After concluding substantive examination, if the trademark application is found not to satisfy protection requirement, the IP Office of Vietnam will issue a Notice on its intended refusal to grant a mark registration and set a time limit of three (3) months from the date of issuance of the notice for the applicant to give opinions. If the response is found not grounded, the IP Office of Vietnam will issue a refusal Decision (the first Decision). The trademark applicant may file an appeal against such first Decision with the IP Office of Vietnam. The appeal will be then examined and a second Decision on settlement of the appeal will be issued by the IP Office of Vietnam. If unsatisfactory with the IP Office of Vietnam’s second Decision, the concerned party may files lodge their appeal (second-time appeal) with the Science and Technology Minister (“MOST”), the supervising body of the IP Office of Vietnam, or initiate lawsuits at court.
As a matter of laws and practice, regarding the appeal proceeding against the IP Office of Vietnam’s decision, please be advised that if any of the relevant parties does not agree with the IP Office of Vietnam’s decision on the trademark case, he/she is entitled:
(i). to file the first-time appeal against the IP Office of Vietnam’s decision on the trademark case with the IP Office of Vietnam (not the MOST); or
(ii). to institute an administrative lawsuit at court against the IP Office of Vietnam’s decision on the trademark case.
In the circumstance (1), if the first-time appeal remains unsettled by the IP Office of Vietnam at the expiration of the settlement time limit, or if any of the relevant parties does not agree with the first-time appeal settlement issued by the IP Office of Vietnam, he/she is entitled:
(i). to file the second-time appeal against the IP Office of Vietnam’s decision on the first-time appeal settlement with the Ministry of Science & Technology (“MOST”); or
(ii). to institute an administrative lawsuit at court against the IP Office of Vietnam’s decision on the first-time appeal settlement.
In addition, in the circumstance (i), if the second-time appeal remains unsettled by the MOST at the expiration of the settlement time limit, or if any of the relevant parties does not agree with the second-time appeal settlement issued by the MOST, he/she is also entitled to institute an administrative lawsuit at court against the MOST’s decision on the second-time appeal settlement.
Regarding the time limits for settlement of appeal filed with the IP Office of Vietnam and the MOST, please see our following advice:
- The time limit for the IP Office of Vietnam to settle the first-time appeal is 30 days after the appeal is accepted. For complicated cases, the time limits may be prolonged, but cannot exceed 45 days (Art. 28, Law on Appeal);
- The time limit for the MOST to settle the second-time appeal is 45 days after the appeal is accepted. For complicated cases, the time limit may be prolonged, but cannot exceed 60 days (Art. 37, Law on Appeal).
However, in practice, both first-time appeals at the NOIP and second-time appeals at the MOST take quite a long time over the prescribed time limits due to the complexity of the appeal cases and the shortage of human resources at the NOIP and the MOST. For your indications, practically, first-time appeals at the NOIP may last for approx. 30-40 months, and second-time appeals at the MOST may last for approx. 10-20 months, or even longer for very complicated cases.
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