1. The basis for trademark refusal:

In Vietnam, the primary grounds for trademark refusal can be broadly categorized into two main groups: absolute grounds and relative grounds. Each category encompasses various specific reasons why an application might be rejected.

1.1. Absolute Grounds:

Lack of distinctiveness: This is the most common basis for refusal. A trademark lacks distinctiveness if it does not sufficiently identify the origin of the goods or services and cannot distinguish them from those of other traders. This includes:

Descriptive marks: Trademarks that directly describe the characteristics, qualities, or functions of the goods/services are deemed unprotectable. For example, "Waterproof Raincoat" would likely be refused for raincoats.
Generic marks: Marks that have become commonly used to designate a certain type of good or service in the relevant market will be refused. For example, "Jeans" would not be registrable for denim pants.
Shapes, letters, numerals: Simple geometric shapes, letters, or numerals lack inherent distinctiveness and are generally refused unless they have acquired distinctiveness through use.
Flags, emblems, etc.: Marks identical or confusingly similar to national flags, emblems, or names of Vietnamese or international organizations are prohibited.
Contrary to public order or morality: Trademarks that promote violence, discrimination, or other harmful content are not allowed.
Deception or confusion: Marks that are likely to deceive or confuse consumers about the origin, nature, or qualities of the goods/services are unacceptable.

Direct or indirect reproduction of well-known trademarks: Even without prior registration in Vietnam, well-known trademarks from other countries enjoy protection. Using identical or similar marks that could mislead consumers into believing the applicant's goods/services originate from a well-known brand is prohibited.

1.2. Relative Grounds:

Likelihood of confusion with previously registered trademarks: This is another frequent reason for refusal. If the applied-for mark is identical or confusingly similar to an existing trademark for the same or similar goods/services, it risks infringing upon the earlier mark's rights and misleading consumers. Factors considered include:
- The similarity of the marks: This includes visual, phonetic, and conceptual similarities. A holistic evaluation is made based on these elements.
- Similarity of the goods/services: The closer the goods/services, the higher the likelihood of confusion.
- The distinctiveness of the earlier mark: A well-known or highly distinctive mark enjoys broader protection.
Prior rights based on unregistered trademarks: In some cases, unregistered trademarks that have been used extensively in Vietnam can create prior rights that bar the registration of later, similar marks.
Bad faith filing: If the applicant is believed to have filed the trademark application with malicious intent, such as to exploit the goodwill of the owner of a prior similar mark, it will be refused.

Additional considerations:

Public opposition: Even if IP Vietnam finds the application acceptable, third parties can file opposition proceedings based on similar grounds.
International trademarks: Vietnam is a member of the Madrid Protocol, meaning international trademarks filed under the Madrid System can be extended to Vietnam. These marks also enjoy protection and can become grounds for refusal of conflicting local applications.

It's important to note that these are just general guidelines, and the specific factors and interpretations can vary depending on the unique circumstances of each case. Seeking legal advice from an IP professional familiar with Vietnamese trademark law is highly recommended for navigating the registration process and addressing potential refusal grounds.

An LOC is a written statement, signed by the owner of a prior registered trademark (cited mark) that potentially conflicts with the applicant's mark, expressing their explicit consent to the registration and use of the applicant's mark. This aims to address one of the main grounds for refusal, the likelihood of confusion, by demonstrating that the trademark owners themselves do not believe consumers will be misled by similar marks.

Benefits of LOC:

When successful, a LOC can expedite the registration process by overcoming the likelihood of confusion and objection.
It can promote cooperation and coexistence between trademark owners, potentially reducing future legal disputes.
In some cases, LOCs can even pave the way for co-existence agreements, which delve deeper into conditions for using similar marks without infringing upon each other.

3. Effectiveness of LOCs in Vietnam

A letter of consent is accepted in case the confusion is not likely to have happened. In a broader sense, if the two trademarks at issue are very similar (nearly identical) so that consumers always believe they are offered from the same source (same trademark owner), the letter of consent shall not be accepted. However, such a letter of consent is highly likely to be accepted in case trademarks are considered similar (not very similar or nearly identical) and the goods/services bearing the mark are similar.

IP Vietnam, the government agency responsible for trademark registration, considers LOCs on a case-by-case basis. Their acceptance hinges on various factors, including:

The similarity of the marks: If the marks are highly similar or identical, even an LOC might not be enough to convince IP Vietnam.
Distinctiveness of the marks: If the applicant's mark is inherently distinctive and differentiated from the cited mark, an LOC will have more weight.
Nature of the goods/services: If the goods/services are completely different, even with similar marks, confusion is less likely and a LOC can be more persuasive.

