February 2022 – Intellectual Property Insights – Change in trademark registration in Vietnam

From 1 January 2022, the Regional Comprehensive Economic Partnership (RCEP) will come into force.

Becoming a party of Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) and EU-Vietnam Free Trade Agreement (EVFTA), Vietnam has launched a Draft for amending and supplementing the Intellectual Property Law.

For implementing the commitment when Vietnam become members of these two mentioned International Agreements, Legislature has supplemented this subject into IP Law as a subject sought to be protected. The Vietnamese government proposed new amended IP Law to the Vietnam Intellectual Property Law, in which:

(1) Sound mark for being protected

(2) International songs become sign not protected as marks.

(3) Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than THREE years, except where the ground for such invalidation is non-use of the mark instead of FIVE years under an old regulation.

(4) For third party opinions on the grant of Certificate, under an old IP Law, there is no time limit for filing the Opposition but under the Draft for new IP Law, the third party can only file the opposition within 05 months from the date the trademark application is published.

For trademark protection in Vietnam, the first-to-file rule is applied. For avoiding any potential risk of refusal and/or infringement, foreign enterprises are highly recommended to file the trademark application for registration as soon as possible before having actual business or trading activities in Vietnam.

In addition, the duration for examination of a trademark application is significantly long, it is advisable that application for all the used/potentially used trademark will be filed as soon as possible before being used.

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