This guide navigates through the lifecycle of the trademark in Vietnam, focusing on renewal processes to prevent expiration and conditions leading to invalidation. It offers essential insights for protecting your trademarks effectively within the Vietnamese legal framework.
7. Trademark survival over time
7.1 Is a trademark in Vietnam liable to expire?
From the date of registration (which corresponds to the date of filing of the registration file with the IPVN), the trademark has a term of 10 years, which can be renewed with no limit. This means that the title must be renewed; its official expiration date is therefore the 10th anniversary of its registration date. In principle, therefore, it must be renewed earlier.
Vietnamese law offers a grace period of 6 months from the expiry date for late renewal of trademark rights; after this final period, the trademark expires.
7.2 Can a trademark be invalidated during protection? If so, on what grounds?
A trademark may be invalidated during its lifetime.
The reasons for its invalidation can be linked to two main grounds:
- the trademark was legally registered even though it did not meet the absolute and relative conditions for protection; or
- the trademark no longer meets the conditions necessary for its existence.
The provisions of the Law on IP distinguish the main types of trademark invalidation/cancellation:
- (i) Cases related to the owner’s administrative management of the trademark:
- Its owner fails to pay the validity maintenance or prolongation fee as prescribed.
- Its owner declares to relinquish the industrial property rights;
- Its owner no longer exists or the owner of a certificate of registered mark is no longer engaged in business activities without any lawful heir;
- (ii) Cases related to the owner’s commercial management of the trademark:
- The trademark has not been used by its owner or his/her licensee without justifiable reasons for 5 consecutive years prior to a request for termination of validity, except where the use is commenced or resumed at least 3 months before the request for termination;
- The use of a protected mark for goods or services by the mark owner or by a person authorized by the mark owner causes consumers to misunderstand the nature, quality or geographical origin of such goods or services.
- The protected mark becomes the common names of the goods or services registered for such mark.
- (iii) Cases related to third-party right infringements and conditions for protection:
- The applicant registers the mark with malicious intention.
- A protection title shall be partly or wholly invalidated if a part or the whole of it fails to satisfy the provisions of this Law on registration rights and protection conditions (as relative grounds : infringing third parties rights as a similar sign)
- Any organization or individual may request the State administrative body for industrial property rights to invalidate a protection title in the cases specified above
- Requests and proceedings for cancellation/invalidation are brought by third parties before the IPVN within precise time limits and formal conditions. These invalidation proceedings give rise to an exchange of arguments between the holder and the third party’s observations to enable the IPVN to rule on the grounds for annulment.
8. Trademark Infringement
8.1 What constitutes trademark infringement in Vietnam?
Any acts that may be recognized as trademark infringement are listed in the Law on IP as follows: The following acts, if performed without the permission of mark owners, shall be regarded as infringements of the rights to marks:
- Using signs identical with protected marks for goods or services identical with goods or services on the lists registered together with such marks;
- Using signs identical with protected marks for goods or services similar or related to those goods or services on the lists registered together with such marks, if such use is likely to cause confusion as to the origin of the goods or services;
- Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the lists registered together with such marks, if such use is likely to cause confusion as to the origin of the goods or services;
- Using signs identical with, or similar to, well-known marks, or signs in the form of translations or transcriptions of well-known marks for any goods or services, including those unidentical with, dissimilar, or unrelated to goods or services on the lists of those bearing well-known marks, if such use is likely to cause confusion as to the origin of the goods or services or a misleading impression as to the relationship between users of such signs and well-known mark owners.
More briefly, any act of reproducing a similar or identical sign to designate goods or services that is confusing with an earlier trademark is likely to fall within the scope of counterfeiting, which punishes the unauthorized reproduction of a sign belonging to a person/company.
8.2: Is criminal enforcement of trademarks possible in Vietnam?
As mentioned above, the Law on IP provides for the jurisdiction of several entities in the event of infringement, including the criminal courts:
“Organizations and individuals that commit acts of infringing upon the intellectual property rights of other organizations and individuals shall, depending on the nature and seriousness of such infringements, be handled with civil, administrative, or criminal remedies.“
The Criminal Code therefore has a special section dedicated to the infringement of industrial property rights that states:
”A person who commits infringements upon industrial property rights which involve counterfeit products using another’s brand name or geographical indication protected in Vietnam for commercial purpose or to earn an illegal profit of from VND 100,000,000 to under VND 300,000,000 or causes a loss of from VND 200,000,000 to under VND 500,000,000 to the owner of such brand name or geographical indication, or with the violating goods assessed at from VND 200,000,000 to under VND 500,000,000 shall be liable to a fine of from VND 50,000,000 to VND 500,000,000 or face a penalty of up to 03 years’ community sentence.”
