Practical notes to respond a trademark refusal notice in Viet Nam

Updated on: 23/03/2023

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1. Summary trademark examination procedure in Viet Nam

It is important to understand the trademark examination process in Vietnam, which consists of two stages: the formality examination and the substantive examination.

Firstly, the formality examination takes place within one month from the filing date and checks for any issues related to the classification and wording of goods/services or the application form. If there are any issues found, Vietnam National Office of Intellectual Property (NOIP) may notify the applicant through an Office Action (notification). Resolving issues raised during the formality examination is usually straightforward, such as by making suggested changes to the wording of the goods/services or accepting the changes outlined in the NOIP’s notification.

The substantive examination takes place within nine months from the publication date and determines whether the trademark meets the protection criteria. If the trademark does not meet the criteria, NOIP will issue an Office Action, which will be communicated to the applicant or their legal representative through a notification.

2. Main grounds for refusal against trademarks in Viet Nam

NOIP examines trademarks based on two grounds: (i) absolute ground and (ii) relative ground for refusal as outlined in Articles 72, 73 and 74 of the Vietnam Intellectual Property Law 2005, amended in 2009, 2019 and 2022 (“Vietnam IP Law”).

There is no statutory provision distinguishing between relative ground and absolute ground for trademark refusal. However, in practice, relative grounds in Vietnam are usually considered including situations where an applied-for trademark is identical or confusingly similar to another person’s pending or registered trademark for the same or similar goods/services. The case where the trademark is considered identical or similar to another person’s trade name, industrial design and could lead to confusion about the origin of goods or services may also result in trademark refusal on relative ground. In conclusion, relative grounds for refusal deal with the mark in connection to other person’s marks. Most of the reasons for relative ground are covered under Article 74.2 of Vietnam IP Law.

Relevant topic: The “first to file” principle in the protection of industrial property objects

Besides the cases above, IP Law outlines certain categories of trademarks that are not eligible for protection due to their lack of distinctiveness. These are referred to as absolute refusal grounds, which include trademarks that are deemed to be immoral, generic, descriptive, non-distinctive, or customary. If a trademark falls into one of these categories, it will be refused. However, if a trademark has a distinctive character, the applicant can submit arguments to support its eligibility for protection. These absolute refusal grounds are outlined in Articles 73 and 74.2 (a, b, c, d, and dd) of the Vietnam IP Law.

The trademark refusal issued by NOIP in a substantive office action could be based on either absolute grounds, relative grounds, or a combination of both. The refusal could also be full or partial of the trademark application.

It is important to note that the registration of a sign as a trademark may be declined if the nature of the sign in question does not conform to the definition “trademark” stated in the law, or if it does not meet the conditions required to be eligible for registration. If the sign in question fails to meet the established definition of “trademark” then the registration of the sign as a trademark should be denied. In such a scenario, there will be no need to evaluate the sign based on other possible reasons for refusal such as absolute or relative grounds.

3. Absolute grounds for refusal against trademarks in Viet Nam

According to Article 73 of the Vietnam IP Law, there are absolute grounds for refusal of trademark registration. If the trademark application does not meet the requirements outlined in this article, it will be denied on absolute grounds.

The prohibited cases are grounds for trademark rejection specified in Article 73 of the Vietnam IP Law including:

Signs identical with or confusingly similar to national flags or national emblems.
Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used unless such seals are registered as certification marks by such organizations.
Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

The prohibited cases are grounds for trademark rejection specified in Article 74.2 (a, b, c, d, and dd) of the Vietnam IP Law including:

(a) Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;

(b) Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;

(c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;

(d) Signs describing the legal status and business sector of business entities;

(e) Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law.

4. Common method to overcome absolute grounds of generic and descriptive words

Regarding generic words, the ground for refusing trademark registration also applies not only to commonly used names for goods and services, but also to names that have become the standard designation or have gained a new meaning for a product or service among a significant part of the local population. For example, younger people in a community may have a tendency to create innovative expressions to describe certain goods or services. Hence, the assessment of refusal must be made within the specific context of each country or community, taking into account the language or languages spoken there.

