1. Understanding Non-Use Claims:

A registered trademark in Vietnam is your brand's engine, propelling it toward market recognition and exclusivity. But just like any engine, it needs regular use to stay in top gear. Enter the non-use claim: a potential roadblock thrown by third parties who can challenge your trademark validity if you haven't actively used it in a while. Buckle up, as we explore this concept with the latest updates (including the shorter deadline!), equipping you with the knowledge to defend your brand:

The Non-Use Clause: Three Years and Counting:

Article 95.1(d) of Vietnam's Intellectual Property Law, updated in 2022, has slashed the non-use threshold from five years to three consecutive years. This means any individual or company can now initiate a cancellation request against your trademark much sooner if you haven't used it for any of the designated goods or services within this timeframe. Forget a leisurely cruise; your brand needs to be out there driving!

Justifiable Reasons: Exceptions to the Rule:

But don't worry, your engine doesn't have to roar constantly. The law acknowledges situations where taking a break is warranted. If you have valid reasons for not using your trademark within the three-year period, you can present them to the National Office of Intellectual Property of Vietnam (NOIP) during the cancellation proceedings. Here are some examples:

Temporary market turbulence: An economic downturn or global crisis that temporarily halted production or sales.
Product overhaul: Delaying launch for significant product innovations or brand revitalization initiatives.
Strategic marketing shift: Focusing on digital campaigns or entering new markets that require time for brand awareness build-up.

Remember, convincing the NOIP requires a compelling argument and strong evidence backing your justifiable non-use claim.

Beyond the Basics: Nuances of Non-Use Claims:

Navigating non-use claims goes beyond just avoiding the three-year mark. Here are some crucial points to consider:

Partial Cancellation: If you haven't used your trademark for some but not all of the registered goods or services, the cancellation might only apply to the unused categories, leaving your protection intact for the actively used ones.
Genuine Use Matters: Sporadic or insignificant use won't suffice. The NOIP looks for evidence of genuine and effective use that contributes to your brand's presence in the market.
Gather Proof, Stay Prepared: Invoices, marketing materials, and social media engagement data can be ammunition against non-use claims. Be ready to showcase your brand's activity.

Understanding non-use claims is not just legal jargon; it's about keeping your brand's engine running smoothly in Vietnam. Actively use your trademark, strategize for justifiable non-use situations, and maintain evidence of genuine use. By doing so, you'll protect your brand's market exclusivity and prevent roadblocks from derailing your journey in the dynamic Vietnamese marketplace.

2. Defending with Modified Trademarks:

Genuine Use of Trademarks

There are no explicit rules about "genuine use" or "token use" in Vietnam's IP Law or sub-law documents. In theory, the mark should be legitimately used in a sufficiently wide-ranging and durable way. The use of the mark must be done in commerce and to draw consumers to the products. This means, for example, that the trademark must be used publicly and outside the corporation and not just internally. A mark's goal is to identify the products or services that come from a specific company, and it can only be fulfilled when the mark is attached to products or services that are offered to customers. A trademark may be used legitimately in a variety of ways, such as by applying the mark on products, packaging, company and service vehicles, transaction documents used in business transactions, marketing materials, and customer communications on websites and social media.

Use the mark as it is registered

When utilizing the trademark in commerce, the owner of the trademark often modifies the design and color, stylizes his registered brand, and adds new features to the registered trademark in addition to removing or omitting existing ones. Because of this, the registered form and the mark utilized in commerce are not the same. Per Article 5. C.2 of the Paris Convention, to which Vietnam is a party, a trademark owner in Vietnam may, in theory, use a mark other than the registered trademark as long as the use "does not change the distinctiveness of the mark" and "not lead to the suspension of registration and cannot limit the protection granted to the mark"

Proof of trademark use

Even though Article 124.5 of IP Law permits the use of trademarks, trademark owners frequently encounter significant challenges when attempting to gather and present proof of the specifics of the circumstances, method, time, territory, and items for which the brand has been used

In general, clear and objective evidence of a mark's appropriate and effective use on the relevant market is required to support the legitimate use of the mark. The highest priority must be given to records such as purchase orders, invoices, delivery bills, sales receipts, labels, packaging, and other tangible proof of the items or services engaged in the transaction. Furthermore, it is imperative to gather proof in the form of price lists, market research on brand awareness, market research verifying the market share of goods bearing the mark, acknowledgments of awards and titles given to branded goods, and press, including specialized press, which appear in the context of newly opened stores and marketing campaigns undertaken.

