Guidelines for application of procedures for suspension of examination of mark registration applications in Vietnam

Every mark registration application will undergo a formal examination and a substantive examination of the mark registration application. In some cases, a mark registration application may be suspended from examination. The suspension of examination of mark registration application may be made when the examiner receives examination suspension request from the applicant or a competent party for awaiting the results of a matter or other registration application with direct impact on the mark registration application under consideration. The following article will clarify some regulations related to the procedures for suspension of the examination of mark registration applications in Vietnam. 

1. Cases of suspension of examination of mark registration applications

The Article 117 of the revised Law on Intellectual Property 2022, taking effect from January 1, 2023, adds new regulations on procedures for requesting suspension of mark examination. Accordingly, the suspension of examination of mark registration application can be understood as the Intellectual Property Office of Vietnam’s suspension of the substantive examination of the mark registration application and awaiting results from another ongoing procedure as basis for continuing the mark examination. This mark examination suspension is to ensure that the mark examination results are comprehensive, complete and properly assess the subject matter registered for protection as well as the control subject matter to reject the mark registration application under consideration. 

There are 02 cases leading to the suspension of mark examination, including:

i. Case 01: Suspending mark registration application examination in case the applicant files a request for such suspension and requests termination of validity or invalidation of the mark registration certificate in the exclusion cases specified at Points e and h, Clause 2, Article 74 of the Law on Intellectual Property. Based on results of the settlement of the request for termination of validity or invalidation of the mark registration certificate, the state management agency in charge of industrial property rights shall proceed with the application examination. 

In particular, Points e and h, Clause 2, Article 74 of the Law on Intellectual Property 2022 include the following cases where a mark is considered as indistinctive:

“… e. Signs identical with or confusingly similar to marks of other organizations and individuals protected for identical or similar goods or services on the basis of registration applications with earlier filing dates or priority dates, as applicable, including mark registration applications filed under treaties to which the Socialist Republic of Vietnam is a contracting party, unless the validity of the registration of such marks is terminated under Point d, Clause 1, Article 95 or the registration of such marks is invalidated under Article 96 according to the procedures specified at Point b, Clause 3, Article 117 of this Law;

…

h. Signs identical with or confusingly similar to marks of other organizations and individuals protected for identical or similar goods or services, the validity of registration certificates of which has been terminated for no more than three years, unless the validity of registration of such marks is terminated under Point d, Clause 1, Article 95 according to the procedures specified at Point b, Clause 3, Article 117 of this Law.”

ii. Case 02: Suspending the process of mark registration application examination in case of receiving a copy of the competent court’s notice of acceptance of the case that the third party initiates a lawsuit concerning the right to register subject matters of industrial property or the mark is registered with bad intentions. Based on the court’s settlement results, the state management agency in charge of industrial property rights shall proceed with the application examination.

Suspending the process of mark registration application examination is a new regulation supplemented for the first time to Article 117.3 of the Law on Intellectual Property 2022. 

Thus, if the mark registration application falls into the cases where the Intellectual Property Office of Vietnam issues a notice of its intention to refuse to grant the mark registration certificate under Points e and h, Clause 2, Article 74 of the Law on Intellectual Property, the subsequent applicant may request the Intellectual Property Office of Vietnam to suspend the processing of the application in order to pursue the procedure for termination of validity or invalidation of the control mark. If successful, the Intellectual Property Office of Vietnam will issue a decision on termination of validity or invalidation of the control mark and will withdraw this mark from the control document and continue to examine the subsequent applicant’s mark application (grant of protection titles). The processing time for the procedure for termination of the control mark’s validity will not be included in the processing time of the subsequent applicant’s application.

2. Considerations upon suspension of the examination of mark registration applications

Currently, the revised Law on Intellectual Property 2022 does not have any detailed guidelines for procedures, application components and detailed methods to make a request to suspend the examination of mark registration applications. During the preparation and approval of the guiding decrees and circulars by the competent authorities, it is very likely that the regulation on mark examination suspension will still be delayed in practical application. 

In addition, in some countries, especially when registering a mark in China, the application of mark examination suspension may prolong the average time it takes for the Intellectual Property Office of Vietnam to process a mark application. Factually, the time to settle a civil case on the registration right will be much longer than the time for the mark registration application examination, that can slow down the system and require another level of complexity in the management of procedures for establishing mark rights from the Intellectual Property Office of Vietnam.

Due to the above problems, at the current phase, it is recommended that the applicant should still perform an in-depth search for mark protectability before filing a mark registration application to detect and initiate the process of requesting the termination of validity or invalidation of prior marks if it is found to have sufficient grounds. In addition, at the time of receiving the results of the examination of the mark registration application with the intention of refusal under Point e or h, Clause 2, Article 74 of the Law on Intellectual Property, the applicant may also consider re-filing a new mark registration application similar to the one in which the application is intended to be suspended due to the uncertain results of the examination request suspension at this phase. 

The above are some of our opinions related to the direction of application of the new regulation on procedures for requesting suspension of mark examination, which is provided for the first time in the revised Law on Intellectual Property 2022. For any questions on the procedure for requesting suspension of mark examination, please respond to Apolat Legal via email info@apolatlegal.com.

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