Before the enactment of the Amended IP Law 2022, which took effect on 1 January 2023, the concept of bad faith in trademark applications was not defined in any regulations. This gap posed certain challenges for ‘actual’ trademark holders, especially those without relevant prior applied-for or registered trademarks in Vietnam, when dealing with trademark squatters. To address this issue, the Vietnamese Government has introduced new stipulations under the Amended IP Law 2022 and bylaws.

 

Key regulations on bad-faith filing under the Vietnamese IP laws

 

The term “bad-faith” was absent from legislation prior to the Amended IP Law 2022, except for a slight resemblance of “dishonesty by the applicant” in Article 96.3 of the IP Law on the statutory limitations for invalidation of trademarks[1]. Bad faith is a new legal basis included for the first time in Article 117(1)(b)[2] and Article 96 (1)(a)[3] of the Amended IP Law 2022. Accordingly, if there is a reasonable ground to believe that an applicant had bad faith/dishonest intentions, IP Vietnam can separately and directly invoke this ground to refuse the protection of an applied-for-mark. This would be done during the process of establishing rights or invalidation of a registered trademark. However, while the Amended IP Law 2022 introduces bad-faith filing regulations, it does not provide specific details or guidance on how trademark holders can utilize this legal basis for taking action.

 

The issuance of Circular No. 23/2023/TT-BKHCN, has provided detailed guidance on several articles of the Amended IP Law 2022 and instructions on implementing measures under Decree 65/2023/ND-CP concerning establishing and safeguarding industrial property rights (“Circular 23“). Pursuant to this, “bad-faith” regulations have been clarified, which creates a fierce stance for trademark owners to tackle bad-faith filing of trademark squatters.

 

Further, under Article 34 of Circular 23, an applicant would be considered as acting “in bad faith” if the relevant evidence simultaneously satisfies both conditions:

 

1. at the time of filing the contested mark, the applicant knows or has a basis to know that the trademark he/she applied for is identical or similar to the extent that it is difficult to distinguish from other person’s trademark that is widely used in Vietnam or recognized as well-known in other countries, for identical or similar goods or services; and
2. the said registration of the contested mark is intended to take advantage of the reputation, goodwill of the other person’s trademark for profit, or primarily for the purpose of reselling, licensing or transferring registration rights to the holder of the trademarks, or aims to prevent the conflicting trademark owner from entering the market, or conducting other acts contrary to fair trade.

 

According to the aforementioned regulations, the initial burden of proof rests on the actual trademark holders (i.e., claimants) when they lodge an opposition/observation and/or invalidation request against the contested mark. However, there is no suggested list of evidence for a bad faith filing case. In other words, the assessment of bad-faith filing will depend on different factors on a case-by-case basis.

 

Current practices and tips for trademark owners against bad-faith filing in Vietnam

 

In a recent workshop on countermeasures against bad faith trademark applications with TM5 held by IP Vietnam and JPO/JETRO on 24 January 2024, IP Vietnam’s examiners shared that disputes relating to trademark registrations with bad faith are increasing. Many oppositions and invalidation requests, along with tons of supporting documents are lodged to IP Vietnam by the right trademark holders. However, due to the complexity of these cases and a significant backlog of work at the IP Vietnam, to date, no decisions on refusal/invalidating trademark registrations based on bad-faith grounds have been issued.

 

Nevertheless, trademark holders should take the following steps to discourage the practice of bad-faith trademark filings:

 

• Filing for trademark application through the national route or Madrid system as soon as possible:

Vietnam follows the first-to-file rule, which grants exclusive trademark rights to the first party that applies for registration of the mark. Thus, obtaining a trademark registration in Vietnam will help the right trademark holders prevent bad-faith trademark applications from maturing into registrations. Further, it is generally cheaper to file a new trademark application than to pursue an opposition or invalidation against a confusingly similar or identical mark applied for in bad faith.

 

• Closely watching new trademark applications on the IP Vietnam’s online database and IP Gazette:

Pursuant to Article 1(a) of the Amended IP Law 2022[4], a trademark application even when it has not been accepted by the IP Vietnam, shall be disclosed as soon as it is received on IP Vietnam’s online database available at http://wipopublish.ipvietnam.gov.vn/ (“WIPO Publish”). Trademark holders are recommended to closely monitor their marks on both WIPO Publish and IP Gazette, where all trademark applications that have passed the formality examination are published monthly. By doing so, trademark holders can ensure timely and proper filing of oppositions and third-party observations against the applied-for mark before it matures into registration. Additionally, it should be noted under the Amended IP Law 2022, there is now a fixed deadline for filing an opposition against a pending trademark, which is 5 months from the date of publication of the trademark.

 

[1] Article 96.3 IP Law: “The statute of limitations for exercising the right to request for invalidation of a protection title shall be the whole term of protection thereof. For trademarks, such statute of limitations shall be five (5) years from the grant date, except where the protection title was granted as a result of dishonesty of the applicant”.

[2] Article 117.1.(b), Amended IP Law 2022: “The grant of a protection title as the result of an application for registration of a patent, industrial design, trademark or geographical indication shall be rejected in the following cases: … b) There are reasonable grounds to affirm that the applicant does not have the right to register industrial property, or the applicant registers the mark with bad-faith…”

[3] Article 96.1.(a), Amended IP Law 2022: “1. A protection title shall be entirely invalidated in the following cases: a) The application is filed in bad-faith;…”

[4] Article 1(a) of the Amended IP Law 2022: “1a. Any application for mark registration that has not been accepted by the industrial property right authority shall be disclosed as soon as it is received.”;