RECOMMENDATION Concerning the Amendment of Provisions Governing the Right to Apply for Trademark Registration

I. Practical Application and Legal Issues

Currently, the guidance for the implementation of the above provision is applied as follows: in case of doubt regarding the authenticity or clarity of the information in the application, the Intellectual Property Office (IP Vietnam) reserves the right to request the applicant to provide documents proving actual production or service provision activities.

However, the question arises as to whether the absence of such documentation should constitute an independent ground for refusal of the right to register a trademark. In our view, treating actual production or business operations at the time of filing as a mandatory requirement would unnecessarily restrict the right to file for trademark registration and is inconsistent with the core nature of the trademark registration

II. Legislative History of Implementing Regulations
The provisions on the right to file for trademark registration under Article 87 of the Law on Intellectual Property have been elaborated and refined through implementing Circulars issued in alignment with each period of legislative amendment and supplementation. Specifically:

• Circular No. 01/2007/TT-BKHCN (issued on February 14, 2007; expired on November 30, 2023): Under Point 37.3, the Circular allowed IP Vietnam to request verification documents when there were reasonable grounds to doubt the authenticity of the information in the application. In the schedule of documents proving the applicant's eligibility, this instrument recognized documents such as: the Business Registration Certificate, contracts, or other documentation confirming the applicant's production of goods or provision of services in accordance with Clause 1 of Article 87; 
• Circular No. 23/2023/TT-BKHCN (issued and effective as of November 30, 2023, replacing Circular No. 01/2007/TT-BKHCN): Under Clause 3 of Article 24, the Circular carried forward the aforementioned verification mechanism while standardizing a two-month time limit for the applicant to submit clarifying documentation. The components of documents proving the applicant’s eligibility were updated with new terminology, including: the Enterprise Registration Certificate, contracts, or other documentation confirming production or business operations in alignment with Clause 1 of Article 87; 
• Circular No. 10/2026/TT-BKHCN (issued on March 31, 2026; effective as of April 1, 2026): Under Clause 8 of Article 69, the Circular maintains IP Vietnam’s authority to request verification documents. A notable novel feature of this instrument is the addition of a clear handling principle: if the designated time limit expires and the applicant fails to provide documentation that meets the requirements, IP Vietnam shall proceed to examine the application based on the existing documents in the file, rather than suspending or refusing the application.

1. Distinguishing the "right to file" from the "obligation to prove actual business operations"
Clause 1 of Article 87 of the Law on Intellectual Property establishes the standing of entities entitled to file for trademark registration, but this does not equate to a mandatory obligation to prove that actual production or service provision activities exist at the time of filing. A trademark not only protects current activities but also serves legitimate future business plans. Requiring proof of actual operations for the entire list of goods and services would inadvertently strip away the right to early protection - a vital preparatory step prior to commercializing products in the market.

2. Limiting the scope of documentation requests during the examination phase
According to the implementing regulations, requesting the submission of supporting documentation shall only be exercised when IP Vietnam has "reasonable grounds to doubt" the authenticity or clarity of the information in the application. Therefore, this is an ad-hoc verification mechanism, not a default procedure applicable to all applications. The fact that an applicant does not yet possess documentation reflecting actual business operations at the time of filing must not be considered an automatic ground for refusal of the issuance of a protection title.

3. Refining provisions at the statutory level to ensure consistency
The principle of "proceeding to examine the application based on existing documents" under Circular No. 10/2026/TT-BKHCN is a reasonable approach, reaffirming that the failure to supplement verification documents does not equate to an automatic forfeiture of the right to file. However, if Clause 1 of Article 87 of the Law on Intellectual Property continues to be interpreted and cited as an independent ground for refusal, the risk of arbitrary and inconsistent application persists. Therefore, the spirit of this Circular needs to be explicitly codified at the statutory level to ensure systemic harmony.

4. Properly positioning legal tools to prevent trademark squatting
The objective of preventing entities without legitimate commercial interests from registering trademarks to hoard or obstruct others must be addressed through more appropriate legal instruments. Instead of stretching Clause 1 of Article 87 into a mandatory obligation to prove actual business operations, the regulatory authority should invoke grounds concerning "bad faith" infringement upon the rights of other entities, or the corresponding provisions on refusal and invalidation. This approach safeguards a fair market while avoiding the imposition of additional administrative burdens on bona-fide applicants.

