Table Of Contents

1. Non-Use Requirement

Trademark registration is subject to "partial" or "full" revocation/cancellation if it is not used in connection with the designated goods and services for 05 (five) consecutive years from the date of registration, unless there is a valid reason, according to Article 95.1(d) of the 2005 Intellectual Property Law, as amended in 2009, 2019, and 2022 (IP Law). Any natural or legal person may file a cancellation action with the Intellectual Property Office of Vietnam (NOIP) on the grounds of non-use. 

When defending against a request for trademark cancellation, the owner of the trademark must show that he has used it by the law. For instance, he must present proof that the mark has been used for commercial purposes by Article 124.5 of IP Law. A decision from the NOIP establishes the revocation or cancellation of a trademark registration, which can be documented in the National Trademark Register. In general, trademark registration in Vietnam may be partially canceled if it is not used for all of the designated goods or services; in other words, the registration validity for those unused goods or services shall be partially canceled.
The inability to enforce intellectual property rights and prevent infringements—such as stopping other businesses or individuals from using the same or similar signs in their products—may be hampered by the registered trademarks' non-use status. Furthermore, opposition to a competitor's later-filed trademark application may be ineffective or impossible if the earlier registered trademark of the true owner has not been used. If the owner of a registered trademark fails to start using it, negligence related to that failure could lead to the mark's loss of market exclusivity.
 

2. Initiating Cancellation Proceedings

 

2.1. Who Is Eligible to Bring a Cancellation Case?

Given that the IP Law's Sections 95.4 and 96.3 both stipulate that individuals and organizations may ask the state management agency overseeing industrial property rights to revoke the validity of protection titles, it follows that any third party may ask NOIP to nullify or cancel a trademark registration or a protection title without having to provide evidence of their ownership of the mark in question.
 

2.2. Statutory Deadline for Action Cancellation/Invalidation

The statute of limitations for requesting the cancellation or revocation of a trademark registration is five (5) years from the date of grant, except in cases where the applicant's dishonesty led to the registration being granted.
It is important to note that since the 2005 IP Law went into effect on July 1, 2006, the grounds for revocation of trademark registration under this law will not apply if the trademark registration in question was granted before July 1, 2006, and is the subject of a cancellation action. 

2.3. The evidence required to demonstrate non-use

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 sustainable 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 company and not just internally. A mark's purpose 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 sold to customers. 
Generally, the burden of proof falls on the party claiming non-use. They must provide evidence that the mark has not been genuinely used, while the trademark owner may need to demonstrate that the mark is indeed in use. While the evidence required to demonstrate non-use is on a strict case-by-case basis, you can start from the evidence used to prove that the trademark is in use in Vietnam.

As such, 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.

Therefore, to prove the non-use of a trademark, one must provide evidence with the following.

(I) show that the mark has not been used

(ii) there are no goods/services used with the mark

(iii) there are no clear date on the use of the mark; and

(iv) There is no clear evidence on where the mark was used.

 
The non-use of a registered trademark in Vietnam, while seemingly straightforward, presents a legal landscape riddled with implications and challenges. On one hand, it safeguards public interest by preventing "trademark squatting," where dormant brands clog the system, hindering competition and innovation. Cancellation on these grounds can revitalize the trademark register and ensure exclusivity rewards genuine commercial activity. However, this power can be wielded as a weapon.
Ambitious competitors or strategic third parties may exploit non-use provisions to eliminate rivals or grab valuable trademarks, creating a chilling effect on brand development. Unclear definitions of "use" and "justifiable reasons" for non-use can exacerbate this issue, leading to litigation battles and inconsistent rulings. Furthermore, proving non-use requires meticulous evidence gathering, often involving market surveys, sales data, and advertising materials, placing a significant burden on the petitioner. Additionally, the five-year non-use period creates a tightrope walk for trademark owners.
Temporary dips in activity caused by economic downturns or strategic shifts can inadvertently trigger cancellation proceedings, potentially jeopardizing years of brand building. Striking a balance between safeguarding the public interest and protecting legitimate brand owners remains a crucial challenge. Ultimately, navigating the legal implications and challenges of non-use in Vietnam requires a nuanced understanding of the law, careful brand management, and, at times, navigating the unpredictable currents of litigation.
 

