Tuesday, June 27, 2017

Trademark Use in Vietnam

1. Based on the advertising regulations in Vietnam, the Vietnamese competent advertising regulatory authority is entitled to request your client to provide the relevant documents for the advertising purpose, of which the Trademark Registration Certificate in Vietnam is one those documents.

2. In case that your client changed the mark into a different format, it depends on the competent person who can accept or refuse your client's provided Trademark Registration Certificate. On the negative sign, he may say that the trademark used on the advertising documents is not the one which was registered. What we are trying to say here is that your client's Vietnamese distributor who filed the dossier for advertisement needs to exchange with the the competent advertising authority in order to obtain his approval.

In light of (2) above, we recommend that your client may submit a written commentment which clearly indicates the followings:

(i) Article 87 of the IP Law of Vietnam stipulate that "Organizations and individuals shall have the right to register marks to be used for goods such organizations or individuals produce or for services such organizations or individuals provide". That is to say, in principle, the registration of the mark is not compulsory in accordance with the relevant law of Vietnam;
(ii) the changed form of the trademark is, in fact, the trademark as registered and it does not infringe any third party's IP rights
(ii) your client pledges that he shall take any legal responsibility if any appeals concerning such  use arises.

3. Whether it is prohibited in using any slightly changed form of registered trademark in Vietnam?

There has not been any clear regulations under IP Law and other IP related legal document which regulates the use of slightly changed form of registered trademark. However, in this
context, the relevant advertising authority may still refuse to grant the Advertising Permit for your client's distributor in Vietnam if the mark is not the same with the one registered in Vietnam.

4. Whether any legal risks or some adverse consequences will occur if the client continues to use its changed form of the mark in business without indication of "Registered Trademark".
Yes, there remain some possible legal risks or some adverse consequences

(1) The third party may apply Article 95.1.d of the IP Law of Vietnam to file a 5-year non-use invalidation request. 

1. Arctile 95.1.d regulates about the termination of validity of protection titles as follows: 1. The validity of a protection title shall be terminated in the following cases:... 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.

Although your client may say that the changed form is similar to the registered trademark and can not be considered that the registered trademark has not been used. However, the third party may say that such changed form is not the registered trademark and what that are targetting is the registerred trademark, not the changed form and the third party may also confirm that he is not aware the changed form is used by the trademark owner or the person or organization allowed by the trademark owner.

5. Our proposed course of action

Having considered your client's actual situation, the filing of further trademark applications covering the different format of the mark is recommended in order to avoid the possible legal risks as indicated in 4) above.

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