1. Bad faith

By the former IP Law, if an applicant lacked the necessary capacity to register the trademark or if the mark itself did not meet the requirements for protection at the time of approval, all trademark protection was nullified. But for the first time, acts of "bad faith" are recognized under the Amended IP Law as a separate legal basis for contesting and nullifying a trademark application or registration. In particular, if the applicant applied for the trademark application in bad faith, or with malicious purpose, the protective title is nullified totally. As of now, there has not been guidance from the Ministry of Science and Technology on how to interpret and apply this "bad faith". The more detail through this separate Decree will make handling opposition and dismissal of the trademark registration more straightforward.

In summary, this will be a new turning page for Vietnam, as it has been reported that the issue of "trademark squatting" (the act of registering known marks overseas to sell or undermine the rightful owner of said mark) is causing hesitant foreign entities to invest in Vietnam. This phenomenon is not new, per se, it happened rampantly in China and other Southeast Asian nations. As such, it is welcoming for the Government to finally address such an issue.

In addition to bad faith, a new clause is included stating that a trademark registration certificate may be rendered void entirely or in part if the mark is amended in a way that alters or broadens its original meaning as stated in the registration application

2. Third-party observations and oppositions against the grant of a protection title in Vietnam

In addition to retaining the previous mechanism - known as third-party opinion, the 2022 IP Law introduced third-party opposition. This allows a third party to object to an industrial property registration application. However, it is stated in the following Decree stated the Vietnam IP Office will only view this written opinion as "references", as it is not obligated to handle these opinion letters. The distinction between these two procedures is that, although the right to request a third party's written opinion may be used from the moment the application is published in the Official IP Gazette until the date the protection title is granted, the right to file an opposition is limited depend on the type of industrial property its oppose. For further detail, the right to file an opposition will only be available for use for three, four, five, and nine months, respectively, counting from the trademark, industrial design, layout design, and invention.

3. Well-known trademark

Well-known trademarks are considered to be a type of passive trademark, with their ability to enforce themselves without registration - which is one of the conditions to be considered as a mark in Vietnam. It was a great concept, however fell short in execution in Vietnam. In the past, a mark could only be considered well-known if it satisfied two requirements: first, it had to be widely known among "consumers," and second, its reputation had to be well-established over all of Vietnam. As stated in the 2022 IP Law, the phrase "Consumers" refers to the general public rather than the "relevant public sector." Therefore, a trademark has to be extensively known by the Vietnamese general public throughout the entirety of the nation to be regarded as well-known. The trademark owner was obliged to provide supporting documents based on the eight criteria listed in Article 75 to establish the reputation of their mark. Because of this requirement, most trademark owners are unable to prove that their mark satisfies Vietnam's requirements for being a well-known trademark, referencing the lack of a guide on how to prove the establishment of said reputation.

In contrast to the TRIPS Agreement, this regulation is widely thought to set an excessively stringent requirement, which results in a situation where a mark cannot be recognized as well-known in Vietnam due to its inability to prove its popularity among the general public throughout Vietnam, despite being widely used in Vietnamese commerce and has been recognized as well-known in many countries. Thus, this rule has long been criticized as a legal roadblock that keeps the owner of well-known trademarks from exercising the rights that they should have under the unique protection mechanism of a well-known trademark.

As a result, with the new amendment, the word "consumer" is now replaced with "relevant public", with a clearer definition as an effort to reduce ambiguity. Furthermore, its example includes Consumers who are important to goods/services that display the mark; Producers or providers of products or services with the mark; Manufacturers or suppliers of goods/services bearing the mark; etc. More importantly, the requirement of fulfilling all 8 criteria has now been abolished in favor of only satisfying several of them to recognize well-known trademarks. Therefore, a massive legal roadblock has now been removed, providing with owners a new way of protecting their intellectual property.