However, although there is a legal remedy for infringement of trademark rights, it is rarely used. Trademark owners generally prefer to take civil action, which enables them to claim financial compensation directly, whereas criminal proceedings only generate a fine paid to the state.
8.3: Are damages available for trademark infringement in Vietnam? What factors will the court consider in determining the value of damages?
A plaintiff may claim compensation for damages, provided that he or she can prove this on the specific factual grounds referred to in the Law on IP:
- Total material damage : the whole of the prejudice represented by the full benefit of the defendant’s acts of infringement, based on material damage, including property losses, decreases in income and profit, loss of business opportunities, reasonable expenses for prevention and remedying of such damage;
- Moral damage: rather linked to a prejudice of image or concern for the individual who suffers the intellectual property right infringement, this claim is aimed more at authors and inventors who are natural persons capable of proving a moral impact, such as damage to honor, dignity, prestige, reputation, and other spiritual losses caused to a person. These damages are therefore unlikely to be claimed by a company that exploits a trademark, which, in principle, has no feelings and therefore no prejudice from affectation.
- Cost of attorneys to claim his rights in reasonable proportions.
8.4 What measures can trademark owners take to help prevent infringement of their rights in Vietnam?
Trademark owners have several means at their disposal to help them prevent such infringements, without, however, eliminating the risk:
First and foremost, it is important to register the sign used as a trademark as quickly as possible. Vietnamese law is based on the first-to-file principle, so it remains important to think about securing your rights at the risk of being dispossessed by a faster competitor. This registration must include the forms of the trademark as it is used commercially to avoid a significant difference between the registered trademark and the trademark in use, which would weaken an action against an infringing third party.
Secondly, it is advisable to secure evidence of the use of the trademark in the covered classes of products and services. This is done to avoid being left defenceless in case a third party files a cancellation request. Such evidence can be gathered by retaining invoices related to the sale of covered products or services, promotional activities, or events carried out under the brand name.
Finally, it is important to conduct regular monitoring of signs and trademarks registered in the territory of Vietnam, as well as monitoring of competing products or services in your market. Identifying the appearance of counterfeiting or confusion with your business activity as soon as possible will help limit potential damages.
8.5 What is the statute of limitations for trademark infringement in Vietnam?
In civil matters, the statute of limitations for qualifying and sanctioning trademark infringement shall be three years from the date on which the legal rights or interests of an individual, legal entity or other subject were infringed.
In criminal matters, the prosecution for trademark infringement is subject to a 5-year statute of limitations starting from the day the infringement offense is committed.
In administrative matters, the statute of limitations is 2 years from the commission of the offense, which can be renewed in the case of a continuing offense.
9. Enforcement and Remedies
9.1: What remedies are available against trademark infringement in Vietnam?
See 1.2 in Part 1 of this topic.
9.2: What is the procedure for filing a lawsuit against trademark infringement?
The very first thing to consider is the importance of the distinction between the administrative infringement procedure and the civil law infringement procedure.
Administrative measures mean handling an act against the state economic management order, while civil measures mean protection of the trademark’s owner’s civil rights. The purpose of taking administrative measures against the infringer is therefore not to enable the owner to claim compensation for his personal loss, as the administrative fine is paid directly to the state.
But there’s no need to make a choice either: even if an administrative or criminal procedure is underway, a holder who considers himself to be a victim and can prove that he has suffered prejudice can still claim compensation throughout a civil proceeding.
To initiate a trademark infringement proceeding, the claimant must first file a petition and the necessary documents with the People’s Court of the applicable rural district, urban district, provincial capital, or provincial town within three years from the date on which they discovered that their rights were infringed.
The lawsuit petition can be filed with the court in two ways [2]:
- direct submission at courts;
- sending them to courts by post.
The court will then consider the complaint, and within five working days from the date of receiving the petition, it must consider it and issue one of the following decisions:
- accept to handle the case;
- transfer the lawsuit petition to other competent courts;
- or return the lawsuit petition to the litigator for legal reasons more precisely defined by law.
If the court deems that the case falls within its jurisdiction and that the lawsuit petition is sufficient, the court will notify the claimant of this in writing and will officially accept the case once the claimant has submitted the court fee advance payment receipts.
In theory, during the period in which the court takes written submissions from the parties, it must endeavor to conciliate the parties, unless the dispute concerns a matter in respect of which conciliation is not permitted.
If the parties fail to reach an agreement, first-instance court sessions will therefore be conducted in accordance with the rules set out in the articles.
9.3 What is the procedure for appealing a decision in trademark litigation?
In main proceedings, the defendant has the right to appeal the judgment of the first instance court to the immediate superior court within 15 days from the date of the announcement of the judgment.
The head of the procuracy is also entitled to appeal against a first-instance court’s judgments or decisions within 15 days or 1 month, considering different procuracies’ levels.
Where an appeal is lodged against a decision, operative parts of the decision that are the subject of the appeal may not be enforced, except in exceptional cases defined by law.
