1. Introduction to the Vietnam Trademark Registration System

Vietnam came in at number 44 out of 132 nations and economies in the WIPO annual report, the Global Innovation Index 2021, which provides data, analysis, and trends related to innovation. Vietnam received even more good news when the WIPO released its annual World Intellectual Property Indicators (WIPI) report on November 9, 2021: In 2020, IP Vietnam, the Intellectual Property Office of Vietnam, came in at number eighteen out of the twenty IP Offices that received the greatest number of Trademark applications. IP Vietnam registered 95.520 trademarks (of which 22.217 registrations were for foreign applicants) out of 162.306 trademark applications that the nation received between 2019 and 2021 (of which 26.728 applications were filed by foreign applicants).

It is significant to note that to determine whether a particular sign satisfies the requirements for trademark protection, IP Vietnam will first conduct a formality examination (within one month of the filing date) and then a substantive examination (within nine months of the publication date). IP Vietnam will issue an Office Action (OA) if the requirements for trademark protection are not satisfied. The applicant or the appropriate legal representative will be notified of the OA through a notification.

IP Vietnam may notify the applicant that the trademark application has problems with the classification and wording of goods/services, or with any problem with the application form, during the first stage of the examination (the formality examination). These problems are typically easier to resolve; typically, a written response offering justifiable changes to the description of the products or services that the examiner rejected, or merely accepting the suggested modifications outlined in the OA, will do.

When responding to an OA, you have two months from the date of its signature (the official date listed on the document) to submit your response (for an OA concerning the formality examination, or three months for an OA regarding the substantive examination). It is typically possible to request a time extension before IP Vietnam if you are unable to file the response by the official deadline (special circumstances may apply if the delay is due to a force majeure event).

2. Under Vietnamese law, there are several types of trademark refusals

2.1. Trademark refusal issued on absolute grounds

The first category of Substantive OAs focuses on absolute grounds for refusal. These grounds delve into the inherent characteristics of the trademark itself, examining whether it possesses the distinctiveness necessary to differentiate the applicant's goods or services from others in the marketplace. Objections based on absolute grounds commonly encompass issues such as:

Descriptiveness: The trademark directly describes the qualities, features, or functions of the goods or services, rendering it non-distinctive and incapable of indicating origin.
Lack of distinctiveness: The trademark lacks any inherent distinctiveness or originality, failing to capture consumers' attention and differentiate the applicant's offerings.
Deception: The trademark misleads consumers regarding the nature, quality, or origin of the goods or services, potentially causing confusion or harm.
Violation of public order or morality: The trademark contains offensive, immoral, or discriminatory elements that contravene societal norms and public interest.

When confronted with an OA based on absolute grounds, the applicant faces the challenge of demonstrating the inherent distinctiveness of their trademark. This may involve providing evidence to refute the OA's claims, modifying the trademark itself to enhance its distinctiveness, or narrowing the scope of goods and services covered by the application.

2.2. Trademark refusal issued on relative grounds

The second category of Substantive OAs centers on relative grounds for refusal. These grounds assess the potential for confusion among consumers due to the similarity of the proposed trademark to existing registered trademarks or those designated for protection in Vietnam. When evaluating relative grounds, IP Vietnam considers factors such as:

Visual similarity: The degree of visual resemblance between the proposed trademark and existing marks, including the overall appearance, design elements, and word elements.
Phonetic similarity: The extent to which the proposed trademark and existing marks sound similar when spoken aloud, potentially leading to consumer confusion.
Conceptual similarity: The similarity in meaning or concept conveyed by the proposed trademark and existing marks, particularly when considering the relevant goods or services.

Facing an OA based on relative grounds requires the applicant to demonstrate that their proposed trademark is sufficiently distinguishable from existing marks to avoid causing consumer confusion. This may involve narrowing the scope of goods/services, modifying the trademark design or word elements, or providing evidence to differentiate the applicant's goods/services from those associated with prior marks.

