1. Defining "Widely Used"

Article 74.2(g) of the Intellectual Property Law of Vietnam permits the use of prior, prudent use of a mark in commerce as justification for denial, filing of a Notice of Opposition against a mark that has been applied for, or cancellation of a trademark registration. Before the filling date or priority date, as applicable, marks that are confusingly similar to or identical goods or services are disqualified under this provision. The admissibility of evidence regarding a mark's widespread usage and reputation outside of Vietnam is still unclear though. There is currently disagreement over whether the length of time a mark is used will affect IP VIETNAM's evaluation and consideration of data.

In reality, IP Vietnam has dealt with several cases where proving the widespread use of an unregistered mark is necessary to prevail in court. IP VIETNAM retains the final say over whether to accept evidence of widespread use of a mark outside of Vietnam, even though it might be somewhat significant in an opposition or cancellation proceeding against a trademark filed or registered in bad faith. Therefore, it is still unclear whether evidence of a mark's widespread usage outside of Vietnam would be admissible.

2. How IP VIETNAM evaluates evidence of prior use in trademark opposition and cancellation cases

When assessing evidence of prior use in trademark opposition and cancellation cases, IP VIETNAM takes into account some variables, including the length, intensity, and geographic reach of the use. The kind and extent of the products or services on which the mark has been used, as well as the mark's degree of recognition in the pertinent market, may also be taken into account. Furthermore, IP Vietnam has the right to assess the quality of the evidence submitted, including its dependability, relevance, and sufficiency in demonstrating the prior use of the contested mark.

In addition, IP Vietnam takes into account the mark's uniqueness, how closely the contested mark resembles previously used marks, and whether using the contested mark is likely to confuse consumers. To prove infringement of unregistered rights, the trademark owner must show that the contested mark is likely to lead to consumer confusion, deception, or mistake.

3. Collect and present evidence

3.1. Proving malicious intent/bad faith of the trademark registrant

The legal term "bad faith" was added to Articles 96 and 117 of Vietnam's amended IP Law of 2022 to address two primary concerns. The "first-to-file" principle, which awards protection titles to the earliest filed trademark applications, including those made in bad faith, needs to be closed legally. Second, to stop trademark squatting, which is becoming more and more common in developing nations like Vietnam. The "bad faith" clause gives lawful trademark owners another legal reason to contest the legitimacy of a trademark that was submitted or registered by a third party with bad intentions. This allows them to reclaim their rights to their trademarks through opposition or invalidation procedures.

However, specific elements, criteria, and requirements to ascertain whether a trademark has been filed or registered in bad faith have not yet been provided by Vietnamese legal documents such as decrees and guiding circulars. This ambiguity could confuse legitimate trademark owners who are trying to demonstrate the applicant's bad faith.

The legitimate trademark owner frequently depends on evidence of widespread use to show that the adverse party could not have been unaware of the mark in situations where there is no direct evidence to support the claim that a third party knew the genuine trademark owner's mark and applied to register it in bad faith. The examiner in charge of the case will, however, determine whether or not this argument is accepted. Because they have different opinions, some examiners might accept this argument while others might reject it. Thus, the examiner's subjective assessment of the case will determine whether or not this argument is accepted.

3.2. Proof that it was used in commerce

Vietnam bases its intellectual property rights on the first-to-file principle. However, registration will be denied if an applied-for trademark is judged to be confusingly similar to an earlier mark—even if it isn't registered—that has been widely used and acknowledged in commerce. However, Vietnam's IP Law makes no mention of how widely a mark must be used to block the application of a rival party for a trademark.

The extent to which a mark must be used in commerce to be successful in a trademark cancellation or opposition is therefore a matter of opinion that depends on some variables, including the particulars of the case, relevant laws and regulations, and the examiner's level of awareness and expertise. In general, the mark must be well-known and in substantial and continuous commercial use in the pertinent market. Before the challenged trademark application's filing date, there must be a substantial and convincing body of evidence demonstrating that the mark is widely used and recognized by consumers for comparable or identical goods or services.

When assessing a mark's widespread use, various factors are taken into account, including its amount of sales, market share, duration and frequency of use, and degree of recognition among relevant customers or business partners. Ultimately, though, the examiner or decision-maker in charge of the case will have to assess the evidence and decide whether or not it meets the requirements for a trademark cancellation or opposition.

