The process for the deregistration of a trademark due to non-use aims to ensure that the registered trademark is owned only by those who intend to use it and have the ability to do so in commercial transactions. Specifically, according to Point d, Clause 1, Article 95 of the Law on Intellectual Property of Vietnam, the trademark owner must use the trademark in commerce for 5 years from the date of registration. This regulation is designed to ensure that a trademark is protected only when it genuinely serves a role in the commercial market, preventing misappropriation or misuse of the trademark without a concrete usage plan. If the trademark owner fails to comply with the usage requirement, any third party has the right to request the National Office of Intellectual Property of Vietnam to terminate the registration of such a trademark. This process necessitates the trademark owner to provide evidence proving the use of the trademark in a commercial transaction. If the evidence is insufficient, it may result in the cancellation of the trademark registration, making the trademark public. This helps prevent misappropriation and ensures fair and effective protection of intellectual property rights in the market.
1. What Does It Mean To "Use of trademarks"
Clause 5, Article 124 of the 2005 Law on Intellectual Property amended in 2009, 2019, and 2022 stipulates that trademark use includes 3 groups of acts as follows: Affixing protected trademarks to goods, packages of goods, means of business, means of services, transaction papers in business activities; Selling, offering for sale, advertising for sale, displaying for sale, storing for sale, transporting goods bearing protected marks; Import of goods and services bearing protected trademarks.
Clause 5, Article 124 of the Vietnam Intellectual Property Law provides general regulations on the use of trademarks in many cases. However, the ambiguity in the definition of "trademark use" has created difficulties for trademark owners, related parties, and even examiners at the Vietnam National Office of Intellectual Property when deciding. determine whether the trademark is used in a particular form or a particular manner and whether the legal conditions for maintaining or terminating trademark rights are met.
Lack of clear guidance on the "use of trademarks" in Vietnamese intellectual property law can lead to inconsistent or inappropriate decisions when making decisions about terminating or preserving rights to trademarks in situations of a similar nature. In addition, a failure to set specific rules regarding "trademark use" can invalidate or cripple an organization's ability to invalidate a trademark based on Do not use according to the provisions of the Intellectual Property Law. This creates risks for trademark owners as they face compliance issues and maintain the right to use their trademarks.
It is common for a mark not to be used in practice, but trademark owners often create fictitious evidence of use. This includes advertising in newspapers, setting up websites, selling small quantities of products, and in branded product boxes. Although these actions are not prohibited by law, trademark owners have the right to take reasonable measures to protect their rights. Because there are no specific regulations on "genuine use" and "token use", many Vietnamese legal cases have no basis for invalidating a trademark, even though it is known that the trademark is not used. Valid application of value in real business. This creates a unique status for the trademark, maintains it on the national register, and prevents new competitors. In conflicts, frequent invalidation processes and negotiations can result in large costs to maintain ownership of the trademark. In short, these strategies often maintain the rights of trademarks that are not used, and at the same time create erroneous formulas in the process of handling conflict issues in Vietnamese Law.
2. The trademark is requested to be invalidated
Trademarks are required to be invalidated if a lone user employs a negative symbol. According to Clause 1, Article 96 of the 2005 Intellectual Property Law, amended and supplemented in 2005, 2019, and 2022, a trademark only loses its entire value if the person registering the trademark uses it in bad faith. Organizations and individuals have the right to request the state management agency for industrial property rights to invalidate trademark protection certificates, but certain conditions may necessitate additional fees. The right to request the invalidation of a protective use document can be exercised throughout the term unless the protection title is abolished in whole or in part, or the trademark protection title does not meet specific requirements:
- Not a Visible Sign: For invisible signs in the form of letters, numbers, words, drawings, images, or combinations thereof, or combinations of these elements that cannot be perceived by the eye and do not attempt to define sharp colors, they will be considered as not meeting the conditions for protection.
- Cannot Differentiate Between Goods and Services: If the sign is incapable of distinguishing the owner's goods or services from those of other competitors, it fails to fulfill the basic function of a trademark, and the Trademark Registration Certificate may be deemed invalid.
- Not Protected According to Regulations: If the sign is not protected as a trademark according to the provisions of the law, such as violating social ethics, public order, or harming national defense and security as outlined in Article 8 of the Intellectual Property Law, or if it fails to meet other provisions of the law. This regulation is intended to ensure that protected trademarks are distinctive signs with real value in identifying and characterizing the owner's goods and services.
