

In addition, the potential defendant can file a separate request for invalidation or cancellation of the validity of the trademark registration with IP Vietnam to challenge the rights of the plaintiff.

Pursuant to the civil proceeding, all evidence is required to be disclosed to the involved parties before being presented at the hearing. 

Besides, during the course of a two-tier trial, the parties involved can obtain relevant information and evidence from the adversarial party or a third party by any legitimate measure or discovery device. Permissible evidence includes readable, audible or visible material, physical evidence, testimony of the parties and witnesses involved, assessment, customary practice and asset valuation. 

If the parties involved cannot collect the necessary information and evidence despite their efforts to take all measures, they may request the court to obtain such documents by taking testimonies of the parties and witnesses involved, arranging meetings between said parties and witnesses, requesting expertise, deciding on the valuation of properties or requesting the appraisal of property prices, conducting on-site inspections and appraisals, entrusting the collection and verification of the documents and evidence, and requesting individual agencies or organisations to supply readable, audible and visual materials or other exhibits related to the resolution of the civil case or matters.

To initiate a lawsuit, the plaintiff must be an individual, organisation, legal person or entity with a direct interest in the case, and there must be an existing defendant with an existing case wherein claims, facts, excuses and reasons are specified and, especially, it must be under the jurisdiction of civil proceedings accepted by the competent courts. Of course, proof, evidence and valid documentations should be submitted.

There are no special provisions for lawsuits in trademark proceedings that differ from non-intellectual property proceedings.

Supplementing the lawsuit with additional claims, demands and arguments is acceptable. Depending on the moment of the expansion of the request, there may be a disparity in the scope of demand. Accordingly, before the hearing is opened, the plaintiff can supplement the request, without any limitation. If the plaintiff changes their request upon the hearing, such change or supplementation will be accepted only if it is not beyond the scope of their original claims.

The defendant is entitled to file counterclaims against the plaintiff, provided that such counterclaims are related to the plaintiff's claims or set off the obligations claimed by the plaintiffs. The defendant is also entitled to make independent claims for persons with relevant interests and/or obligations, and such claims are relevant to the lawsuit settlement. For counterclaims and independent claims, the defendant shall have the rights and obligations of the plaintiff provided by law. If the counterclaims or the independent claims are not accepted by the court to be resolved in the same case, the defendant may initiate another lawsuit.

Representative or collective actions are permitted under the Vietnamese legal system. 

If there is more than one party on one side for a joint action, all parties may recommend a representative or representatives to participate in the action. The litigation conduct of such representatives binds all parties represented, and the appointed representative is entitled to exercise rights and obligations within the scope of authorisation as agreed by the parties. However, in order to modify, relinquish or admit any claims of the opposing party, or to reach a settlement, consent from all parties must be received. 

If the trademark owner made false allegations or groundless threats, the defendant is entitled to make claims against the plaintiff for damages and a public apology in a separate trial. In addition, when committing an unfair competition act (eg, defamation) that affects the normal business and reputation of the defendant, an administrative fine shall be imposed on the trademark owner, who shall also be forced to make a public apology.

The necessary parties to an action for infringement are those parties whose rights are infringed, including the trademark owner, authorised user, lawful licensee and any individual or organisation who suffers from damage caused by such acts of infringement or who unveils that the infringement acts cause damage to consumers or society, and, of course, the alleged infringer. 

The owner of an unregistered trademark is entitled to file an action for infringement in the case of a well-known trademark, if they have proof, evidence and documentation to prove that the trademark concerned has been recognised as being “well known”.

The most important factor to determine whether the use of a sign constitutes trademark infringement is the existence of confusion or the misleading of consumers/end-users, as well as the similarity of the signs in question and the similarity and relevance of the goods/services bearing the signs. It is worth noting that similar goods means the goods are similar in respect of function, usage, manufacturing, sales channels and consumer target, etc, or that relevant consumers deem them to have a certain association and are likely to be confused. Similar services means the services are similar in respect of purposes, content, manner, target, etc, or that consumers deem them to have certain association and are likely to be confused.

For well-known marks, goods or services bearing the suspected sign may not have to be identical, similar or related to the goods or services bearing the well-known mark but must be capable of misleading customers as to the origin of services or goods or create wrong impressions about the relationship between the producer or trader of such goods or services and the owner of the well-known mark.

It is necessary to establish that the defendant has used the sign as a trademark rather than purely descriptively, as the trademark owner does not have the right to prevent others from purely using people's names, descriptive marks of type, quantity, quality, utility, value, geographical origin and other properties of goods or services. 