In practice, to provide wide use of the mark, the trademark owner is advised to provide evidence based on the following criteria:

Invoices or sales records show the volume and frequency of sales under the mark.
Advertising and promotional materials used in connection with the mark.
Customer feedback, surveys, or testimonials demonstrating the mark's recognition and reputation among relevant consumers.
Distribution and marketing strategies and plans that highlight the use and promotion of the mark
Licenses or franchise agreements that show the use of the mark by other businesses.
Media coverage or industry publications that feature the mark or discuss its reputation and recognition.
Any relevant awards or recognitions received by the mark or the business using it.

3.3. Method of collecting evidence

Keep detailed records: Maintaining detailed records of the trademark's use, including the date of first use, the geographical extent of use, and the scope of the products or services associated with the trademark, can be very helpful in establishing the extent and duration of use of the trademark.
Collect sales and marketing materials: Collecting sales and marketing materials, such as brochures, advertisements, and promotional materials, can help demonstrate the extent and duration of the trademark use.
Gather witness testimony: Witness testimony from individuals who know the trademark use, such as employees, customers, and industry experts, can be a powerful tool in establishing prior use.
Conduct a trademark watch: Regularly monitoring the use of the trademark in the marketplace and taking appropriate enforcement action against infringers can establish the trademark's prior use and the owner's willingness to protect their rights.
Use of third-party evidence: In addition to their records, trademark owners can gather third-party evidence of the trademark's prior use, such as news articles, industry reports, and customer feedback.
Conduct a survey: Conducting a consumer survey to show the level of recognition and association of the trademark with the goods or services in question can be strong evidence of prior use.
Work with a trademark attorney: Working with a trademark attorney who is familiar with the laws and procedures of the relevant jurisdiction can be invaluable in developing a strategy for collecting and presenting strong evidence of prior use

4. Additional consideration

Proving a mark's widespread use beyond Vietnam's borders is not just about amassing evidence, it's about navigating a nuanced landscape of legal frameworks, cultural contexts, and linguistic barriers. Beyond the core evidence of sales figures, registrations, and consumer recognition surveys, several additional considerations can strengthen your case and ensure its effectiveness:

1. Delving deeper into market penetration: Move beyond mere sales data and analyze market share, brand loyalty, and consumer behavior in target markets. This could involve analyzing customer reviews, brand sentiment analysis, and competitor comparison studies to paint a more comprehensive picture of the mark's impact.

2. Adapting to legal specifics: Different jurisdictions have varying standards for "widespread use." Research the specific legal framework in each relevant country, focusing on factors like the required duration of use, market share thresholds, and the importance of online presence. Tailor your evidence accordingly, highlighting elements that hold more weight within each legal system.

3. Addressing cultural nuances: Understand how cultural differences might influence the perception of your mark. For instance, a mark with strong connotations in Vietnam might not resonate as readily in another country. Consider conducting culturally sensitive surveys or focus groups to assess brand recognition and consumer sentiment.

4. Overcoming language barriers: Ensure all evidence, including surveys, marketing materials, and website analytics, are accurately translated and culturally adapted for presentation in different jurisdictions. Consider using certified translators or collaborating with local legal experts to avoid potential misinterpretations.

5. Leveraging digital footprints: The digital age offers a wealth of evidence for international mark use. Analyze website traffic data, social media engagement, and online brand mentions across relevant regions. Utilize tools like Google Trends to track search trends and demonstrate the mark's online visibility in target markets.

6. Anticipating counter-arguments: Thoroughly analyze your opponent's potential claims and prepare evidence to refute them. This could involve demonstrating continuous use in specific markets, addressing any temporary lapses in marketing activities, and highlighting the uniqueness of your brand compared to similar marks.

7. Building a strong narrative: Weave your evidence and arguments into a compelling narrative that showcases the mark's consistent and substantial presence outside of Vietnam. Emphasize the mark's impact on consumers, its integration into relevant markets, and its overall contribution to the international marketplace.

By meticulously considering these additional factors, you can strengthen your case, overcome potential challenges, and effectively demonstrate the true reach and recognition of your mark beyond Vietnamese borders. Remember, a well-rounded and culturally sensitive approach will hold more weight in the eyes of legal authorities and ultimately strengthen your claim to widespread international use.

5. Conclusion

Proving the widespread use of a mark outside of Vietnam requires a comprehensive approach that gathers compelling evidence, builds a strong legal argument, and adapts to the specific legal and cultural context. By carefully considering the relevant factors and strategically presenting your case, you can effectively demonstrate the international reach of your mark and protect your intellectual property rights.

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.