3. Use of the trademark on the website
Attaching a protected trademark to "means of business" and "means of providing services" is considered a form of trademark use according to Article 124.5 of the Intellectual Property Law. Business means here include tools that carry or contain industrial property objects or protected trade indications, used in business activities, such as websites, brochures, business cards, vehicles, utensils, and decorations in business establishments (according to Article 21 of Circular 11/2015/TT-BKHCN). Therefore, the use of a trademark on the website to introduce, advertise, and sell goods bearing the registered trademark is considered evidence proving the use of the trademark. This can be applied to refuse a request to invalidate a registered trademark.
However, for websites with international domain names and using languages other than Vietnamese, determining whether it is valid evidence of trademark use in Vietnam is a controversial issue. The law does not provide specific guidance on requirements for trademark use on websites, creating many challenges when verifying the validity of trademark use.
In the intellectual property community, there is debate about whether trademark use on international websites and non-Vietnamese evidence should be recognized as valid. Although English is popular in Vietnam and many international advertising businesses, accepting evidence from these websites can have major consequences, especially when faced with trademark invalidation based on do not use. Without transparency and reliability in verifying trademark use, the risk of counterfeiting increases, making trademark resources increasingly scarce.
4. Some recommendations
In contemporary times, Vietnam has emerged as a noteworthy player in the realm of intellectual property, marking significant strides in both policy formulation and international engagement. The approval of the National Intellectual Property Strategy until 2030 reflects a proactive stance, positioning Vietnam strategically on the global intellectual property landscape. Concurrently, the nation has actively participated in pivotal international trade agreements, including but not limited to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the European Union-Vietnam Free Trade Agreement (EVFTA), the Regional Comprehensive Economic Partnership (RCEP), and the UK-Vietnam Free Trade Agreement (UKVFTA). These commitments not only serve to elevate Vietnam's standing in the international community but also pose novel challenges, particularly in the arena of intellectual property management and protection.
To align with its international commitments and enhance the efficacy of the domestic legal framework, Vietnam has undertaken the third amendment to the Intellectual Property Law in 2022. This legislative revision transcends mere adjustments; it introduces novel regulations geared towards prioritizing and fortifying the rights of intellectual property owners. As the significance of intangible assets continues to grow, the establishment of unambiguous regulations delineating authentic and spurious use, along with robust safeguards for trademarks and intellectual property, becomes paramount.
A notable challenge lies in configuring a legal system that is simultaneously adaptive and resilient, capable of navigating the dynamic contours of the contemporary business environment. The delicate balance between flexibility and robustness is imperative to effectively address the rapid changes inherent in modern commerce. Drawing from the experiences of other nations becomes an insightful approach, with countries like Taiwan offering creative solutions to issues related to trademark utilization on digital platforms.
The online landscape, marked by the surging popularity of e-commerce and rapid technological advancements, introduces nuanced complexities in the management of intellectual property. Addressing concerns associated with trademark deployment on online platforms, including websites and e-commerce channels, necessitates not only regulatory flexibility but also innovative strategies. By amalgamating efficacious methodologies derived from the norms and regulations of countries with established expertise in this domain, Vietnam can construct a pliable legal apparatus adept at comprehensively and effectively responding to the intricate challenges posed by the contemporary business milieu.
In summary, the fortification of the legal and regulatory infrastructure emerges as an imperative for Vietnam to navigate the complexities of the modern business landscape successfully. The assimilation of successful paradigms and solutions from experienced jurisdictions is pivotal to steering Vietnam toward sustainable development in the realm of intellectual property. The continuous refinement of legal frameworks and the proactive adoption of best practices will contribute to the nation's enduring success in fostering innovation, protecting intellectual property rights, and facilitating a conducive environment for businesses to thrive.
Above is legal information to answer the question: Use of trademarks on websites: Admissible proof in Vietnam? Hopefully, the above useful information will help readers who have questions solve related problems. In addition, if you have questions about other legal issues, please contact the online customer support department via hotline 19006161 or you can send information to the email address lienhe@luatminhkhue.vn. We sincerely thank you for taking your valuable time to read this article.