To defend itself against a charge of infringement, the defendant may argue that its use of a trademark is out of the scope of protection of the registered trademark, or that such use does not fall under the circumstances where the owner has the right to prohibit; they may also prove that its trademark is not considered similar to the plaintiff’s trademark, or that there is no likelihood of confusion between its goods and services and those bearing the plaintiff’s trademark.

The defendant may also file a request for invalidation or cancellation of the validity of the plaintiff’s trademark registration with IP Vietnam on the following grounds:

  • non-use for five consecutive years;
  • the plaintiff’s trademark did not meet the requirements for protection at the time of being granted (the time limit for this ground is five years from the date of registration); or
  • dishonesty of the plaintiff in filing the trademark registration.

Expert opinion/assessment issued by independent experts or organisations who have expertise and competence and/or the results of surveys conducted by accredited organisations on the likelihood of confusion, secondary meaning, genericness and such may be accepted as evidence or a source of reference when such materials meet the formal requirements by law. Expert opinions from well-reputed individuals and assessments from IP Vietnam and/or the Vietnam Intellectual Property Research Institute (“VIPRI”) are used in practice by the court as the basis for judgment.

Under the prevailing law of Vietnam, trademark infringement may constitute an administrative or criminal offence, depending on the nature of the case, the scope of the infringement, and the seriousness of the acts.

For an administrative offence, the trademark owner may file a complaint with various enforcement agencies at provincial and central levels, including the Inspectorates of Science & Technology, the Economic Police, the Market Surveillance Authority and the People’s Committee of city and province. Upon determining that an infringement has occurred, enforcement agencies may organise an inspection/raid and then order the immediate cessation of infringement followed by confiscation and destruction of the infringing goods and the tools mainly used for manufacturing the infringing goods and counterfeiting the labels of the registered trademark. Monetary fines may also be imposed, of up to VND250 million for an individual infringer and VND500 million for an organisation infringer.

The current Penal Code of Vietnam stipulates that an act of infringement of an industrial property right might constitute crime only in the case of trademark and/or geographical indication infringement, wherein the infringement is for commercial purpose or to earn illegal profit or to cause loss to the trademark owner or the GI’s owner, or where the value of infringing goods reaches a certain level defined by law. Both individual and corporate legal entities are subject to criminal liability in addition to providing compensation to victims for losses.

Parallel import is accepted in Vietnam, while Customs are entitled to take actions on trademark infringement. A trademark owner can file a request with Customs Offices for inspection and the suspension of customs clearance, with adequate evidence and documents, followed by a bond. If Customs determines the infringing goods, it is entitled to apply administrative measures including destruction, re-export, the removal of infringing signs on packaging, the circulation of infringing goods for non-commercial purpose after the removal of infringing signs, etc.

More effectively, a trademark owner may file a request for Customs supervision to the Department General of Customs at the central level, indicating the legitimate rights towards the protected trademark, goods bearing the trademark, and the potential suspect of infringing goods. Upon approval, a decision on Customs supervision shall be issued by the Department General of Customs to all Customs offices. Suspect infringing consignments shall be suspended at any time and at any Customs office for inspection. 

Trademark registration is invalidated – or the validity of a trademark registration is terminated – if the trademark owner relinquishes or fails to renewthe trademark rights, or if the trademark owner no longer exists without a lawful heir, or if the protected trademark has not been used by the trademark owner or authorised users in five consecutive years, subject to being challenged by any third party. As for collective marks and certification marks, the registration is invalidated when the owner fails to supervise or ineffectively supervises the implementation of the regulations on use of such collective or certification mark.

Trademark registration or the validity of a trademark registration is cancelled when the trademark owner does not have rights and is not entitled to transfer the right to register the trademark, or when the trademark fails to satisfy a condition for its protection at the time of being granted. 

Revocation/cancellation actions can be taken at IP Vietnam by filing a revocation or cancellation request. It is also possible to proceed before the court by initiating a civil lawsuit in accordance with prevailing law.

The time limit for filing a cancellation request against a trademark registration is five years from the registration date. However, cancellation on grounds of dishonesty or bad faith of the applicant/trademark owner can be taken at any time.

The trademark owner can declare to relinquish trademark rights, resulting in a decision to terminate the validity of the trademark registration by IP Vietnam. Any third party is entitled to initiate a cancellation proceeding at IP Vietnam, provided that the cancellation request is made in writing and that there are adequate documents and evidence corresponding to the grounds for cancellation.

The validity of a trademark registration may be partially cancelled for those parts which are not eligible to protection – ie, did not satisfy the conditions for protection at the time of being granted.

The trademark owner is entitled to narrow the scope of protection during the revocation/cancellation proceeding. For example, they can file the request for the deletion of some goods and services in the trademark registration concerned during the revocation/cancellation proceedings.