4. Legal Considerations and Requirements

Statutorily, Vietnam does not adopt a consent letter regime to exclude the likelihood of confusion. Still, in practice, the examiners could accept such letters on a case-by-case basis. Basically, in the presence of the consent letter, the examiners tend to afford registration to the applied mark if the mark and the cited marks are neither identical nor closely similar.

When utilizing a Letter of Consent (LOC) to overcome trademark application refusal in Vietnam, legal considerations and requirements play a crucial role in its effectiveness and enforceability. Here's a breakdown of the key aspects to keep in mind:

Essential Elements:

Clear identification of parties: Both the applicant and the owner of the prior registered mark (cited mark) must be clearly identified with full names, addresses, and contact information.
Explicit consent: The LOC must explicitly state the consent of the cited mark owner to the registration and use of the applicant's mark. This includes specifying the exact mark being consented to and the goods/services covered.
Scope of consent: The LOC should clarify the limitations or conditions of the consent, if any. For example, it might specify geographic territories or specific product lines where the marks can coexist.
Date of signature: Both parties must sign and date the LOC to ensure its validity and traceability.

Legal Considerations:

Formality: While no specific format is mandated, a well-drafted LOC using formal language and legal terminology enhances its credibility and enforceability. Consulting with a lawyer is recommended for optimal drafting.
Good faith: Both parties must act in good faith when entering into and interpreting the LOC. Any attempt to mislead or abuse the consent can negate its effect and potentially lead to legal repercussions.
Enforceability: LOCs are not legally binding in the strict sense, but they serve as strong evidence of consent in case of future disputes. Legal enforceability might depend on factors like clarity of wording, adherence to legal principles, and potential ambiguity.

Additional Requirements:

Language: Vietnamese is the preferred language for LOCs, although English translations might be accepted in certain cases. Translations should be accurate and certified.
Notarization: While not essential in all cases, notarizing the LOC adds an extra layer of authenticity and can strengthen its evidentiary value in potential legal proceedings.
Submission: The LOC should be submitted along with the trademark application or during the examination process at IP Vietnam.

Remember:

A LOC is one tool among others to overcome refusal. Its effectiveness depends on the specific circumstances of the case and the discretion of IP Vietnam.
Seeking legal advice before drafting and submitting an LOC is crucial to ensure its accuracy, effectiveness, and potential enforceability.
Even with an LOC, future legal disputes over trademark infringement are not entirely prevented. Careful brand management and compliance with legal requirements remain essential.

5. Limitations and Potential Drawbacks

Limitations:

Not a guarantee of registration: Even with an LOC, IP Vietnam retains the final decision on whether to grant registration. If the marks are highly similar or the goods/services closely overlap, an LOC might not be enough to convince them.
No future protection: LOCs do not offer absolute protection against future infringement claims. If circumstances change or disputes arise, the cited mark owner can potentially withdraw their consent or argue against the continued use of the applicant's mark.
Unclear enforceability: The legal enforceability of LOCs in Vietnam can be unclear. While they serve as strong evidence of consent, courts might interpret them differently, and disputes over meaning or intent can be messy.
Potential for abuse: LOCs can be misused in scenarios like collusive agreements between parties to block other competitors from registering similar marks. This unethical practice can harm fair competition and market dynamics.

Drawbacks:

Complexity and cost: Drafting an effective LOC and dealing with legal formalities can be complex and require the assistance of an IP lawyer, adding to the expense of the registration process.
Uncertainty and risks: Relying on an LOC introduces an element of uncertainty and potential legal risk. Even with strong legal backing, future disputes can be time-consuming and costly.
Public opposition: Even with IP Vietnam's approval and an LOC, third parties can still file opposition proceedings based on similar grounds. This further extends the application timeline and adds complications.
Negative perceptions: In some cases, using a LOC might raise suspicions about the distinctiveness or genuine intention behind the applicant's trademark, potentially impacting brand image and consumer trust.

Alternatives to consider:

Revising the applied-for mark: Modifying the mark to make it more distinct from the cited mark can address the likelihood of confusion without relying on an LOC.
Narrowing the scope of goods/services: Limiting the application to a smaller range of goods/services can reduce the overlap with the cited mark and increase the chances of approval.
Challenging the cited mark: In some cases, it might be possible to argue for the invalidity or non-use of the cited mark if it meets certain criteria.

6. Conclusion:

While LOCs can be a valuable tool in specific situations, their limitations and potential drawbacks should not be overlooked. Carefully weigh the pros and cons in consultation with an IP professional before deciding whether an LOC is the right strategy for your trademark application in Vietnam. Consider alternative approaches and be prepared to address potential challenges associated with using an LOC. Remember, protecting your brand requires a comprehensive understanding of the legal landscape and a strategic approach to navigating the registration process.

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