The revised Law on Intellectual Property 2022 in Vietnam will take effect from January 1, 2023. We would like to introduce some significant changes to the trademark under the IP Law 2022:
- Sound trademarks
According to the revised IP Law 2022 in Vietnam:
– Sound marks are officially protected as trademarks under Article 72.1.
– Sound marks are not protected as trademarks under Article 73.1 if they include signs identical or confusingly similar to the National Anthem of the Socialist Republic of Vietnam and other countries and international anthems.
In particular, the regulations on sound trademarks take effect from January 14, 2022.
- A three-dimensional trademark
The IP Law 2005 (revised in 2019) protects three-dimensional trademarks.
The addition of Clause 6 to Article 73 under the IP Law 2022 creates absolute grounds to refuse three-dimensional trademarks if (i) they are the inherent shape of the goods or (ii) due to the requirement of the technical characteristics of the goods.
- Amendment of regulations on the well-known trademark
– To amend Article 4.20 is to restrict “the scope of consumers” to be consulted when evaluating well-known trademarks. Namely:
“20. A well-known mark is a mark widely known by the relevant sectors of the public throughout the Vietnamese territory.” (Previously, Article 4.20 was read as “A well-known trademark is a mark widely known by consumers throughout the Vietnamese territory”)
– To amend the opening paragraph of Article 75 is to restrict the range of the criteria for recognizing well-known trademarks. Namely:
“75. The consideration and assessment of a mark as a well-known mark rely on some or all of the following criteria: […].” (Previously, Article 75 was read as “The following criteria shall be taken into account while considering whether or not a mark is well known …”)
- Integrated trademarks
Integrated trademarks are no longer protected under the IP Law 2022.
- Suspension of trademark examination
Suspending the trademark application examination is prescribed in Article 117.3.b. The provision can help applicants to overcome cited trademarks, such as registered marks that are in force or have expired for less than three years.
Article 117.3.b:
“Suspending the application examination process in case the applicant submits a request for suspending a request for the validity termination or invalidation of the Trademark Registration Certificate according to the exclusions specified at Point e and Point h, Clause 2, Article 74 of this Law. Based on the settlement results of the request for the validity termination or invalidation of the Trademark Registration Certificate, the state management agency in charge of industrial property rights continues the process of examining the application.”
From the effective date (January 1, 2023) of the revised IP Law 2022, trademark registration applications without a final decision regarding the grant or refusal of the trademark application may use the suspension mechanism mentioned above.
- Introduce a new mechanism for opposition against trademark applications
Adding Article 112a to Article 112 allows third parties to have a new mechanism to oppose trademark applications. Therefore, there are two mechanisms for third parties to provide opinions on pending trademark applications in Vietnam, those are (i) the third party’s observation and (ii) the third party’s opposition to the grant of trademark registration.
Article 112. Third-party opinions on the grant of protection titles
From the date the industrial property registration application is published in the Industrial Property Official Gazette until the date of the decision to grant a protection title, any third party shall have the right to give opinions to the competent management agency on industrial property rights about granting or not granting a protection title for that application. Opinions must be made in writing, accompanied by supportive documents or cited information sources.
The written opinions of a third party shall be regarded as an information source for reference during the examination of industrial property registration applications.
Article 112a. Opposition against industrial property registration applications
- Before the issuance date of a decision on the grant of a protection title, within the following time limits, any third party has the right to oppose the grant of a protection title:
[…];
c) Five months from the date the trademark registration application is published;
[…].
- Supplement grounds for validity termination of trademarks
– To add more grounds for the trademark termination, such as:
Under Article 95.1.h:
Using a mark protected for goods or services by the owner or by the person authorized by the owner allows consumers to mislead the nature, quality, or geographical origin of such goods or services.
Under Article 95.1.i:
The protected mark becomes the common name of the goods or services registered for itself.
- Shorten the time to consider the expired reference mark
Under the IP Law 2005 (revised 2019), a trademark application will be refused protection if it is identical or confusingly similar to the registered trademark of another person for identical or similar goods or services for which such registered trademark has expired but less than five years. The fact shows that the 5-year period is too long and no longer suitable; therefore, the revised IP Law 2022 has shortened this period to less than three years. (Article 74.2.h).
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