4. Sound trademarks

The most recent addition to Vietnam's IP Law is "sound trademark". In countries like the United States and the United Kingdom, the sound of a Nokia phone booting up or the Harlem Globetrotters' court-entrance song, "Sweet Georgia Brown," are examples of trademarks that are not so much considered as marks per se in the rest of the world. As a result, it is unheard of (pun intended) to have it here in a developing nation like Vietnam given the inherent ambiguity and complexity of the matter. However, it won't be long until official guidance on the registration of this issue is supplied, and Vietnam will soon possess its very first sound trademark. We are hopeful for the future of the newest addition to the roster. The nation's attempt to adhere to international treaties and accords, including the CPTPP and EVFTA, is demonstrated by the recognition of sound mark protection, which will also give businesses more powerful tools to safeguard their intellectual property

5. Prior trademark has expired but is still cited to refuse registration of a later-filed trademark

To amend and supplement Point h of Article 74.2 as follows:

Article 74. Distinctiveness of marks: 2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: “h) A sign identical with or confusingly similar to another person/organization’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than 03 years, except where the ground for such invalidation under the provisions of this Law was non-use of the mark in 05 consecutive years without reasonable reasons.

A trademark that has expired for less than five years can nevertheless be used as a justification to deny protection for a similar or identical trademark with a later filing date, as per the 2005 IP Law of Vietnam. This clause is intended to reduce the possibility of confusing customers. The legislators assumed that the public and relevant consumers would require a minimum of five years to forget about the mark's presence or appearance or to remove it from their memories. The 2005 IP Law's Article 74.2h is a closed clause. Consequently, for the later applicant's mark to replace the expired mentioned mark, he or she must wait five years from the earlier mark's expiration date. IP Vietnam lacked a clear legal foundation for granting protective rights to a later-filed trademark, even though the applicant had provided a report on market research showing that the expired mark in question had not been used in Vietnam for five years in a row.

However, with the amendment and supplement of Article 74.2h of the IP Law of 2022, the opportunity to register a trademark that is identical or similar to a trademark that has expired becomes clearer, more certain, and easier to apply than it was previously.

6. Marks that are identical or confusingly similar to the names of plant varieties

Article 74.2 of the IP Law of 2022 now includes point o) to assess trademark distinctiveness in connection to plant variety names. Therefore, the applied-for trademark will be deemed indistinctive and ineligible for protection if it is identical to, or confusingly similar to, the name of a plant variety that has already been registered for protection in Vietnam and if it is applied for goods consisting of a plant variety of the same species or a similar species, or products harvested from the plant variety. This rule aims to stop the owner of the plant variety patent or any other third party from registering as an exclusive mark using a name that is confusingly similar to or identical to the plant variety.

7. Overlapping intellectual property rights, the conflict between trademarks and copyrights

Trademark and copyright conflicts are common in many countries throughout the world and are starting to cause issues in Vietnam. Theft of Intellectual Property, or the copying of works protected by copyright, has increased to trademark registration. Trademark squatters no longer have to wait a long time to register a person's logo or artistic creation as their trademark. Many Intellectual Property Rights holder have been compelled to negotiate and agree to purchase back their trademark at outrageous prices with trademark squatters at the negotiation table. In the light of applicable law, Article 17 of Decree 103/2006/ND-CP on “Respecting the right to be earlier registered” stipulates that [Industrial property rights can be invalidated or banned from use if they conflict with the earlier registered intellectual property rights of other organizations and individuals].

Therefore, you can ask the NOIP to void the registered trademark if there are enough records and proof to show that the rights to the copyright-protected work were formed before the trademark application filing date. Nevertheless, in actuality, this clause is only found in a bylaw that lacks comprehensive guidance, and in the great majority of instances, it is not permissible to oppose or invalidate a trademark based on this clause because all grounds for cancellation or refusal of a trademark must be expressly stated in the IP Law.

8. Conclusion

The recent revisions to Vietnam's trade secrets framework, while undoubtedly a step forward in safeguarding valuable intellectual property, leave lingering questions about their practical implementation and potential unintended consequences. Striking a balance between protecting innovation and fostering a vibrant ecosystem of collaboration remains a delicate dance. As Vietnam continues to refine its IP regime, it must carefully consider the impact of its policies on the long-term trajectory of its knowledge-based economy. Ultimately, the success of this update will hinge on its ability to foster a climate of trust and transparency, where legitimate innovation is rewarded. At the same time, unfair exploitation of confidential information is effectively deterred.

Do note that these above points are only shortlisted from a long line of new updates being made by the lawmaker. As such, this list is in no way comprehensive and compiles every update in the newest IP Law. 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.