Causes leading to termination of trademark validity in case of no actual use for 05 consecutive years

1. The regulations regarding the termination of trademark validity 

According to the current IP Law, the trademark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years may be requested for termination of validity of the protection title of a trademark3. The above regulations grant third parties the right to request the termination of validity of protected trademarks that are not practically used, in order to prevent speculative registration as well as eliminate desirable opportunities to register trademarks of other parties.  

However, the termination of the protection title of trademark clause, specifically, clause 2 Article 136 and point d clause 1 Article 95 Intellectual Property Law 2005 (amendment and supplement on 2009, 2020 and 2022) (hereinafter reffered to  “IP Law”), does not regulate the commencement time to determine the actual use of trademark in practice. Whether the commencement time shall be the application date or the registration date? The establishment time of the industrial property right regarding trademark shall be establishing on the basis of granting protection title of the competent authority4. Based on the definition of the trademark, the trademark is defined as any sign used to distinguish goods or services of different organizations or individuals5. Based on the above grounds, before grating the protection title of the National Intellectual Property Office (“NOIP”), the trademark is only considered a sign. Hence, the commencement of the 05 years term of non-consecutive use shall be the granting certificate date.

2. The cause of termination of validity of not using the trademark for 5 consecutive years

2.1 Speculative registration for many classes of goods/services does not include the business lines of the owner 

Trademark protection scope is based on 03 main elements: (i) Trademark specimen, (ii) Goods/Service, (iii) Territorial scope. The trademark shall be protected corresponding to the registered class of goods/services. With the demand of entirely protecting our trademark, number of owners also register for the class of goods/services that is not under their business lines.  

In principle, the law does not regulate that the owner shall submit the evidence of using a trademark appropriate to the business lines. Otherwise, since the time the trademark is protected, if the owner does not use the trademark for the registered goods/service, the owner may be requested to terminate the validity of the trademark regarding that class of goods/service.   

For instance, the owner have the primary products is LED light and interested in register the trademark “A”, he registers for the following class of goods/service: 

Class 09: Light-emitting diodes [LED]. 

Class 30: Condiment. 

In this case, the owner does not actually have commercial activities with the condiment product, hence, he will be terminated the validity of trademark protection title if the condiment product is not on sale for the 5 years after the registration date.  

Following the basic principle of trademark registration, first of all, the owner should register the classes of goods/services which are appropriate to their current business lines as well as shortly.  

2.2 Trademark registration for various color  

Currently, there are controversies surrounding whether registering a trademark in black – white, or in color shall be the most efficient one. According to clause 1 Article 34 Decree 65/2023/ND-CP, the protection scope regarding trademark shall be recorded in the certificate, and title. As prescribed in Article 5.C(2) Paris Convention “Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.” In case by case, the color shall be possibly considered the distinctiveness, altering a color in a trademark will be considered altering the trademark specimen. Therefore, registering a black and white trademark does not completely protect all remaining color trademarks. 

During commercial activities, the owner tends to create the branding with various color tones, appropriate to each customer. With the desire to entirely protect the cooperation identity, the owner shall be registered with all the design colors. As mentioned above, according to the current legislation, the protection scope of the trademark corresponds to the registered trademark. Therefore, the owner may encounter the termination of validity as prescribed in point d clause 1 Article 95 IP Law for the trademark with the unused color.  

Considering and choosing the dominant color or trademark in the Vietnamese market shall be the priority consideration prior to registration. This step may support the owner cuts down necessary costs.  

2.3 Trademark is used on the website that does not direct to Vietnamese consumer  

Consumers gradually engage in e-commerce transactions, becoming one of the dominant sale methods in the current market. The e-commerce directs to the domestic and international market, while the scope of trademark protection is territory. According to clause 2 Article 124 IP Law, the use of a trademark including affixing the trademark to goods, goods packages, business facilities, means of service provision, or transaction documents in business activities. Whereby, the website may also be considered a means of business.  

A trademark is actually used when it is (i) affixed to the protected goods, services, (ii) is advertised on social media, (iii) is on sale on social media, e-commerce or on the website of an enterprise. The factors to evaluate whether the e-commerce website or the commercial website is directed to the national consumer shall be (i) the domain, (ii) the language, (iii) the currency, (iv) the delivery method, etc. Therefore, a trademark is used in the website based on several elements.  

Therefore, promoting and selling products affixing trademark on websites, the owner should consider the above factors. Simply offering a certain product but not direct Vietnamese consumers cannot be determined to be used in practice in Vietnam.

Conclusion

According to the above ground, there are several invisible reasons that can result in the termination of the validity of the trademark. The owner may be aware and thoughtfully consider prior registration, in order to protect their right. 

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