Generally, cancellation is filed with IP Vietnam, which will examine and consider the case. Action against an infringement action may be initiated at the enforcement authorities and/or at the courts. Therefore, cancellation and infringement cases are normally settled in different and separate hearings, if any. 

However, where an infringement case is initiated through a lawsuit at the court, and the defendant makes a counterclaim against the plaintiff by requesting the cancellation of a trademark registration, then the cancellation and infringement may be heard together.

Pursuant to the prevailing laws, there is no special procedural provision for trademark proceedings compared with other civil proceedings.

Under the Code on Civil Proceedings, first-instance cases will generally be determined by a trial panel comprising a legal judge and two people’s jurors. In those simplified cases, trials can be determined by a legal judge only, so the trial panel would include two legal judges and three people’s jurors. Decision makers will be selected by the Chief Justice of the competent court rather than at the request of the parties involved. However, parties are entitled to file a petition for the replacement of the decision makers in some particular cases, such as where there are clear grounds to believe that the decision makers may not be impartial in performing their duties.

Voluntary and amicable settlements are encouraged and permissible for parties at any time during the proceedings. However, it is mandatory for the court to conduct a conciliation hearing with the parties being present, in accordance with prevailing law.

Upon request from the parties involved or at the sole discretion of the court, the court may keep the proceedings in the state of temporary suspense while waiting for the judgment of other related cases at other courts – eg, a judgment in another case involved in the request for cancellation of any party’s trademark registration – or while waiting for a decision from IP Vietnam on the cancellation or validity termination of any party’s trademark registration. However, it should be noted that such prior judgment or decision serves as a basis for reference rather than a compulsory resolution that the court of the pending case is required to follow.

Based on the appropriate request of the trademark owner and an assessment of the circumstances, the court may order a variety of remedies, depending on the case, including the following:

  • injunctive relief including retention, seizure, sealing, prohibiting any alteration of the original state, prohibiting any movement and/or transfer of ownership, etc;
  • compulsory cessation of infringement acts;
  • compulsory public apology and rectification;
  • compulsory performance of civil obligations;
  • forcible payment of compensation against damages/loss that includes attorney’s fee; or
  • compulsory destruction, distribution or use for non-commercial purposes of infringing goods, materials, articles and facilities used principally for the production or trading of infringing goods, provided that such destruction, distribution or use will not affect the exploitation of the rights of the trademark owner. 

The prevailing defendant may file a separate lawsuit to claim for the reimbursement of any legal costs incurred in the course of proceedings, including actual expenses, financial losses, attorney fees and reputational or mental damages.

In Vietnam, there are no different types of remedies for different types of trademarks.

Under the prevailing legal system, there is no special provision for the party involved to bring the case to the appellate procedures in a trademark dispute; it follows the general appellate procedures in civil proceedings.

When the appellate lawsuit is lodged, the court will make a full review of the case within the appeal claim of the parties involved, rather than a legal review or factual review only. Accordingly, parties are allowed to present new legal arguments and factual evidence for the court’s consideration if such materials and evidence were not requested by the courts or if the parties involved were not aware of them during the first-instance proceedings.

Legally and theoretically, from the date of acceptance of an appellate lawsuit, it takes a maximum five months for the issuance of an appellate judgment, which includes the stages for preparation of the appellate hearing and for the opening of the appellate hearing.

In practice, it is difficult to anticipate the duration of a case due to the varying nature and complexity of different cases. Generally speaking, the timeframe for settlement of a typical appellate case would commonly be between six months and two years, or even longer for a particularly complex case.

To date, no specific provision relating to trademark dilution is available under the Vietnam IP Law. The trademark owner is entitled to actively take necessary and lawful measures, and to campaign to educate consumers and the community to prevent the dilution of a registered trademark. In addition, in the examination of a trademark application, it is stipulated that a sign/mark shall be deemed to be indistinctive if it is identical or confusingly similar to another party’s well-known trademark, regardless of the associated goods and/or services. This is to give the owner of a well-known trademark grounds to forbid others from using and registering such trademark for and in connection with dissimilar goods or services if such use/registration might prejudice the distinctiveness or take advantage of the goodwill of the well-known trademark. This provision can be used as grounds to oppose a trademark registration (as it is indistinctive) or to prevent others from using a mark without consent (the use of such mark is an act of infringement).

Article 75 of the Vietnam IP Law lists the fundamental criteria for recognition of a well-known trademark. However, there is no clear provision on how to define and determine such criteria. In practice, it is accepted that a trademark shall not be recognised as being “well-known” if it is not yet in use in Vietnam.

