1. Grounds for Cancellation

Only 2 scenarios for submission of a cancellation action are accepted by NOIP as provided for in Section 96.1 of the IP Law, namely:

The applicant for registration has neither had nor been assigned the right to register the trademark; or
The trademark subject to cancellation action failed to satisfy the protection conditions at the time the protection title was granted

As far as Section 96.1(a) mentioned above is concerned, the phrase “the right to register the trademark” implies the same meaning as the matter of entitlement for applying for registration of a trademark, whereby the same is stipulated in Section 87, particularly:

Organizations or individuals shall have the right to register marks to be used for goods they produce or services they provide.
Organizations or individuals lawfully trading in products produced by others shall have the right to register marks for such products, provided that the producers neither use such marks for their products nor object to such registration.
Collective organizations lawfully established shall have the right to register collective marks to be used by their members under the regulations on use of collective marks. For signs indicating the geographical origins of goods or services, organizations having the right to register them shall be collective organizations of organizations or individuals engaged in production or trading in relevant localities.
Organizations with the function of controlling and certifying quality, properties, origin, or other relevant criteria of goods or services shall have the right to register certification marks, provided that they are not engaged in the production or trading of such goods or services.
Two or more organizations or individuals shall have the right to jointly register a mark to become its co-owners on the following conditions:

(i) Such mark is used in the names of all co-owners or used for goods or services which are produced or dealt in with the participation of all co-owners;
(ii) The use of such a mark does not confuse consumers as to the origin of goods or services.

In compliance with Article 6septies of the Paris Convention regarding the prevention of bad faith filings, Section 87 of the IP Law also further provides that a mark protected in a country is a contracting party to a treaty which prohibits the representative or agent of a mark owner to register such mark and to which the Socialist Republic of Vietnam is also a contracting party, then such representative or agent shall not be permitted to register such mark unless it is so agreed by the mark owner, except where a justifiable reason is available.

For Section 96.1(b), the validity of a registered mark may be attacked by proving that the trademark subject to cancellation action should have been felt into any of absolute refusal grounds or any of relative refusal grounds at the time the protection title was granted.

Regarding absolute refusal grounds, 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.

Regarding Relative Refusal Ground, 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.

2. Types of Evidence

The evidence you need to cancel a trademark in Vietnam depends heavily on the specific ground you're invoking. For non-use, you'll need concrete proof that the mark hasn't been employed in commerce for five years. This can include market research reports demonstrating the mark's absence, advertising records showing no active campaigns, competitor analyses highlighting the mark's lack of market presence, and even official statements from distributors or retailers confirming they haven't carried products under that trademark.

If you're challenging bad faith registration, internal documents from the applicant, emails or communications revealing their malicious intent, evidence of prior attempts to block competitors using similar marks, or proof of the applicant's knowledge of your existing brand can strengthen your case. For lack of distinctiveness or descriptiveness, market surveys demonstrating consumer confusion between your brand and the challenged mark, dictionary definitions highlighting the mark's common usage, and evidence of prior use by others can be crucial.

Similarity to existing trademarks requires consumer surveys gauging confusion levels, expert opinions on the marks' distinctiveness and likelihood of confusion, and proof of your trademark's prior registration or well-known status. For offensive or immoral marks, evidence of the mark's offensive nature through cultural expert opinions, public perception surveys, and documented examples of harm caused by the mark can be powerful tools. Remember, documentary evidence like official certificates and invoices can support various grounds, while expert opinions, witness testimonies, and advertising materials can add valuable layers to your case. Ultimately, gathering a robust and multifaceted set of evidence tailored to your specific ground for cancellation is crucial for success in Vietnam's trademark system.

In great detail, you can see the following list:

2.1. Proof to prove a trademark cancellation's absolute grounds in Vietnam

- To demonstrate absolute ground, the following kinds of evidence may be presented: official documents, third-party materials, certified professional documents, and precedents from global trademark registries. All paperwork must be submitted in physical copy on paper.

- In Vietnam, evidence must be presented to the trademark cancellation tribunal or administrative authority.

- The following deadline must be met for the submission of evidence: The evidence must be presented with the cancellation request or with it by the date set by the cancellation tribunal or administrative body.

