By Ngan Pham
Much like human life, trademarks also have different fates or destinies from birth to maturity. Some may proceed smoothly to being granted within the statutory time without any challenges from competent authorities, and some may face obstacles due to objections or refusals on various grounds. Even after grant, some may last forever while some may lapse, i.e., expire after some time.
You may wonder: What happens with a lapsed or “dead” trademark in Vietnam? Would it be forgotten? Would someone else have the right to register the expired trademark? Let’s find out the answers.
Legal provision and interpretation
Article 74.2h of the Amended Vietnam IP Law in 2022 (effective 1 January 2023) stipulates that a mark is considered indistinctive if it contains “signs that are identical with or confusingly similar to marks of other organizations and individuals whose identical or similar goods and services are eligible for protection and the mark registration of which has been terminated for no more than three years, except the mark registration is terminated according to Point d Clause 1 Article 95 following the procedures specified in Point b Clause 3 Article 117 of this Law.”
This means that if a later-filed trademark containing signs that are identical with or similar to a trademark which was terminated within three years from the expiration date, the latter will be used as citation against the former. Thus, the mark under examination is not qualified for distinctiveness and will be refused by the IP Office. The sole exception is when a trademark is terminated because of non-use by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years.
Case study
In the image shown above, even though the trademark “VINGON” expired on 8 July 2020, it is not completely dead or forgotten because of the fact that it may still be an obstacle for registrations of trademarks containing identical or confusingly similar signs to it within three years after its expiration date. In other words, it will only lapse after 8 July 2023 and subsequently, a third party has the right to register and use a trademark that is identical with or similar to the expired trademark for identical or similar goods/services.
Why “three years”?
The timeline of “three years” is one of the significant changes of the Amended Vietnam IP Law as the current legal provision stipulates a longer time of five years.
Vietnamese legislators believe that three years is reasonable time for consumers to forget the origin of goods and services bearing the expired trademark. Further, it is also sufficient for goods/services bearing an expired mark to be withdrawn from the market and thus would not mislead consumers about the origin of goods and services.
In some Asian territories such as China and Hong Kong, this period of time is shortened to only one year due to the rapid development of the market.
“Fight” against expired trademarks
In the practice of examining trademark applications, two relative grounds that are frequently cited by the IP Office of Vietnam to refuse later-applied trademarks are Article 74.2e (signs that are identical or confusingly similar to marks of other organizations/individuals whose identical or similar goods and services are eligible for protection on the basis of the earlier application date) and Article 74.2h as discussed above.
Since Vietnam is in the midst of a transition between the prevailing IP Laws and the newly Amended Law, to illustrate an overall picture of trademark protection relating to an expired trademark, the author would assume the following hypothetical situations:
[Situation 1] Client’s trademark (identical/similar to cited mark) is refused in 2022 based on an ex-officio examination due to the expiration of the cited mark “VINGON” in July 2020.
If the date on the Notification of Refusal is in 2022, then the current Vietnam IP Law is applied. The cited mark “VINGON” will hinder the registration of the pending mark for five years, until July 2025. In this case, a lot of effort and costs from the applicant or representative thereof will be required to keep the rejected application pending as long as possible until July 2025, to block all later-filed applications containing the same or similar signs with client’s mark. A new application would then be re-filed for the client’s mark at the end of the five-year period and the lapsed trademark would then not be taken into account as a cited mark.
[Situation 2] Client’s trademark (identical/similar to cited mark) is refused in 2023 based on an ex-officio examination due to the expiration of the cited mark “VINGON” in July 2020.
In this case, applicants may take advantage of the newly Amended Law effective on 1 January 2023, wherein the time period for the mark “VINGON” to be removed as a citation will be three years, until July 2023. Thus, if the client’s mark is examined before July 2023, it will still be challenged due to cited mark “VINGON”, but if it is examined after July 2023, the mark “VINGON” will no longer bar registration.
Trademarks after “death” may be troublesome for later applications, especially during this transition time. Reach out to us at kass@kass.asia for a comprehensive search before filing to find out whether your mark could be challenged by an expired trademark or consult our professionals for advice on your options to overcome refusals relating thereto.
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