On the other hand, measures that are not the subject of an appeal become enforceable on the date of expiry of the time limit for appeal.
At this stage, a new set of proceedings begins, with procedural rules similar to those at the first instance. The appeal judgment will replace the first-instance judgment for the measures appealed against.
10. International Protection
10.1 What key concerns and considerations should be borne in mind by foreign trademark holders in seeking to protect their rights in Vietnam?
Expanding your market share in Vietnam when you come from abroad calls for a certain degree of vigilance, which will enable you to consolidate your previous rights acquired in your country of origin.
Here are a few important points:
- Get in touch with local professionals who can advise you on aspects of Vietnamese law and familiarize you with legal practices. Intellectual property is a major asset in a company’s competitiveness. Investing in your intellectual property capital means securing it with the help of legal professionals.
At PLF Law Firm, we provide expert advice on Vietnamese legal practices and intellectual property legal services to ensure your trademark is fully protected. Trust us to guide you through the legal landscape with confidence and ease. - Secure your rights on a trademark before starting any operations: divulging your brand image and starting major business operations without securing a prior monopoly on the use of your sign can ruin your entry into the market and benefit an operator with a similar sign or a local competitor who will find it much easier to grab your market share by registering his mark first.
- Apply trademark registration in Vietnam procedure: this procedure can be anticipated through international trademark registration via the Madrid Agreement, but you can also take the classic route through a national application.
- Carry out a prior trademark search in Vietnam: under the principle of territoriality, a similar or identical prior trademark may already occupy your relevant market in Vietnam. In such cases, coexistence with your trademark entails two major risks:
- firstly, the risk of ambiguous coexistence, leading the owner of the earlier trademark to take action against your trademark, either to invalidate its registration or to claim infringement of its products or services;
- Last but not least, there is the risk that a lack of distinctiveness of your trademark in relation to earlier trademarks will make it impossible to distinguish your operation in your relevant market, which may ultimately weaken your brand image.
11. Elements of Vigilance
11.1 What is your general advice for protecting trademark in Vietnam, and what potential sticking points would you highlight?
Trademarks are one of the most important assets for identifying a company in a market, and their infinitely renewable monopoly ensures that the distinctive signs used in all commercial operations will endure over time.
However, as we have already seen, trademarks require a great deal of attention, management, and monitoring if they are to be as profitable as possible.
Here are some of our most valuable tips on how to make the most of your trademark rights:
- Choosing the right sign: between figurative, word, and sound marks, there are a multitude of signs that can be registered. To best protect your future business, make sure that :
- The sign is available and free from any visual similarity to a prior right existing in Vietnam, which could threaten its registration.
- The sign is available and free from any visual similarity to a prior right existing in Vietnam, which could threaten its registration.
- The sign is available and free from any visual similarity to a prior right existing in Vietnam, which could threaten its registration.
- Carrying out a trademark using surveillance: particularly in extremely dynamic markets such as ready-to-wear, e-commerce, and consultancy, which are easily exported around the world, many economic players enter the market every year. It is still advisable to monitor the entry of competing players into the market to ensure that the use of your sign is not undermined by a new registration or use as a trade name.
- Provide clear and precise information on the fact that your trademark is registered: Intellectual property has a passive dimension, which consists of deterring infringing intent by publicly conveying explicit references to the fact that the sign belongs to you. This leaves a strong impression of surveillance and of dynamism regarding potential legal action: a malicious competitor could be dissuaded from seeking to imitate a sign that the company publicly mentions as belonging to it. This policy of dissuasion involves clear clauses on intellectual property in your general terms and conditions of sale and contracts, demonstrating that your company is prepared to take legal action in the event of unauthorized infringement.
- If the use of your trademark is transferred, whether exclusively or not, to potential licensees or through a franchise network, make sure that the material and economic conditions guarantee the origin of the products and/or services marketed under your brand. Precise and binding specifications are a good way of controlling the quality of your products, which will benefit your brand image.
- React swiftly to any infringement of your rights by a third party: set your limits clearly and call in professional intellectual property legal services to track down any potential infringer on legal and objective grounds.
- Surround yourself with competent legal professionals.
Ensuring your trademark stands the test of time in Vietnam involves understanding its vulnerability to expiration and invalidation. As we navigate the complexities of trademark law, it’s clear that a strategic approach to intellectual property management is not just beneficial but necessary for lasting brand protection.
For detailed guidance and expert support in protecting your trademark in Vietnam, consider partnering with the PLF Law Firm. Our team is dedicated to safeguarding your intellectual property rights, offering a robust defense against infringement and ensuring your trademarks endure.
Schedule a meeting [Here] to gain a 30-minute free consultation.
Explore more on this topic in previous parts: [Part 1], [Part 2] or Download full PDF version: [here].
