1. Does examiner wait examination for pending application until the decision of a third system to request cancellation of a trademark registration against the conflicting citation to be made?
KENFOX: In principle, the prosecution of trademark applications, and proceeding of cancellation are two separate procedures. Hence, the examiner is not obliged to hold the examination of the pending applications until the decision on the cancellation case is issued. However, in practice, the applicant may file with the VIETNAM IP OFFICE a request to hold the examination of the pending applications. Such request may be, in case-by-case basis, acceptable, and the applications may be kept pending a bit longer to await the decision on the cancellation case to be issued.
2. Is it possible to file a cancellation request against a trademark registration in the name of other party?
KENFOX: It is possible to file a cancellation action in the name of other party in order not to disclose information on the party who actually wishes to file such cancellation action.
3. Is proprietor of the conflicting citations required to show prior use of the mark in non-use cancellation action?
KENFOX: There is no explicit regulation on the issue. However, as a matter of fact, in defense against a non-use cancellation, the defendant is required by the VIETNAM IP OFFICE to submit evidence of use of the mark.
4. Is the party who files a non-use cancellation required to show non-use of the marks?
KENFOX: Yes, to initiate a non-use cancellation action against a trademark registration, the party who files a non-use cancellation is required to show evidence of non-use of the mark per Article 21.2b(iv), Circular 01/2007/TT-BKHCN dated 14 February 2007, revised in 2010 and 2011 ("Circular 01"))
5. Is partial cancellation action for specific class in the registration possible?
KENFOX: There is no explicit regulation on the issue. However, as a matter of fact, partial cancellation action for specific classes in the registration is possible.
6. Is partial cancellation action for specific goods and services in the registration possible?
KENFOX: There is no explicit regulation on the issue. However, as a matter of fact, partial cancellation action for specific goods/ services in the registration may be possible.
7. Are non-use cancellation actions filed before the Trademark Office, Registry or any other body?
KENFOX: Non-use cancellation action should be filed before the National Office of Intellectual Property of Vietnam. (Legal ground: Article 95, the IP Law 2005)
8. Are non-use cancellation actions filed in Court?
KENFOX: The non-use cancellation is not subject to the court's jurisdiction. However, in case either party does not agree with the VIETNAM IP OFFICE's decision on the cancellation case, they may initiate a lawsuit under administrative proceedings against the VIETNAM IP OFFICE's decision. (Legal ground: Section A.I.3, Circular 02/2008/TTLT dated 03 April 2008 on jurisdiction of the courts.)
9. Can any person file a non-use cancellation?
KENFOX: Any person can file a non-use cancellation. (Legal ground: Article 95.4, the IP Law 2005: "Organizations and individuals shall have the right to request the State administrative body for industrial property rights to cancel the validity of protection titles in cases specified in sub-clauses (c), (d), (dd), (e) and (g) of clause 1 of this article, provided that such organization or individual pays fees and charges.")
10. Is special legal interest necessary to file a non-use cancellation?
KENFOX: Special legal interest is not necessary to file a non-use cancellation. (Legal ground: Article 95.4, the IP Law 2005: "Organizations and individuals shall have the right to request the State administrative body for industrial property rights to cancel the validity of protection titles in cases specified in sub-clauses (c), (d), (dd), (e) and (g) of clause 1 of this article, provided that such organization or individual pays fees and charges.")
11. How prior use of the marks will be deemed as use of the mark in cancellation proceedings?
KENFOX: Evidence of use of the mark to rebut non-use cancellation should be evidence of use in commerce. In practice, the defendant can submit to the VIETNAM IP OFFICE any product samples, product packagings, business correspondences affixed with the trademarks, or other sales or distribution contracts or import documentations concerning the sale, stocking or import of the products bearing the trademarks, as evidence of use. Normally, all these evidence of use are incorporated in an affidavit, which is notarized by a Notary Public.
(Legal ground: Article 124.5, the IP Law 2005: "Use of a mark means the performance of the following acts: (a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark; (c) Importing goods or services bearing the protected mark.")
12. Is there any vulnerable period for filing a non-use cancellation?
KENFOX: A trademark registration will be vulnerable to non-use cancellation 5 years after its registration date.
(Legal ground: Article 95.1d, the IP Law 2005: [A trademark registration shall be cancelled at request of a third party if] The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for cancellation, except where use is commenced or resumed at least three (3) months before the request for cancellation")
13. Does revocation of a trademark have retroactive effect to the date on which the cancellation action was filed?
KENFOX: There is no explicit regulation on this matter. However, in both principle and practice, the cancellation of trademarks will be effective as from the date of issuance of decisions on such cancellation.
14. Does revocation of a trademark have retroactive effect to the date on which the decision became valid?
15. Any advantages when submitted the evidence of use?
KENFOX: It is the defendant's obligation to submit evidence of use to rebut non-use cancellation in Vietnam. In case evidence of use is not submitted, claim by the appellant on the non-use of the trademark is deemed grounded, this may lead to cancellation of the trademarks.
16. Does examiner wait examination for pending application until the decision of cancellation action against the conflicting citation to be made?
KENFOX: In principle, the prosecution of trademark applications, and proceeding of non-use cancellation are two separate procedures. Hence, the examiner is not obliged to hold the examination of the pending applications until the decision on the non-use cancellation case is issued. However, in practice, the applicant may file with the VIETNAM IP OFFICE a request to hold the examination of the pending applications. Such request may be, in case-by-case basis, acceptable, and the applications may be kept pending a bit longer to await the decision on the non-use cancellation case to be issued.
17. How do you conduct investigations in order to verify non-use before filing a non-use cancellation action? How long does it take and what is the estimated fee for investigation?
KENFOX: Normally, we conduct the use investigation through the Market Prices Magazine (an investigation agent under Ministry of Finance of Vietnam) as to obtain an official confirmation on the matter. In case the use investigation unveils that the trademark has not been put into use for at least five (5) years to date, the non-use cancellation request can be lodged with the VIETNAM IP OFFICE. It may take 10 working days from filing till receiving the reply by the investigation agent.
In Vietnam, a trademark registration will be vulnerable to non-use cancellation if it has not been used for 05 consecutive years after its registration date. Article 95.1d, the IP Law 2005 provides that “A trademark registration shall be cancelled at request of a third party if the mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for cancellation, except where use is commenced or resumed at least three (3) months before the request for cancellation". To initiate a non-use cancellation action against a trademark registration, the party who files a non-use cancellation is required to show evidence of non-use of the mark. The non-use cancellation action can be proceeded under the following procedures:
When the arguments/evidences submitted by the two parties deem to be enough, the VIETNAM IP OFFICE will consider the case and give its conclusion on whether or not the trademark registration would be cancelled.
The time involved in a cancellation action depends on the complicatedness of the case. In normal case, it may take about 12-18 months to obtain the VIETNAM IP OFFICE's conclusion on the case.
