To be more compatible with the recent signed trade pacts, including European Vietnam Free Trade Agreement (“EVFTA”), the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”), and most recently the Regional Comprehensive Economic Partnership (“RCEP”) and the UK Vietnam Free Trade Agreement (“UKVFTA”), some new critical trademark examination principles/practices have been introduced/adopted by the IP Office of Vietnam (“IP Vietnam”). KENFOX IP & LAW OFFICE provides below several important takeaways.
1. Three-dimensional mark
Statutorily, a trademark is eligible for protection in Vietnam when satisfying two requirements, i.e.
In light of the foregoing stature, 3D marks can be protected in Vietnam.
However, account should be taken into account that in respect of both national applications and international applications, if a three-dimensional mark is identified as the shape/container design of the claimed goods, such a 3D mark shall be refused registration even if it is combined with other distinctive elements.
For international applications only: If the applied-for three-dimensional mark is deemed not the shape/container design of the goods under the list of claimed goods and services, then it shall be accepted for registration as a 3D trademark in Vietnam.
For national applications:
2. Trademarks comprising uncommon languages
Common languages officially recognized by the IP Office of Vietnam comprise 3 languages, i.e. (i) Vietnamese, (ii) English and (iii) French.
That being said, in trademark examination, the words/phrases in uncommon languages such as German, Spanish or Italian is not the minimum source of information that examiner must conduct searches. As such, it is interpreted that words/phrases in uncommon languages such as German, Spanish or Italian may be accepted for registration as trademarks, even if such words/phrases carry meanings descriptive of the claimed goods/services. This is due to the fact that local consumers may understand the descriptive meaning of such uncommon languages.
However, in case the IP Vietnam’s examiner for any reasons come to know that a mark comprising words/phrases in the above uncommon languages is deemed descriptive of the claimed goods/services, such a mark (i) will be only registered if it contains other distinctive elements with the descriptive words/phrases being disclaimed, or (ii) will be refused registration under Article 74.2(c), Vietnam IP Law if it does not contain any other distinctive elements.
In case the words/phrases in uncommon languages and do not belong to Latin-origin language, but they are represented in identical form of Latin language which Vietnamese consumers can recognize and memorize, e.g. the word “ABPOPA” (in Russian, it is pronounced as “AVRORA”), if in the trademark application:
3. Trademarks that employ geographical names
In order for examiner to determine whether a geographical names is a sign indicating the geographical origin of the claimed goods/services, it is required to assess the relationship between the claimed goods/services and geographical location as stated in a trademark application.
4. Other principles adopted for examining trademark registrability
Concrete exemplified cases
5. Collective marks, Certification marks containing a geographical name or other sign serving as a geographical indication of foreign specialties
The applicants do not need to provide a Permit on use of the geographical name from a competent authority in that country or any document, evidence substantiating entitlement to use the geographical name in the trademark to indicate that such Collective marks, Certification marks have been protected in the country of origin.
6. Letter of Consent to overcome a trademark refusal in Vietnam
Statutorily, Vietnam does not adopt consent letter regime to exclude the likelihood of confusion. Still, in practice, the examiners could accept such letter on case-by-case basis. Currently, a Letter of Consent is acceptable to overcome a trademark refusal in Vietnam if it satisfied two following requirements:
Additional noteworthy points
7. Determining legal status of citation
The time for determining relevant prior marks is computed from the filing date or the priority date of an applied-for mark.
Because information on the citation may change over the course of time, information about the cited mark(s) is determined at the time the applied-for mark is examined.
The foregoing principle implies that it is now possible to use the successful non-use cancellations/invaldiations against the cited mark(s) as a ground to request the IP Vietnam to accept protection for an applied-for mark, regardless of whether the cited marks were still valid at the filing date of the applied-for mark. This new principle has resulted in a termination for a long debate on determination of legal status of citations between IP Vietnam and IP practitioner recently.