When storing trademark-use evidence, it should be noted that the evidence must meet the following criteria:

(i) it must contain the mark;

(ii) it must be clear evidence of which goods/services are used/affixed with the mark;

(iii) it must specify the date of use of the mark; and

(iv) it must indicate where the mark was used.

3. Case Study: The Noodle Trademark:

A recap of the story

A request for cancellation for non-use was made about a registered trademark in Vietnam that was used as a product label for instant noodles. Trademark registration may be canceled at the request of a third party under the current Article 95 of the Vietnam Intellectual Property Law if the mark has not been used for five (5) consecutive years by its owner or licensee without a valid reason, except in situations in which use of the mark has started at least three (3) months before the request for cancellation for non-use. The trademark owner had utilized a slightly altered version of the mark above rather than the exact packaging design.

The Defense

The mark's owner provided evidence of use in defense of the mark, demonstrating that it is currently being used with a slight modification of the mark as originally registered, with the following minor differences: A distinct word element was present in the registered trademark. The new word element was an acronym for the owner of the trademark's new trading name; additionally, the trademark that was being used included a variety of figurative components, such as some graphics that were depicted somewhat differently from the registered mark.

The Outcome

The National Office of Intellectual Property of Vietnam (NOIP) upheld the trademark owner's arguments in its decision, stating that the mark's function of identifying the origin of goods had been maintained and that the slight modification of a few minor descriptive elements did not alter the general impression and distinctive character of the mark. However, NOIP chose to partially revoke the registration concerning the word element—a portion of the mark—because the original word element did not appear in the trademark in use.

4. Vietnam's Approach and the Paris Convention

There is currently no provision in Vietnam's trademark legislation that clarifies whether using a registered mark in a modified form is adequate evidence of usage. It has long been accepted that in order for a trademark to be used, it must be used in the same manner as when it was first registered. Vietnam, however, is a party to the Paris Convention for the Protection of Industrial Property, which states clearly in Article 5C2 that the registration of a trademark shall not be void if it is used by the owner in a manner that differs in elements "which do not alter the distinctive character of the mark in the form in which it was registered".

In order to maintain trademark rights in Vietnam, here are 6 practical tips for trademark owners:

Clearly identify the type of trademark: Whether it is a common trademark, three-dimensional mark, collective mark, certification mark), the types of goods/services to be used for trademark
Using the mark in line with the information provided to IP Vietnam: Including but not limited to the mark's graphic form, a list of products or services, and the owner's name and address
Adding trademarks to goods, as well as in business records and consumer correspondence (such as bills or social media posts). This aids in brand promotion and facilitates the process of obtaining proof of trademark use if needed.
Regularly evaluating whether the mark's application has strayed from its intended purpose. If so, registering updated trademark versions ought to be taken into consideration.
Managing underutilized trademarks well by transferring ownership of trademarks on favorable terms or arranging for third parties to acquire the right to use such marks.
In the long run, using a professional intellectual property agency is less expensive than getting into a legal dispute or losing a registered trademark to a rival.

5. Conclusion:

Protecting your trademarks in Vietnam requires proactive vigilance. While non-use claims can be a threat, understanding the law and strategically utilizing modifications can help you maintain your valuable market exclusivity. Remember, consult with IP professionals for tailored advice to navigate the legal landscape and secure your brand's footprint in Vietnam.

If you need further explanation on this subject, please don't hesitate to contact us through email at lienhe@luatminhkhue.vn or phone at: +84986 386 648. Lawyer To Thi Phuong Dzung