According to the Vietnamese Intellectual Property Law (“Vietnamese IP Law”), if a trademark is in non-use status for five consecutive year or longer after its registration date, the trademark shall be susceptible to non-use cancellation.
Non-use cancellation can be filed by a party which is required to show evidence of non-use of mark. In doing so, the party can overcome citation or avoid infringement. This article analyses the procedure to assist trademark owners in understanding and gaining insights with the procedure.
Non-use cancellation trademark in Vietnam
Conducting an investigation on the non-use of the mark in Vietnam
Before filing the request for cancellation, the appellant should conduct an investigation to the collect sufficent evidents. That’s why we must request the Vietnam Trade and Industry Information Center (“competent authority”) to conduct the investigation to obtain their conclusion. The competent authority will carry out a search on local newspaper and/or e-commerce platforms and/or commercial prints to find out whether or not the mark has been used in Vietnam. The result of the investigation will be informed to the appellant in an official letter issued by the competent authority.
The time frame of the investigation is 20-30 days.
Filling a request for cancellation of the trademark registration with the National office of Intellectual Property of Vietnam (“NOIP”)
The trademark holder needs to submit use evidence within 02 months from the date of notification with no extension or late filling. If the evidence of use is not submitted by the holder, claim by the appellant on the non-use of the trademark is deemed grounded, this will lead to cancellation of the trademark.
The time involved in a cancellation action depends on the complexity of the case. Normally, it may take about 12-18 months to obtain the NOIP conclusion.
Evidence showing use of the trademark on goods, packages or containers and/or in trading goods such as invoices, storage fees, packaging lists, in advertising, exhibition or even sales on e-commerce platforms such as Lazada, Tiki, Shopee… are all acceptable. In order for an evidence to be deemed as sufficent, we have to be sure that the evidence includes the following five factors:
- Correct trademark: identical or basically identical with the trademark in the registration certificate;
- Goods and/or services: consistent with those on the certificate. If the goods and/or services are somehow different from those on the certificate, the evidence may be regarded as insufficent;
- Correct user(s), including the trademark registrant and holder(s);
- Correct dates in the prescribed duration, namely during the recent 05 years prior to a request for cancellation;
- Correct address.