Opposition to third-party trademark registration

In the context of intense competition today, protecting intellectual property rights, especially trademarks, has become increasingly important. One of the measures that trademark owners can take to safeguard their rights is to oppose the trademark registration of third parties that show signs of infringing upon their trademark. This not only helps to protect legal rights but also prevents unfair competition. 

1. Determining the basis for opposing trademark registration

When a trademark is at risk of infringing on a business’s intellectual property rights of an enterprise’s trademark, identifying legal grounds for opposition is the first and foremost step. Below are some factors that trademark owners need to consider: 

1. Identical or similar trademarks: Assess whether the trademark being applied for is identical or similar to the business’s registered or protected trademark. 
2. Application date or protection status: Determine if the trademark in question was filed before or after the business’s trademark, and whether the protection certificate is valid or expired. A trademark with an earlier filing date, a granted protection certificate, or an expired certificate within the last three years can affect the opposition progression. 
3. Distinctiveness: Determine whether the trademark can distinguish itself or lead to confusion. Check if the trademark contains misleading descriptions or violates public order. 
4. Evaluate whether the third party has the right to register the trademark and if the application is made in good faith. 

If the third-party trademark application exhibits any of these signs, the trademark owner can consider filing an opposition under the procedure as outlined in Section 2. 

2. Opposition to third-party trademark registration

2.1. Trademark application opposition procedure

Vietnamese intellectual property law provides that any third party can oppose the granting of a trademark protection certificate. The opposition period is five months from the date of publication of the trademark application and before the protection certificate is granted. 

Procedure: 

1. Submission of opposition: The trademark owner must submit an opposition document along with supporting evidence to the Intellectual Property Office of Vietnam (“IP Office”). The current opposition fee is VND 550,000 per trademark/group. 
2. Notification and response: Upon receiving the opposition, the IP Office will notify the applicant of the opposition and request a response within two months. 
3. Response and dialogue: If necessary, the IP Office may notify the opposing party of the applicant’s response, allowing further counter-responses. A direct  discussion may be arranged if required. 
4. Review and determination: The IP Office will review all responses, assess the case, and issue a decision. This will notify both of the parties. 

2.2. Objection to trademark application

In addition to the trademark application opposition procedure mentioned in Section 2.1 above, any third party has the right to provide their opinion on whether a trademark application should be granted a certificate of protection.  Beginning from the date the application is published in the Industrial Property Gazette, provided that the opposition has been submitted to the IP Office before the decision to grant the certificate of protection for the third party’s trademark is made. 

Similar to the procedure for opposing a trademark application described earlier, the opposition must be in writing and include supporting documents or references to serve as evidence. 

However, the key difference between expressing an opinion on an application in this section and filing an official opposition is that the person submitting the opinion does not need to pay the opposition fee. Moreover, the opposition in this case will only be regarded as a source of information for the IP Office’s handling of the trademark application. 

3. Notes when opposing a third-party trademark

1. Identifying the grounds for opposition: The trademark owner should clearly define the legal basis for the opposition, such as whether the trademark being applied for is identical or similar enough to cause confusion with an existing trademark or if the third-party trademark does not meet the requirements for protection.
2. Gathering and preparing sufficient evidence: It is crucial to prepare supporting documents such as the trademark registration certificate, samples of the trademark in use, and proof of the trademark’s actual use over time to ensure the opposition has the best chance of success.
3. Opposition deadline: The deadline for filing an official opposition is 5 months from the date the trademark application is published. For expressing an opinion, the deadline is before the decision is made to grant the certificate of protection for the third party’s trademark. Therefore, trademark owners should closely monitor applications to promptly identify and address any violations.
4. Choosing the appropriate opposition method: Trademark owners should consider whether to file (i) an official opposition or (ii) submit an informal opinion, depending on the time frame, necessity, and ability to protect their interests.
5. Trademark owners should closely monitor the processing of the application by the IP Office, providing any additional information or responses within the proposed deadlines.
6. Professional Consultation: To ensure that the opposition process is carried out effectively, trademark owners should consult with an experienced intellectual property attorney or advisory organization to ensure their intellectual property rights are properly enforced. 

4. Conclusion

Opposing a third-party trademark application is a measure to protect the legal rights of the trademark owner. Carefully preparing the legal grounds and gathering sufficient evidence will enhance the chances of success in defending the trademark against infringement. Moreover, it contributes to maintaining a fair business environment by preventing unfair competition practices.

At PLF Law Firm

In today’s competitive market, even a single overlooked trademark application can impact your business. By acting early, you can prevent disputes and preserve your brand’s value. The Intellectual Property team at PLF Law Firm is ready to guide you through each step from assessing potential risks to navigating the opposition process with precision and care. Contact us here.

Time of writing: 4 August 2025

PLF Law Firm