IV. Recommendations for Amendment and Supplementation

Core Proposal Option: Amending Clause 1 of Article 87 of the Law on Intellectual Property toward affirming that the right to file for trademark registration does not depend on the actual status of production or business operations at the time of filing. This right should be recognized based on the intent for legitimate future commercial use, provided that it does not constitute an act of squatting in bad faith or infringe upon the legitimate rights and interests of other entities.

1. Proposed Draft Provision
"1. Organizations and individuals shall have the right to register trademarks to be used for goods they produce or intend to produce, or services they provide or intend to provide. 
The fact that an applicant has not engaged in goods production or service provision activities at the time of filing shall not constitute a ground for refusal of the right to file for trademark registration, except where there are grounds to determine that the registration is made in bad faith or that the applicant lacks the right to file under the provisions of this Law."

2. Recommendations for Principles of Application during the Examination Phase
To ensure consistency during enforcement, the IPO should strictly adhere to the following principles of application:

• Limiting the Conditions for Requesting Documentation: Requesting the applicant to submit documentation proving the right to file shall only be exercised when there is specific information or evidence giving rise to reasonable suspicion regarding the authenticity of the application; this request must not be automatically transformed into a default procedure for all applications. 

• Not Treating the Absence of Actual Business Operations as a Ground for Refusal: The applicant’s inability to produce documentation proving production or service provision activities at the time of filing shall not be considered an independent and sole ground for refusing the application.

• Properly Applying the Purview of the "Bad Faith" Doctrine: In cases exhibiting signs of trademark hoarding, squatting, or obstructing other entities, the doctrine of "bad faith" and its corresponding legal grounds must be invoked, rather than misapplying the provisions on the right to file under Article 87 as a basis for refusal.

• Ensuring the Consistency of the Subordinate Legal Framework: The provisions of implementing Circulars must remain unified with the principles established at the statutory level. The practice of utilizing production or business operation documents as a formal requirement or a default barrier to the right to file must be completely eliminated.

V. Recommendations for Amending Implementing Guidelines in Subordinate Legislation

To operationalize the legislative orientation under Article 87 and ensure consistency directly within the examination process, it is necessary to amend and supplement Point a1, Clause 8, Article 69 of Circular No. 10/2026/TT-BKHCN.

1. Proposed Supplementary Content
Supplement an exclusionary provision immediately following the current content of Point a1, Clause 8, Article 69 as follows:

“a1) [Documents in accordance with the detailed provisions of official legal sources] the inability to provide documentation confirming production or service provision activities shall not automatically constitute a ground for excluding the right to file for trademark registration.”

VI. Rationale and Anticipated Impacts
The supplementation of the exclusionary provision under Point a1, Clause 8, Article 69 of Circular No. 10/2026/TT-BKHCN aims to deliver the following core impacts:

• Eliminating the "Use-Before-Filing" Barrier: Clearly demarcating the boundary between the right to file and actual business operations; preventing the misinterpretation of Clause 1 of Article 87 as a mandatory "use-before-filing" obligation.

• Protecting the Right to Market Preparation: Creating a safe legal corridor for enterprises to establish rights prior to launching products into the market, thereby timely facilitating fundraising, marketing, and distribution activities.

• Optimizing Administrative Procedures: Reducing unnecessary burdens of proof; enhancing the consistency and predictability of application examination outcomes.

• Effectively Controlling Rent-Seeking Practices: Easing the business documentation requirements does not compromise the screening tools; applications involving trademark squatting or hoarding remain subject to strict handling under the "bad faith" doctrine.

VII. Conclusion

The amendment of Clause 1 of Article 87 of the Law on Intellectual Property, along with its implementing regulations in accordance with the aforementioned proposal, represents an indispensable step toward establishing a transparent legal framework: separating the right to file from the obligation to prove actual business operations at the time of rights establishment. Concurrently, the legal system will both comprehensively protect the right to early protection for bona-fide applicants and optimize screening tools to effectively prevent trademark hoarding and squatting in bad faith./.

Hanoi, September 2026

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PHAM & ASSOCIATES
Pham Vu Khanh Toan, Attorney-at-Law, registed IP Attorney
Managing Director