A descriptive trademark refers to a mark that provides information about the product or service to consumers. Such marks are considered to convey exclusive rights to symbols that may conflict with the rights of other merchants to describe their goods or communicate with the public. The law prohibits the registration of descriptive trademarks as it creates a monopoly in the market and limits the usage of these signs for other competitors. The prevention of market monopolization is one of the key reasons why descriptive words or signs cannot be protected as trademarks.

The registration of a descriptive mark, such as “COTTON” for cloth, clothing, or “Fresh” for fruits, could limit the ability of other sellers to accurately convey information about their consumers. One of the main reasons for not registering a descriptive mark is the potential monopolization of a common word.

The most common methods to overcome substantive office actions based on generic words or descriptive marks are using exceptions. According to Article 39.5 of Circular 01/2007/TT-BKHCN, a sign has been used as a mark and widely known to consumers and that mark therefore become distinguishable from relevant goods and services. The applicant shall submit evidence of the wide use of that mark (the time of the beginning of the use, present scope and level of use, etc., in which, the mark shall be considered in use when the use is made in lawful production, business, commercial, advertising or marketing activities) and evidence of the mark’s distinctiveness from the mark proprietors’ relevant goods and services. In this case, that mark shall be recognized as distinctive if it is presented in the form in which it has been uninterruptedly and widely used in reality.

5. Relative grounds for refusal against trademarks in Viet Nam

Relative grounds include the following cases (as stipulated under Article 74.2.e, f, g, h, I, k, l, m, n):

Signs other than integrated marks that are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which Vietnam is a member;
Signs identical to or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was
non-use of the mark pursuant to sub-clause (d) of article 95.1 of Vietnam Law Law;
Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
Signs identical with or insignificantly different from another person’s industrial design have been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.

In the cases above, the ground of Article 74.2.e is the most common base for provisional refusal in the practice of trademark registration. In most cases, overcoming the refusal based on Article 74.2.e of Viet Nam IP Law is not an easy task. Assessing the similarity between trademarks using the relative ground criteria is a complex task that involves a lot of subjective opinions from trademark examiners.

6. Factors to be considered before responding to substantive office actions

There are several factors that are important in determining whether there is a likelihood of confusion between two trademarks and in choosing the strategy to respond the provisional refusal notice of NOIP. These factors include:

The similarity between the marks is in terms of their visual appearance, content, meaning, and pronunciation and structure.
The relatedness of the goods or services described in the trademark application.
The similarities in trade channels.
The level of consumer sophistication.
The validity of the conflicting trademarks.
The use of the conflicting trademark in commerce
Evidence of concurrent use without actual confusion.
Whether the trademark is used on a variety of goods or only on a single product.
The fame of the trademark, including its sales volume, advertising spending, and length of use.
The number and nature of similar marks being used in commerce for similar goods or services.
Evidence of actual confusion.
The market relationship between the applicant and the owner of the earlier mark.
The potential degree of confusion, whether minor or substantial.
The extent to which the applicant has the right to exclude others from using its mark.

To lower the chances of being rejected due to relative ground using potential confusion reason, it is advisable to perform a trademark search before submitting a trademark application. This allows the applicant to assess the probability of rejection and make a decision to choose a different trademark if needed.

7. Process to Respond to Trademark Office Action

If the applicant receives a provisional refusal notification for a trademark registration, the applicant should review it carefully to determine which ground the refusal bases on. If the applicant disagrees with the NOIP’s decision, they can submit an official response to the refusal notification. The deadline to respond is three months from the date of receiving notification. This deadline can be extended for limited cases.

Upon receiving the official response, NOIP’s examiner will review the arguments and evidence presented. If they find the applicant’s arguments are reasonable, NOIP may agree to grant the protection title, and the applicant will need to pay the necessary fees for granting. On the other hand, NOIP’s examiner may reserve their refusal opinion and eventually issue a Decision of Trademark Refusal. In this case, the difficult appeal process at the higher level authority is the next choice for applicants.

Disclaimer: This article is for general information only and is not a substitute for legal advice. Apolat Legal is a Vietnamese law firm with experience and capacity to advise on matters related to Intellectual Property Rights. Please click here to learn more about our services and contact our lawyers in Vietnam for advice via email info@apolatlegal.com.