APAA e-Newsletter (Issue No. 38, December 2023)
Opposition and Third-party Observation in Vietnam
Tran Dieu Linh, Vision & Associates (Vietnam)
After a long-awaited period, Circular No. 23/2023/TT-BKHCN (“Circular 23”) detailing some articles of the Amended IP Law (took effect on 1 January 2023) and Decree No. 65/2023/ND-CP dated 23 August 2023 (“Decree 65”), finally, was ratified on 30 November 2023. One of the most looked-forward-to regulations of Circular 23 relates to opposition procedure under Article 112a of the Amended IP Law.
In this article, we shall shed light on this regulation and the differences between opposition and third-party observation procedures in Vietnam.
1. Comparison of two (2) mechanisms – filing an opposition or a third-party observation:
| Opposition | Third-party observation | |
| Legal ground | Article 112a of the Amended IP Law | Article 112 of the Amended IP Law |
| Due date for filing | 5 months from the date of publication of trademarks | From the date of publication of trademarks until the Decision on granting protection is issued |
| Fee required | VND550.000 (approx. US$24.5) per mark per class | No official fee is charged |
| Formality required | Written correspondence in Vietnamese. Supporting documents can be filed in other languages, but need translating into Vietnamese (if requested by the IP Vietnam). | Written correspondence in Vietnamese |
| Proceedings | Independent procedure during the substantive examination period (see more details in part 2 below) | In the substantive examination period (for the examiner’s reference only) |
2. Details of opposition proceedings at the IP Vietnam
According to Article 11 of Circular 23, the opposition procedure has been promulgated, with these particulars:
- Upon receiving the opposition, IP Office of Vietnam (“IP Vietnam”) shall examine the opposition grounds. In case the applied-for mark is identical to the cited mark given by the opponent (“Cited Mark”), or it is obvious to conclude that the applied-for mark is confusingly similar to the Cited Mark, IP Vietnam will settle the opposition within the substantive examination proceeding of the applied-for mark. If the opposition is based on the right to file trademark applications, IP Vietnam shall review the case and inform the opponent to initiate a lawsuit at the Court.
- In other cases, the IP Vietnam shall inform the applicant of the opposition and set 2 months for the applicant to reply with his counter-arguments (if any). Upon receiving the applicant’s response, the IP Vietnam may convey the same (if necessary) to the opponent and set another 2 months for the opponent’s reply. IP Vietnam may arrange a face-to-face interview between parties (if necessary) to clarify certain points of the case.
- The opponent will receive a notice on settlement of the opposition along with the results of substantive examination of the applied-for mark.
With the current regulations, we contend that a Notice of Opposition is more powerful and efficient than a third-party observation in preventing the applicant from successfully obtaining a registration for the client’s conflicting mark. It is noted that there is now a fixed deadline for filing an opposition against a pending trademark. Thus, trademark holders are recommended to enhance their watching services, duly consult with IP attorneys, and submit opposition(s) against the conflicting trademark application within the due date.