Trademark Law updates

Intellectual Property Office of Vietnam (“Ip Viet Nam”) has announced 10 trademark-related amendments that will take effect on 1 January 2023. The amendments are to show the country’s efforts to align with international treaties and agreements, such as recognizing sound marks.

The amendments are as follows:-

1. The official protection of sound marks in Vietnam
   
   According to the Intellectual Property Law that was published in 2005, supplemented in 2009 and 2019, the previous regulations of the IP Law had just protected trademark under visible signs. However, Vietnam’s IP Law has supplemented that sound signs (invisible signs) are now can be treated as a trademark in 2022 and the definition of sound signs in trademark are as follows: “To be a visible sign in the form of letters, words, pictures, figures, including three-dimensional figures or a combination thereof, represented in one or more colors or sound signs able to represent under graphic form” (amended, supplemented Clause 1 Article 72)
   The acceptance of sound marks not just showing the country’s effort to comply with international treaties and agreements, meanwhile also allow Businesses to have more effective tools to protect their IP Rights.
   
   
2. Amendment of regulations on the well-known trademark
   
   The IP Law 2022 has amended the definition of well-known mark from:-
   Well-known mark is a mark widely known by consumers throughout territory of Vietnam to widely known by relevant public.
   
   
3. Shorten the time to consider the expired previous cited mark
   
   According to the IP Law 2005, 5 years was considered the minimum time for consumers to forget the existence of a trademark, therefore, if an applied mark is identical or confusingly similar to another trademark that has been expired but less than 5 years, the application will be refused.
   However, the 5-year period is now considered too long and no longer suitable, which the IP Law 2022 has shorten the period to “less than 3 years”.
   
   
4. Provisional suspension of trademark examination
   
   Starting from 1 January 2023, IP Law 2022 will add a provision on suspending the examination of trademark applications without a decision to grant or refuse to grant to overcome prior existing cited marks in force or a pre-existing cited mark that has been invalidated for less than 3 years.
   
   
5. “Bad faith” is legislated as ground for the handling of opposition and invalidation
   
   IP Law 2022 has now listed “bad faith” behavior as a legal basis, which are allowing 3rd parties to oppose against trademark applications, refuse to grant Protection Titles, and invalidation of Protection Titles.
   
   
6. Introduce a new mechanism to oppose against trademark applications
   
   3rd parties were allowed to submit opposition to the trademark application any time from the publication date, while under the new mechanism, opposition must be filed within 5 months since the publication date.
   
   
7. Define more signs that shall not be protected as trademarks
   
   Signs that will not be protected as marks are as follows:-
   - Signs that is identical or similar to the national flags, national emblems, national anthem of Socialist Republic of Vietnam and countries and “The Internationale”.
   - Signs that are the inherent shape of the goods or because the technical characteristics of the goods are required.
   - Unless authorized by the owner of the work, signs that contain a copy of a work shall not be protected as a mark.
   
   
8. Supplement grounds for termination or invalidation of trademarks
   
   IP Law 2022 has added 2 more grounds of terminating a protected mark:-
   i)  The use of the protected mark is to mislead its consumers as to the  nature, quality or geographical origin of the goods and/or services; and
   ii) The protected mark becomes the common name of the goods and/or services registered for the mark itself.
   
   IP Law 2022 has made some adjustments to the grounds of invalidating a protected mark:-
   iii) The trademark registration may be invalidated if the application is filed under “malicious intent”; and
   iv) The trademark registration may be invalidated partially or in a whole if the amendment of the mark expands or changes the original nature of the mark.
   
   
9. Supplement provisions on appeal and settlement of appeal to the Vietnam IP Law 2022
   
   The owner (applicant/ organizations/ individuals) or the assignor of the industrial property protection titles has the right to appeal to authorities about industrial property rights or initiate a lawsuit at a court in accordance with the provisions of the Intellectual Property Law and other relevant laws.
   The appellant must pay the re-examination fee if the appeal is related to the right of registration or other contents that require re-examination.
   
   
10. Supplement provisions on the effective time of international registration of marks under the Madrid system
    
    IP Law 2022 has added the effective time of international registration of marks under the Madrid system as follows:-
    International registrations of marks under the Madrid system on international registration of marks designating Vietnam is effective from the date on which the authorities in charge of industrial property rights issues a decision to accept protection for the mark in that international registration OR from the day following the expiration of the twelve-month period counting from the date that the international office issue a notice of international registration of such mark designating Vietnam, whichever is earlier.
    

See also:
Vietnam Trademark Registration Costs and Procedures