4. International Context

Vietnam's non-use cancellation provisions stand as a unique thread, woven with similarities and contrasts to other major jurisdictions.  On one hand, the five-year non-use period aligns with the framework established by the Paris Convention and adopted by many countries, including the EU and the US. This fosters a degree of harmonization, simplifying trademark enforcement across borders and facilitating international trade. However, Vietnam's provisions also diverge, exhibiting stricter requirements compared to the EU's "genuine use" standard or the US's "bona fide commercial use" threshold, potentially placing Vietnamese brands at a disadvantage in global markets.

Further complicating the picture are the nuances of international trade agreements. While Vietnam's commitments under the Trans-Pacific Partnership and the Comprehensive and Progressive Agreement for Trans-Pacific Partnership promote convergence towards broader "use" definitions, these agreements only bind a subset of countries. This creates a patchwork of legal frameworks, potentially leading to uncertainty and uneven playing fields for brands operating globally. Moreover, the growing influence of online commerce adds another layer of complexity. Should online use, such as website advertising or social media engagement, be considered sufficient to satisfy non-use requirements? The international community is still grappling with this question, and Vietnam's approach will likely be shaped by the evolving global consensus.

Ultimately, the international context of non-use cancellation in Vietnam presents both opportunities and challenges. While harmonization efforts offer a path toward greater predictability and fairness, the intricate interplay of national laws, trade agreements, and technological advancements necessitates a dynamic and adaptable approach to ensure a robust and equitable trademark ecosystem in the global marketplace.

 

5. Recommendations

To fortify the non-use cancellation framework in Vietnam and protect both public interest and legitimate brand owners, several key recommendations emerge.

Firstly, clarifying the definition of "use" is paramount. Establishing a more comprehensive framework that encompasses not just commercial use, but also promotional activities like advertising and online engagement, would provide greater clarity and predictability for both trademark holders and potential petitioners. Secondly, introducing a "grace period" beyond the five-year mark before initiating cancellation proceedings could offer breathing room for brands experiencing temporary dips in activity due to economic factors or strategic shifts. This would prevent premature cancellations and allow brands to demonstrate their continued commitment to the Vietnamese market.

Thirdly, strengthening the burden of proof for petitioners could deter frivolous lawsuits and ensure cancellations are based on genuine non-use rather than strategic maneuvering. This could involve requiring more detailed evidence of non-use, such as market surveys and sales data spanning the entire five-year period. Fourthly, promoting awareness and education among businesses about the importance of actively using their trademarks would encourage responsible brand management and reduce the vulnerability of trademarks to cancellation.

Finally, advocating for international harmonization of non-use provisions would create a level playing field for brands operating in the global market. This could involve actively participating in international discussions and agreements aimed at convergence towards broader and more nuanced definitions of "use." By implementing these recommendations, Vietnam can ensure that its non-use cancellation framework serves its intended purpose of protecting the public interest and promoting healthy competition while safeguarding the legitimate rights of brand owners in this dynamic and evolving market.

 

6. Conclusion

In conclusion, Vietnam's non-use cancellation provisions offer a potent tool for preventing trademark squatting and promoting a vibrant marketplace. Yet, navigating its complexities demands a nuanced understanding of legal implications, international context, and potential challenges. While the five-year non-use period aligns with global norms, stricter definitions of "use" and the potential for strategic abuse require careful consideration. Moving forward, Vietnam can strengthen its framework by clarifying "use," implementing a grace period and advocating for harmonization. Only through a balanced approach, ensuring both public interest and brand protection, can Vietnam truly unlock the full potential of its non-use cancellation framework in the dynamic world of trademarks. By embracing these recommendations, Vietnam can foster a thriving marketplace where innovation flourishes, competition thrives, and brands flourish under the watchful eye of a fair and effective non-use regime.

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.