2.2. The proof needed to demonstrate relative grounds for a trademark cancellation in Vietnam

- The following categories of proof are acceptable for proving relative grounds:

evidence of earlier use, such as an invoice, advertisement materials, or a list of distributors;
evidence of famous characters, such as several related consumers who are aware of the mark through the purchase or use of the goods or services bearing the mark or through advertising;
the territorial scope of circulation of the goods/services bearing the mark;
turnover of the sale or supply of the goods or services bearing the mark or the volume of the goods sold or the services supplied;
the period of continuous use of the mark;
widespread goodwill of the goods/services bearing the mark;
countries granting protection to the mark;
the value of the assignment, the licensing price, or the value of investment capital contribution in respect of the mark;
distribution agreement and/or any other evidence for proving bad faith registration;
information of prior rights in Vietnam (trademark registration, protected trade name. protected geographical indication, protected industrial design);
successful precedents in worldwide trademark registries;
social survey. All documents are required to be in hard copy (paper).

- Evidence must be submitted to the administrative body or cancellation tribunal of trademark in Vietnam.
- The evidence must accompany the cancellation request of the trademark in Vietnam or be submitted by the deadline decided by the administrative body or cancellation tribunal.

2.3. The evidence to establish non-use grounds for cancellation of trademark in Vietnam

- The following kinds of proof can be used to prove non-use grounds: preliminary non-use proof provided by straightforward market analysis or a competent authority's search result.

- Evidence must be shown to Vietnam's trademark cancellation tribunal or administrative agency.

- The evidence must be presented with the cancellation request or with it by the deadline set by the Vietnamese trademark administrative body or cancellation tribunal.

2.4. The evidence to establish other grounds for cancellation of trademark in Vietnam

To establish grounds other than absolute, relative, or non-use grounds, the following evidence may be presented: Evidence demonstrated that

(a) the owner of the trademark has not paid the required fees for maintenance or renewal;

(b) the owner of the mark has declared forfeiture of the rights conferred by the Protection Title;

(d) the owner of a collective mark is responsible for supervising or fails to do so ineffectively;

(e) the owner of a certificate of registered certification mark violates the regulation on the use of certification marks or fails to supervise or ineffectively supervises the enforcement of such regulation;

3. Burden of Proof

The burden of proof in trademark cancellation cases in Vietnam dances a delicate tango between the party seeking cancellation and the trademark owner. While the initiator generally bears the heavier weight, the responsibility can shift depending on the specific ground and the evidence presented.

For non-use claims, the initiator must shoulder the burden of proving the mark hasn't been used in commerce for five consecutive years. This involves presenting convincing evidence like market research, advertising records, and distributor statements. The trademark owner, however, can counteract by providing evidence of even minimal use, like a single invoice or advertisement.

Bad faith challenges demand a more nuanced approach. The initiator must demonstrate the applicant's malicious intent, often through internal documents, communications, or evidence of prior attempts to block competitors. Here, the burden shifts slightly, as the owner needs to counter with evidence refuting the malicious intent claims, potentially showcasing good faith business practices.

Lack of distinctiveness or descriptiveness puts the onus on the initiator to prove the mark lacks sufficient distinctiveness or is purely descriptive. Market research demonstrating confusion, dictionary definitions, and evidence of prior use by others bolster this claim. The owner's responsibility is to showcase the mark's distinctiveness through consumer surveys, expert opinions, or evidence of acquired distinctiveness through consistent use.

Similarity to existing trademarks requires the initiator to prove a likelihood of confusion between the marks. Consumer surveys, expert opinions on distinctiveness and confusion, and proof of prior registration or well-known status are key weapons in this battle. The owner, in turn, needs to demonstrate the marks' distinctiveness, often through market research or expert opinions highlighting the differences.

Offensive or immoral mark claims place the burden on the initiator to prove the mark is indeed offensive and harmful. Cultural expert opinions, public perception surveys, and documented examples of harm caused by the mark can be powerful tools. The owner, however, can attempt to justify the mark's cultural context or argue against its potential for harm.

Remember, the burden of proof is not a static concept in Vietnam's trademark cancellation proceedings. It's a dynamic interplay between the initiator's evidence and the owner's counter-arguments, with each side aiming to convince the authorities of their position. By strategically marshaling evidence and anticipating the opponent's moves, parties can navigate the intricacies of the burden of proof and ultimately achieve their desired outcome in a trademark cancellation case.

4. Conclusion

Canceling a trademark in Vietnam requires careful consideration of the legal grounds and meticulous evidence gathering. By understanding the types of proof needed and presenting a compelling case, aggrieved parties can effectively clear the trademark register of illegitimate or unused marks, promoting a fair and competitive marketplace.

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.