The Amended IP Law 2022: Notable Amendments and Supplementations Regarding Marks

Regarding trademarks, the below points are most important.

(Please note, below, if the Law is mentioned without details, it’s interpreted as the amended IP Law 2022 and the italics are interpreted as amendments compared to the current IP Law)

1. Protection of sound signs as trademark

The Law amends and supplements Clause 1, Article 72. General requirements for marks eligible for protection  as follows:

Trademarks are protected if the following conditions are met:

"1. A visible sign in the form of letters, words, drawings, images, holograms or a combination thereof, represented by one or more colors or audio sign capable of being graphicallyl depicted”.

However, the following sound signs are not protected as trademarks:

"1. Signs identical with or confusingly similar to the national flags, national emblems; national Anthem of the Socialist Republic of Vietnam and of other countries and international anthems;” (Article 73.1)

The law also clarifies the regulations on trademark sample for sound signs, according to which

"2. The sample of mark shall be described in order to clarify the constituent elements of the mark and the overall meaning of the mark (if any)...where the mark is sound, the sample of the mark shall be MP3 reproduction of the sound mark and graphical depiction of the sound mark in the form of musical notations.”( Article 105. Requirements for trademark registration applications)

2. Three-dimensional trademark

The Law supplements  the absolute grounds for three-dimensional signs not eligible for protection  as trademarks, by adding paragraphs 6 and 7 to Article 73. Signs not protected as trademarks, as follows:

“6. The sign is the inherent shape of the goods or is required by the technical characteristics of the goods;

3. Distinctiveness of marks

There are some changes and supplements in Article 74. Distinctiveness of marks, as follows:

“2. A mark shall not be considered as distinctive if falling under one of the following cases:

b) signs, symbols, drawings, common names of goods or services in any language, the usual shape of the goods or part of the goods, the usual shape of the packaging; the packaging or container has been in regular use and generally accepted prior to the filing date of application;

c) Signs indicating time, place, production method, type, quantity, quality, nature, composition, usage, value or other descriptive characteristics of goods or services or a sign that substantially adds value to the goods, unless such sign has acquired distinctiveness through use prior to the filing date of application;

đ) A sign indicating the geographical origin of goods or services, unless such sign has been widely used and recognized as a mark prior to the filing date of application;

n) Signs identical with or not significantly different from another person's industrial design that has been or is being protected on the basis of an industrial design registration application with a filing date or priority date earlier than the filing date, priority date of the trademark application;

i) The sign is identical or confusingly similar to a mark that is considered a well-known mark of another person before the date of filing a registration application for goods or services that are identical or similar to goods or services bearing the well-known mark or registration for dissimilar goods or services, if the use of such sign may affect the distinctiveness of the well-known mark or the registration of the mark is intended to take advantage of the reputation of the well-known mark;

h) The sign is identical or confusingly similar to a mark of another organization or individual that has been protected for the same or similar goods or services, but the registration of such mark has been cancelled not more than three years (instead of the current five), unless the registration of such mark is cancelled according to the provisions of Point d, Clause 1, Article 95 according to the procedures specified at Point b, Clause 3, Article 117 of this Law;

4. Well-known marks

To amend Clause 20 of Article 4. Interpretation of terms, in the direction of clarifying the scope of the subjects to be consulted when evaluating well-known trademarks, as follows:

“20. A well-known mark is a mark widely known by the relevant public in the territory of Vietnam.”;

At the same time, amend Article 75. Criteria for evaluating well-known marks, by instead of the sentence of "The following criteria shall be taken into account while considering well-known status of a mark”, now it is "The consideration and evaluation of whether a mark is well-known is performed on the basis of some or all of the following criteria;”

5. Associated marks

Associated marks are no longer protected under the Law.

6. Making trademark applications public

Amend the title of Article 110. Publication of industrial property registration applications and add Clause 1.a on the responsibility to make the trademark registration application public right after it is received. As follows:

Article 110. Making trademark registration applications public, publication of industrial property registration applications

“1a. Trademark registration applications that have not yet been duly accepted by the state management agency in charge of industrial property rights shall be made public immediately upon receipt.”

7. Oppositions to trademark applications

The Law supplement the provisions in Article 112a.1.c that a third party who opposes a mark registration application must submit supporting evidence, pay fees and charges, and specify the time limit for the opposition.

Article 112a. Opposition to the industrial property registration application

1. Before the date of issuance of the decision to grant the Protection Title, within the following time limits, any third person has the right to oppose the issuance of the Protection Title

....

c) Five months from the date the trademark registration application is published;

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2. Oppositions specified in Clause 1 of this Article must be made in writing, enclosed with documents or cited as sources of information for proof, and must pay fees and charges.

3. The state management agency in charge of industrial property rights shall handle oppositions specified in Clause 2 of this Article according to the order and procedures prescribed by the Minister of Science and Technology”.

8. Suspension of trademark application examination

To amend and supplement Clauses 3b and 3c to Article 117. Refusal to grant protection titles, as follows:

b) Suspend the application examination process in case the applicant submits a request to suspend the examination of the application and requests the cancellation or invalidation of the trademark registration certificate according to the specified exclusion cases at Points e and h, Clause 2, Article 74 of this Law. Based on the results of settlement of a request for cancellation  or invalidation of a trademark registration certificate, the state management agency in charge of industrial property rights shall continue the application examination process;

c) Suspend the application examination process in case of receiving a copy of the notice of acceptance of the case by the competent court about the lawsuit filed by a third party related to the right to register an industrial property object or trademark. registered with malicious intent. Based on the court's settlement results, the state management agency in charge of industrial property rights shall continue the application examination process;

9. Title of protection

(i) To amend and supplement Clause 1b to Article 117. Refusal to grant protection titles, as follows:

b) There are grounds to assert that the applicant does not have the right to register industrial property objects or register trademarks with malicious intent;

(ii) Supplementing grounds for invalidation of protection titles in Article 96 in the spirit of EVFTA

h) The use of a protected mark for goods or services by the owner of the mark or a person authorized by the owner of the mark causes consumers to misunderstand the nature, quality or origin of the goods or services of such goods or services;

i) The protected mark becomes the common name of the goods or services registered for that mark;

10. Transition Regulations

d) The provisions of Article 118 [Grant of Protection Titles; Entry into Register] of the Intellectual Property Law as amended and supplemented according to Clause 43, Article 1 of this Law shall apply to industrial property registration applications that have not yet been registered. notify the results of substantive examination before the effective date of this Law./.