Bad Faith Trade Mark Filings

Bad faith trademark filings are an international problem in the systems of intellectual property registration. Under the Intellectual Property Law (“IP Law”), there is no specific definition of “bad faith”, however, the concept of bad faith is scattered recognition in some legislation as follows:

Article 96.3 of the IP Law provides that “Any organizations or individuals shall have the right to request the State administrative authority of IP rights to invalidate a Protection Title in cases provided for in paragraphs 1 and 2 of this Article, provided that fees shall be paid. The time period for making request for invalidation of a Protection Title shall be its  whole  term of protection. With regard to marks, such time limit shall be 5 years as from the grant date, except for the case where the Protection Title has been granted due to the applicant’s dishonesty”.

Point 5.3 of Circular 01-2007-TT-BKHCN dated February 14, 2007 of  the Ministry  of  Science and Technology provides that “Representatives of application owners are accountable to application owners for all consequences of the declaration or supply of untruthful information in transactions with the National Office of Intellectual Property (“NOIP”)  and  pay compensations for any damage caused”.

Point 22.3 of the Circular also provides that a complainant shall ensure the truthfulness of supplied proofs and are liable for consequences of the supply of untruthful proofs.

Generally, bad faith occurs where one intentionally selects a mark to trade off the goodwill  associated with another party’s mark. Bad faith is not an independent basis for seeking to oppose/cancel another application/registration. Evidence of bad faith, however, may support a finding that confusion is likely and that the Applicant therefore should not be able to register or use the applied-for mark. For proving bad faith, arguments and/or evidences should be submitted for proving that the submission/omission must be intentional. In other words, proof of intent to deceive is required to prove bad faith.

In trademark examining practice, it is rare for the NOIP on its own initiative look for take action to identify bad faith but in some cases, even though no opposition is filed, the NOIP refused the applied-for marks since that are identical or confusingly similar to trademarks that are considered by the NOIP as well-known marks. In those cases, the NOIP considered that the trademark applications were applied in “bad faith”.

In practice, if a person denounce a third party took an action in bad faith to the NOIP, that person  bears the burden of proof by submission of clear and convincing evidence. The NOIP may inform the defendant about the notification of bad faith and request the same to submit counter-argument within a prescribed time. In some other cases, the NOIP may inform the plaintiff of his opinion in respect of the notification.

In order to have helpful strategies that could be adopted to cancel/remove/oppose or otherwise take action against bad faith filings, we should do the following

Firstly, the best solution to avoid bad faith filings in Vietnam is to file an application for registration of the trade marks that are being used and/or to be used in Vietnam as soon  as  possible. In practice, the cost for filing and registration of trade marks in Vietnam is lower than that in many other countries and is much lower than the cost for an Opposition, Invalidation and/or a Cancellation cases.

Secondly, in practice, taking a Cancellation action is often much more costly and time-consuming than an Opposition case. In addition, as the NOIP is often reluctant to cancel a trademark registration, the chance of success in a Cancellation case is often lower than that if we file an Opposition during the substantive examination of that trademark. Therefore, it is advisable that the trade mark owner should watch the trademark applications that are published  in Vietnam  and file an Opposition action when necessary.

Pham & Associates