Tuesday, January 16, 2018

j. Cancellation, termination of a Trademark Registration in Vietnam

Many clients ranging from individuals to big companies in the world seek Kenfox’s counsel to protect their trademarks Vietnam, Laos, Cambodia and Myanmar.

If you wish to remove a trade mark from the register, or if your registrations are attacked, we can advise and act on your behalf in cancellation and termination proceedings.  

According to IP Law of Vietnam, “termination” and “cancellation” are two different legal terms since they refer to different grounds which lead to “termination” or “cancellation”, i.e.:

In accordance with Article 95 which stipulates about “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;

(đ) 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.

2. Where the owner of an invention protection title fails to pay the validity maintenance fee before the stipulated time-limit, the validity of such protection title shall, upon the expiration of such time-limit, automatically terminate as from the first day of the first valid year for which the validity maintenance fee has not been paid. The State administrative body for industrial property rights shall record such termination in the National Register of Industrial Property and publish it in the Official Gazette of Industrial Property.

3. Where the owner of a protection title declares relinquishment of the industrial property right as stipulated in sub-clause(b) of clause 1 of this article, the State administrative body for industrial property rights shall decide to terminate the validity of such protection title from the date of receipt of the owner's declaration.

4. Organizations and individuals shall have the right to request the State administrative body for industrial property rights to terminate the validity of protection titles in cases specified in sub-clauses(c),(d),(đ),(e) and (g) of clause 1 of this article, provided that such organization or individual pays fees and charges. Based on the result of the examination of a request for termination of validity of a protection title and the opinions of the parties involved, the State administrative body for industrial property rights shall issue a decision on termination of validity of a protection title or notify refusal to terminate the validity of the protection title.

5. The provisions of clauses 1, 3 and 4 of this article shall also apply to the termination of validity of international registrations of marks.

It is of importance note that in order to file an application for terminating the validity of a Trademark Registration based on its non-use, the requester must provide the NOIP with legitimate evidences. We have assisted many clients to successfully gather sufficient evidences for termination purpose through our closed coordincation between our trademark attorney with the Vietnamese competent authorities.

Meanwhile, in accordance with Artilce 96, IP Law which stipulates about “Cancellation of effectiveness of protection titles”

2. A protection title shall be entirely invalidated in the following cases:

(a) The applicant for registration has neither had nor been assigned the right to register the invention, industrial design, layout design or mark;

(b) The industrial property object failed to satisfy the protection conditions at the time the protection title was granted.

2. A protection title shall be partly invalidated as to the part which failed to satisfy the protection conditions.

3. Any organization or individual may request the State administrative body for industrial property rights to invalidate a protection title in the cases specified in clauses 1 and 2 of this article, provided that such applicant pays fees and charges. The statute of limitations for exercising the right to request invalidation of a protection title shall be the whole term of protection of the protection title. For marks, such statute of limitations shall be five(5) years from the grant date, except where the protection title was granted as a result of dishonesty of the applicant.

4. Based on the result of the examination of a request for invalidation of a protection title and the opinions of the parties involved, the State administrative body for industrial property rights shall issue a decision on entire or partial invalidation of the protection title or shall notify refusal to invalidate.

5. The provisions of clauses 1, 2, 3 and 4 of this article shall also apply to the invalidation of international registrations of marks.

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