Special rules with regard to geographic indicators are specified in the Vietnam IP Law. If a trademark contains a geographic indicator of the goods but such goods do not originate from the region indicated therein, the trademark is not eligible for registration and is subject to prohibition from use as it misleads the public. Geographic indicators may be registered in the forms of collective marks, certification marks, and even geographical indications.

Only an organisation whose function is the controlling and certifying of the quality, properties, origin or other relevant criteria of goods or services, and which is not engaged in the production or trading of these goods or services, may register certification marks. For other geographical names or signs indicating geographical origins of local specialties of Vietnam, the registration thereof must be approved and consented by the People's Committees of provinces or cities.

Rights to a protected trademark enjoyed by the owner do not include rights to prevent others from using their own surnames, if such use is in a fair and honest manner. However, this exception does not mean that any party can register and use its own surname as a trademark, even if it is identical or similar to the pre-existing trademark. If such use is not in a fair and honest manner and takes advantage of the reputation of the protected trademark, committing acts of infringement, the trademark owner may initiate actions against the infringement as well as opposing the registration.

The costs arising before filing a lawsuit would typically be fees and expenses for the investigation of infringement and the collection of evidence, including costs for the translation of documents in foreign languages, the preparation of affidavits and exhibits of evidence, the assessment of damages, losses, and the like.

In the course of first instance, the costs would typically be attorney fees, court fees, the fee for the investigation of infringement and the fee for the collection of evidence.

In proceedings in Vietnam, the plaintiff must bear the court fee corresponding to a request that is not accepted by the court, and the defendant must bear the court fee corresponding to the plaintiff's request against the defendant that is accepted by the court. Where the defendant files a counterclaim, the determination of the court fee follows the same rules.

In principle, the prevailing party will be reimbursed their attorney fees, provided that this is included in the request. However, in practice, this is determined at the sole discretion of the court.

There is no compulsory ADR procedure that the trademark owner is required to conduct before taking administrative or civil remedies, etc. However, the parties are encouraged to settle a dispute through ADR, including mediation and arbitration.

The arbitration procedure follows the Law on Commercial Arbitration. Disputes that can be settled by arbitration include disputes among parties arising out of commercial activities, disputes among parties where at least one party conducts commercial activities, and other disputes among parties which are stipulated by law to be settled by arbitration. Along with a fast and flexible procedure, arbitration procedures give the parties the rights to choose arbitrators. However, arbitrators cannot decide to apply an injunctive relief to a party when it is necessary, but must request it from the court. In addition, the implementation of arbitral awards is mainly based on the willingness of the parties. Thus, arbitration is sometimes chosen by the parties to settle disputes that arise from agreements regarding trademark matters instead of in infringement cases. 

In addition to being voluntarily conducted by the parties, mediation is also prescribed as a stage in civil proceedings. During the preparation period for a trial at first instance, the court shall compulsorily hold meetings to check the handover of, access to and disclosure of evidence, and to mediate to assist the parties in reaching an agreement on settlement of the case. If the parties reach an agreement about matters to be resolved, the courts shall make minutes of the successful mediation and immediately send it to the parties participating in the mediation. Once the time limit for the parties to change their opinions on such agreement has passed, a decision recognising the agreement of the parties involved shall be issued. Such decision takes immediate effect upon issuance and is not vulnerable to appeal under the appellate procedures.

A figurative trademark can be considered an applied art work and protected by copyright if it satisfies the requirements in the IP Law (eg, it is creative). A trademark can also be protected as an industrial design if its design (typically its shape or the packaging design) meets the requirements to be eligible for protection as an industrial design (it is novel, of a creative nature and susceptible to industrial application) and is registered as such. A trademark (even a three-dimensional trademark) is not eligible for protection as an invention because, as provided by the Vietnam IP Law, invention is a technical solution in the form of a product or process that is intended to solve a problem by the application of natural laws. Trade dress is not registrable under Vietnam’s IP Law, per se. If neither a trademark nor an industrial design is registered, the owner of such might deter others from using a confusingly similar product or sign through the right to prevent unfair competition.

ALIAT LEGAL LLC

Principal Address:
14th Floor, Vincom Center,
72 Le Thanh Ton Street,
Ben Nghe Ward, District 1,
Ho Chi Minh City,
Vietnam 700000

+84 28 3519 4666

+84 3519 4668

contact@aliatlegal.com www.aliatlegal.com
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ALIAT Legal is an intellectual property and business law firm, with its head office in Ho Chi Minh City and four other offices, in Hanoi Capital, Ha Tinh Province, Can Tho City, and Phnom-Penh, Cambodia. The firm acts for both domestic and international clients on matters relating to trade marks, industrial design, trade names, trade secrets, copyright, the licensing and assignment of intellectual property rights, and dispute resolution concerning intellectual property.

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