The exclusive right to use a registered trademark1 is not limitless but it may be suspended or terminated for some reasons, such as the registrant's death, the trademark owner's dissolution, bankruptcy without his/her lawful heir, his/her relinquishment of exclusive rights, his/her failure to pay renewal fee every 10 years, or his/her exclusive rights may be invalidated by third party due to the fact that his/her registered trademark has been not yet used, or has been interrupted for a consecutive period of 5-years2
The following guide only focuses on the brief introduction of the legal procedures for suspending the validity of a registered trademark at the request of a third party by reason of non-use in commerce in Vietnam
Why you have to invalidate other's trademark?
As earlier reported by us every year the National Office of Intellectual Property of Vietnam (NOIP) wholly or partly refuses protection approximately 12,000 trademarks, accounting for about 30% of more than 40,000 trademark applications annually filed in Vietnam, most typical reason for refusal of which are to invoke the existence of a likelihood of confusion with earlier trademarks (earlier filed or registered ones). To overcome this refusal, one of the best ways is to eliminate the rejection ground by terminating the validity of earlier registered trademark through a legal procedure called as a request for invalidation against such registered trademark because it has been not yet consecutively used for 5-years.
Who entitles, what are the legal ground and relevant evidence of non-use?
Like the procedure for trademark opposition3, any third party may submit a request for termination of validity of a prior registered trademark to the NOIP provided that the request must contain and meet the conditions and required documents:
- A registered trademark subject to an invalidation action must have been registered for at least 5 years from the grant date;
- The evidence of non-use of the designated goods or services in whole or partial pertaining to the registered trademark.
- Confirmation of legal basis provided at point d, clause 1, Article 95 of the IP Law states that the registered trademark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of
- Power of Attorney in favor of Bross & Partners
- Gorvernmental fee of 470,000 VND for one certificate (each subsequent certificate 300,000 VND)
Procedure for Settlement of a Request for Validity Invalidation
After receiving the request for validity invalidation, the NOIP within 1 month, will serve the invalidation request (the first time) to the registrant (the owner of registered trademark) notityfing that there is a third person (petitioner) who submitted a petition for validity termination and the NOIP would set the time limit for reply by the registrant in 2 months (applicable for nationally registered trademark) or 3 months (for internationally registered trademark)
The NOIP may, on a case by case basis, repeat the aforesaid procedure one more time for both of the registrant and the petitioner with the same fixed time limit. Only in complicated cases, the NOIP may organize an in-person hearing4 (materially means a direct dialogue) between the registrant and the petitioner.
Within 3 months from the expiry of the 2-month period (applicable for nationally registered trademark) or 3 months (applicable for internationally registered trademark) that the registrant submits no counter-argument, either within 6 months from the expiry the 2-month period (for nationally registered mark) or 3 months (for the Madrid-based international mark) to which the registrant presents its counter-statement then the NOIP shall issue a decision on validity cancellation in part or the whole or release a notice of rejection of such petition for cancellation in whole or in part.
So, theoretically, a validity invalidation action would take about 7-10 months or may last for a year even a few years depending on whether or not the trademark owner responds with its well-reasoned counter-arguments or depending on the NOIP's busy degree or overload status.
In case of disagreement with the NOIP's decision, the unsatisfactory party can lodge a second-time complaint to the Minister of Science and Technology or initiate an administrative case to the Hanoi people's court. Where disagreed with the NOIP's notice of rejection, the unsatisfactory party can submit a first-time complaint to the General Director of the NOIP.
You may refer to the case of partial validity termination against Lacoste's 2 trademarks (depicted below) under Decision 2534/QD-SHTT of 25/7/2016 issued by the NOIP victoriously represented by Bross & Partners in favor of the petitioner5
|Trademark Subject to Partial Validity Invalidation||Int'Reg/
|Registrant||List of intial goods and services||List of intial goods and services limited subject to Decision 2534|
23-25 rue de Provence
F-75009 PARIS, Pháp
|44 classes (from class 1 through 45 except for class 08)|
|42 classes (from class 1 through 42||The whole classes 32 and 33|
Picture of partial invalidation notice issued by the NOIP addressing the WIPO against IRN437001
 This is the general legal principle prescribed in Article 6(3)(a) and Article 123(1) of the Vietnamese IP Law but does not apply to well-known trademark because the right to a well-known trademark can be established without registration. If readers are interested in famous trademarks, please see more: http://bross.vn/newsletter/ip-news-update/You-are-cordially-invited-to-refer-to-a-published-study-report--on-the-protection-of-wellknown-trademark-in-Vietnam-funded-by-the-INTA-and-MoST-1678; and a Framework Proposal for Well-known Trademark Protection in Vietnam: http://bross.vn/newsletter/ip-news-update/FRAMEWORK-PROPOSAL--FOR-WELLKNOWN-MARK-PROTECTION..
 Article 95 of the IP Law. Termination of validity of protection titles
1. The validity of a protection title shall be terminated in the following cases:
(a) The owner fails to pay the stipulated validity maintenance or extension fee;
(b) The owner declares relinquishment of the industrial property rights;
(c) The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;
(d) The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
(dd) The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;
(e) The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;
(g) The geographical conditions decisive to reputation, quality or special characteristics of products bearing a geographical indication have changed resulting in the loss of such reputation, quality or characteristics of products.
 Procedures, deadline and legal grounds for the opposition against a trademark (brand name) applied for registration in Vietnam can be readable at: http://bross.vn/newsletter/ip-news-update/Procedures-deadline-and-legal-grounds-for-the-opposition--against-a-trademark-brand-name-applied-for-registration-in-Vietnam
 Direct dialogue between the registrant and the petitioner resembles the one between the opposing party and the opposed party, which means the last minute opportunity for the parties to be additionally explained, supplemented and final argument submission, and wherein may also imply a possible conciliation, amicable agreement or out-of-court settlement before the NOIP resolves the opposition at its discretion. See more "7 Most Essential Features of the Law and Practices Regarding Trademark Opposition Procedure in Vietnam" at the link: http://bross.vn/newsletter/ip-news-update/7-Most-Essential-Features-of-the-Law-and-Practices--Regarding-Trademark-Opposition-Procedure-in-Vietnam-1635
 The details of this case can be found at: http://bross.vn/newsletter/ip-news-update/Vietnam:-Lacoste%E2%80%99s-wellknown-trademarks-Invalidated-in-Part-Due-to-Nonuses
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.