“Bad faith” most commonly arises in the context that a trademark is used in one or more jurisdictions, but is not registered in those jurisdictions, and someone (other than the trademark owner) applies for an identical or confusingly similar trademark in a jurisdiction where the trademark is not registered. This aims at preventing the trademark owner from entering the market, with the intention of selling the trademark application to the trademark owner when the owner attempts to enter that market, or simply wishing to profit from the trademark owner's reputation. Such applications may be rejected as "bad faith" applications.
The common denominator seems to be that “bad faith” involves some kind of dishonest, abusive or unseemly behaviour by a trademark applicant. Thus, it is quite controversial to confirm if the refiling of a very similar or identical trademark by a trademark owner, or the filing of a so-called "defensive trademark", can amount to "bad faith" (in the sense that such marks are not used, or not genuinely used, but nonetheless obstruct the use and/or registration of a third party trademark).
There is always a lack of predictability regarding what constitutes “bad faith” because such concept will be differently provided in jurisdictions. This means both trademark owners and applicants for registration may need to take different approaches in different jurisdictions.
The Paris Convention for the Protection of Industrial Property (Paris Convention) contains only two references to bad faith, but does not in either case define or describe what constitutes bad faith. Article 6bis (3) provides that no time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in "bad faith". Article 6ter (7) provides for particular rights in relation to cases of "bad faith" in relation to marks incorporating State emblems, signs and hallmarks. In respect of TRIPS, no further guidance on what constitutes "bad faith" is provided. A reference to “bad faith” is found in Article 24(7) of TRIPS, but this is confined to specific issues concerning the intersection between geographical indications and trademarks
The Law on Intellectual Property of Vietnam 2005, revised in 2009 (“the IP Law 2005”) does not lay down regulations on what act is considered as “bad faith” in registering a mark in Vietnam, thus, the interpretation of "bad faith"/dishonesty as the ground for cancellation action depends on the National Office of Intellectual Property of Vietnam (“IP Viẹtnam”) on case-by-case basis. However, evidence of “bad faith” trademark filings/registrations are often accepted by IP Vietnam when the genuine trademark owner may provide evidences to substantiate that “the ("bad faith") registrant is aware of genuine holder’s trademark” through “relationship” between the registrant and genuine trademark holder manifested by investment, license or contract relations, or the like.
Despite the foregoing, in absence of the above-identified "bad faith" evidences, the genuine trademark owner may predicate on Article 96.1(b) of the IP Law 2005 which provides that [“1. A protection title shall be entirely cancelled in the following cases:… (b)The industrial property object failed to satisfy the protection conditions at the time the protection title was granted”] to initiate a trademark cancellation proceeding. To this end, the genuine trademark owner may provide evidence to prove their used-based rights of their unregistered mark under either and/or both of the following grounds (i.e. well-known ground and/or wide-use ground):
Article 74.2g, the IP Law 2005 (Wide-use ground): “[Signs should be refused for trademark protection in Vietnam if they are] Signs identical with 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.
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