FAQs

An application for cancellation of trademark in Vietnam may be based on multiple grounds (i.e., on a combination of absolute, relative and non-use grounds).

The advantages of filing an action based on multiple grounds are as follows: The applicant may have a better chance of success. If one ground fails, the competent authority will then continue to consider other ground(s) for cancellation of trademark in Vietnam.

If a cancellation request of trademark in Vietnam is based on multiple grounds and the action could be disposed of on one ground, the other grounds will nevertheless be considered.

– Non-use may be raised as a ground in Vietnam trademark cancellation proceedings (provided that the cancellation request raised by a third party).

In relation to cancellation for non-use, “use” is defined as:

a) Affixing the protected trademark in Vietnam to goods, packages of goods, means of business of supplying services and communicating papers in business activities
b) Circulating, or offering advertising or storing for sale, goods bearing the protected trademark in Vietnam;
c) Importing goods or services bearing the protected trademark in Vietnam.

– The definition of “use” provided above is derived from statute, regulation or administrative rule: The definition of “use” provided above is derived from Article 124.5 of Intellectual Property Law 2005.
– Use by a licensee or with the consent of the proprietor or constitutes use by the proprietor.
– The time frame within which a mark in Vietnam must be used in order to avoid cancellation runs from: After registration, the trademark in Vietnam simply needs to be used at any time within five years to ensure that the period of its non-use does not last for five consecutive years. Consult a local trademark attorney.
– Counting from the above date, to avoid cancellation for non-use, a trademark in Vietnam must be used within: A term of five consecutive years prior to a request for termination of validity; cancellation can also be avoided if the use is commenced or resumed at least three months before the request for termination.
– The consequences of uses being interrupted are: Cancellation of trademark in Vietnam, upon request of a third party.

In addition to the absolute or relative grounds and/or the non-use grounds, the following grounds may also be raised in cancellation of trademark in Vietnam:

– Its owner has not paid the due fees for the renewal of trademark in Vietnam as prescribed;
– Its owner has declared to relinquish the rights conferred by the Protection Title;
– Its owner has no longer existed or the owner of a Vietnam trademark registration Certificate has no longer engaged in business without a lawful successor;
– The owner of a Vietnam trademark registration Certificate in respect of a collective mark fails to supervise or ineffectively supervises the implementation of the rules on using the collective mark;
– The owner of a Vietnam trademark registration Certificate in respect of a certification mark violates the rules on using certification mark or fails to supervise or ineffectively supervises the implementation of such rules;
– The geographical conditions attributable to the reputation, quality or characteristics of the product bearing a geographical indication have changed resulting in a loss of the reputation, quality or characteristics of the product.

The following relative grounds may be raised in cancellation proceedings of trademark in Vietnam:

– There is an earlier application or registered trademark in Vietnam;
– There are earlier use-based rights in an unregistered trademark in Vietnam;
(Provided that the evidence to prove that the unregistered mark is famous or widely used and recognized is strong)
– The application for or registration of the trademark in Vietnam was made in bad faith;
(While not provided for specifically in our regulations, in practice it can still be applied)
– The trademark in Vietnam is a company name;
(Provided that the company name is registered and was in use before the filing date of the mark)
– The trademark in Vietnam is notorious or well known (Article 6bis of the Paris Convention);
– The trademark application was filed or the registration trademark in Vietnam was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);
– The trademark in Vietnam is a trade or business name;
– Other relative grounds, i.e., grounds that are based on another party’s proprietary rights:
Signs identical with or similar to a protected geographical indication, if the use of such signs is likely to mislead consumers as to the geographical origin of goods; signs identical with or insignificantly different from another person’s industrial design protected by an industrial design registration application with a filing date or priority date earlier than those of the mark’s registration application.

The following absolute grounds may be raised in cancellation proceeding of trademark in Vietnam:

– The trademark in Vietnam is descriptive;
– The trademark in Vietnam is misleading and/or deceptive;
– The trademark in Vietnam lacks distinctiveness;
– The trademark in Vietnam is generic;
– The trademark in Vietnam consists of a geographical indication;
– The trademark in Vietnam is functional;
– The trademark in Vietnam is against public policy or principles of morality;
– The trademark in Vietnam has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
– The trademark in Vietnam includes a badge or emblem of particular public interest;
– The trademark in Vietnam is used in a misleading and/or deceptive manner;
– The trademark in Vietnam is prohibited in this jurisdiction;
– The application for or registration of the trademark in Vietnam was made in bad faith;

– Other absolute grounds, i.e., grounds that relate to the inherent registration of a trademark in Vietnam:

• Signs identical with or confusingly similar to the national flags, national emblems;
• Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless permitted by such agencies or organizations;
• Signs identical with or confusingly similar to real names, alias, pen names or images of leaders, national heroes of famous persons of Vietnam or foreign countries;
• Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations which require that their signs must not be used, except where such seals are registered as certification marks by those organizations;
• Sings liable to mislead, confuse or deceive consumers as to the origin, functional parameters, intended purposes, quality, value or other characteristics of the goods or services.
• Simple devices and geometric figures; numerals, letters, or words of uncommon language, except for signs having been widely used and recognized as a mark;
• Signs, symbols, pictures or common names in any language of goods or services that have been widely and often used and are common knowledge;
• Sings describing the legal status and activity field of businesses.