3. Understanding the Refusal Notice

3.1. Analyze the Document

The first step in responding to a trademark refusal notice is to carefully analyze the document. It's crucial to understand:

The specific grounds for refusal: The notice will outline the legal reasons why your trademark application has been rejected. Common grounds include lack of distinctiveness, similarity to existing trademarks, and non-conformity with Vietnamese IP laws.
The relevant legal provisions: Each ground for refusal will be linked to specific articles of the Vietnamese Intellectual Property Law and other relevant regulations. Familiarize yourself with these provisions to understand the legal framework within which your response will be evaluated.
The severity of the objections: Assess whether the objections raised are minor technical issues or more significant concerns related to the inherent characteristics of your trademark. This will help determine the appropriate response strategy.

3.2. Preparing a Response:

Once you have understood the refusal notice, you can start preparing your response. This should be a well-structured and persuasive document that addresses each ground for refusal clearly and concisely. The key points to consider are:

Identifying the appropriate response strategy: Depending on the nature of the objections, different response strategies can be employed. These include arguing against the examiner's interpretation of the law, providing evidence of acquired distinctiveness, or submitting a disclaimer for specific elements of the trademark.
Addressing each ground for refusal systematically: Each objection should be addressed individually with specific arguments and evidence. Avoid general statements and ensure your response directly addresses the examiner's concerns.
Providing evidence and arguments to support your claims: Back up your arguments with relevant evidence, such as prior registration certificates, surveys demonstrating consumer recognition, or expert opinions.

3.3. Formal Requirements and Deadlines:

Remember that your response must comply with the official requirements set by the NOIP. These include:

Submitting the response within the legal timeframe: You generally have three months to respond to a refusal notice. Failing to meet this deadline will result in the automatic abandonment of your application.
Complying with the official format and language requirements: The response must be submitted in the prescribed format and in Vietnamese. Consider seeking assistance from a professional translator if you are not fluent in the language.

3.4. Engaging with the NOIP

Effective communication with the NOIP examiner can be instrumental in overcoming the refusal. You should:

Respond promptly to any requests for clarification or additional information.
Be polite and professional in all communications.
Attend any hearings or interviews scheduled by the IPVN.

3.5. Alternative Options:

If responding to the refusal notice seems challenging or unsuccessful, you can consider alternative options:

Requesting an extension of time: You can request a one-time extension of up to two months to prepare your response.
Dividing the application: If the objections pertain to only a subset of the goods/services listed in your application, you can divide the application and prosecute them separately.
Withdrawing the application and refiling with modifications: You can withdraw the application and file a new one with modifications addressing the concerns raised by the NOIP.

4. Seeking Professional Assistance:

While attempting to overcome a trademark refusal notice on your own may seem appealing, seeking professional guidance from a qualified Vietnamese IP lawyer offers several significant advantages. Firstly, navigating the complexities of Vietnamese trademark law requires specialized knowledge and expertise. Lawyers possess a comprehensive understanding of relevant regulations, legal precedents, and procedural intricacies, ensuring your response complies with all formal requirements and addresses the specific concerns raised by the NOIP examiner. Secondly, legal professionals can strategize an effective response tailored to your unique situation. They will meticulously analyze the grounds for refusal and identify the most appropriate argumentative approach, whether it involves challenging the examiner's interpretation, demonstrating acquired distinctiveness, or proposing modifications to your application.

Additionally, lawyers can draft a compelling and persuasive response document, effectively presenting your case and maximizing your chances of success. Their experience in legal writing and communication ensures clarity, precision, and adherence to the NOIP's specific format and language requirements. Moreover, engaging a lawyer facilitates seamless communication with the NOIP. They can act as your intermediary, handling all correspondence, attending hearings or interviews on your behalf, and effectively representing your interests throughout the process. This frees you from the administrative burden and allows you to focus on your core business activities. Finally, seeking professional assistance provides peace of mind and reassures you that your trademark application is in the hands of qualified experts. By entrusting your case to a lawyer, you can be confident that your valuable brand identity is being protected in the Vietnamese market, mitigating potential risks and maximizing the potential for success.

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.

5. Conclusion

Responding to a trademark refusal notice in Vietnam requires careful planning and strategic action. By understanding the grounds for refusal, preparing a persuasive response, and adhering to the legal requirements, you can significantly increase your chances of overcoming the objections and securing your trademark registration. Remember, seeking assistance from a qualified Vietnamese IP lawyer can provide invaluable guidance and ensure your response is effective and compliant with the law. Don't hesitate to seek professional help to navigate this complex process and ultimately protect your valuable brand identity in Vietnam.