Invalidating a Trademark Registration

The client’s trademark was a famous mark in respect of automatic vending machines in US. To add, we conducted various searches in the Internet and found abundance of information on automatic vending machines bearing the mark in Vietnam. As such, it could be established that (i) the client had run a business concerning automatic vending machines bearing the mark in Vietnam and (ii) the adverse party had been aware of the client’s trademark and registered the trademark for automatic vending machines related services in Class 35 in Vietnam in bad faith.

In Vietnam, the regulations for invalidating a trademark registration are governed by the Law on Intellectual Property (IP Law) of Vietnam, primarily under the Law on Intellectual Property (as amended and supplemented by other laws). The main provisions related to the invalidation of a trademark registration are found in Articles 95 and 96.

1. Grounds for Invalidation (Article 96 of the IP Law):

1. • A trademark registration may be invalidated if it falls under any of the following grounds:
     • Non-compliance with protection criteria: The trademark does not meet the registrability requirements under Articles 72 (Distinctiveness), 73 (Prohibited signs), and 74 (Distinctiveness of a mark).
     • Prior Rights: The registered trademark conflicts with a prior mark, trade name, geographical indication, or other industrial property rights.
     • Bad Faith: The trademark was registered in bad faith (e.g., it was filed by someone who does not have the legitimate right to it).
     • Violation of Regulations: The registration was granted based on incorrect information, documents, or procedures.
     • Cancellation of an International Registration: If the international trademark registration is canceled, any trademark registration based on it may also be invalidated.

2. Who Can File for Invalidation:

1. • Any third party can file a request for invalidation with the Intellectual Property Office of Vietnam (IP VIETNAM), provided they have a legitimate interest or right in the invalidation.
   • This includes individuals, organizations, or the competent state agencies.

3. Time Limit for Filing:

1. • The request for invalidation can be filed at any time during the validity of the trademark registration. There is no specific time limit for filing an invalidation action.

4. Procedure for Invalidation:

1. • Filing a Petition: Submit a written request for invalidation to IP VIETNAM, specifying the grounds and providing supporting evidence.
   • Examination: IP VIETNAM will examine the request and the evidence submitted. The trademark owner will be notified and given an opportunity to respond.
   • Decision: IP VIETNAM will issue a decision to either invalidate the trademark registration partially or entirely or to reject the invalidation request.
   • Notification: Both parties will be notified of IP VIETNAM’s decision.

5. Appeal Process:

1. • If either party disagrees with the decision, they can file an appeal to IP VIETNAM or initiate a lawsuit at the competent court to request a review of the decision.

6. Legal Effects of Invalidation:

1. • If a trademark registration is invalidated, it is considered null and void from the date of the registration decision. The rights and legal protection of the trademark cease as of that date.

7. Applicable Fees:

1. • Fees must be paid when filing an invalidation request, which covers the costs of examination and administrative handling.

Wide Use of a Trademark

Proving the wide use of a trademark in Vietnam is essential for various purposes, such as defending against a cancellation action for non-use, establishing well-known status, or proving priority over a conflicting trademark registration. The process involves demonstrating that the trademark has been continuously and extensively used in commerce in Vietnam, gaining a certain level of reputation and recognition among relevant consumers. The steps to prove wide use of a trademark in Vietnam

1. Collect Evidence of Use:
   • Gather documents and evidence that show continuous and genuine use of the trademark in Vietnam. This could include:
     • Sales Receipts and Invoices: Showing transactions involving the sale of goods or services under the trademark.
     • Advertising and Marketing Materials: Flyers, brochures, catalogs, advertisements (both online and offline), and other promotional materials bearing the trademark.
     • Distribution and Retail Agreements: Contracts with distributors, retailers, and suppliers in Vietnam that include the use of the trademark.
     • Media Coverage: Articles, news reports, or any media mentions demonstrating the brand’s presence in the market.
     • Website and Social Media Presence: Screenshots or data from websites, e-commerce platforms, and social media accounts showing the promotion and sale of goods or services under the trademark.
     • Market Surveys and Studies: Reports that show consumer recognition and awareness of the trademark in the relevant industry or market.
     • Photographs of Products and Packaging: Images showing the trademark prominently displayed on goods, packaging, or at retail outlets.
2. Demonstrate Duration, Extent, and Scope of Use:
   • Evidence must show the duration (how long the trademark has been in use), extent (geographical areas within Vietnam where the trademark is used), and scope (the goods or services under which the trademark is used) of use.
   • Submit evidence spanning a substantial period (typically three to five years) to prove continuous and uninterrupted use.
3. Provide Financial and Business Records:
   • Submit records of sales, market share, advertising expenditure, and financial performance data. These documents help demonstrate the economic value and impact of the trademark in Vietnam.
   • Financial documents like audited financial statements, tax filings, and business registration certificates can strengthen the case.
4. Provide Evidence of Trademark Recognition:
   • To prove that the trademark is widely known among the relevant public, you may present:
     • Consumer Surveys and Opinion Polls: Conduct surveys to show consumer recognition and association of the trademark with specific goods or services.
     • Awards and Certificates: Recognition, awards, and certifications that the brand or its products/services have received, which can enhance the reputation of the trademark.
5. File an Affidavit of Use:
   • Prepare a formal affidavit or declaration, usually notarized, detailing the use of the trademark in Vietnam. The affidavit should be signed by a representative of the trademark owner (e.g., the CEO, marketing manager, or legal counsel) and should summarize the evidence of use.
6. Submit Evidence to IP VIETNAM:
   • When required (e.g., in defense of a cancellation action or when proving well-known status), submit the evidence of use to IP VIETNAM or the relevant authority handling the case.
7. Respond to Objections or Challenges:
   • If the trademark’s wide use is challenged, be prepared to present additional evidence or clarify any objections raised by IP VIETNAM or opposing party. This may involve participating in hearings or submitting supplemental documents.

Contexts Where Proving Wide Use is Crucial

• Defending Against Non-Use Cancellation: A trademark registration can be canceled if it has not been used for five consecutive years without legitimate reasons. Providing evidence of use is crucial to maintain the registration.
• Establishing Well-Known Status: Proving that a trademark is well-known can provide broader protection against infringement or registration of confusingly similar marks.
• Trademark Enforcement: When enforcing trademark rights against infringers, evidence of wide use can strengthen claims of likelihood of confusion and damages.

At that time, Vietnam IP Law and its by-law documents did not lay down regulations on what act is considered bad faith/dishonesty in registering a trademark in Vietnam. Hence, the interpretation of bad faith/dishonesty as a ground for trademark invalidation depended on IP Vietnam on case-by-case basis. The critical factors in demonstrating a bad faith were commonly accepted by IP Vietnam through weight of evidence around “the registrant is aware of genuine holder’s trademark” as well as “relationship” between the registrant and the righteous trademark holder manifested by investment, license or contract relation.

Further, wide use of a mark in foreign countries (other than Vietnam) might support a trademark invalidation action in Vietnam, but not a determinant factor. Under Article 74.2g of the Intellectual Property Law of Vietnam (Wide-use ground): “Signs should be refused for trademark protection in Vietnam if they are] Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable.”. Therefore, to ascertain chance of success in winning a trademark invalidation action, it is critically important to evidence wide-use status of the client’s mark in commerce in Vietnam before the filing date of the mark filed by the adverse party.

On the mentioned ground, the client submitted to IP Vietnam evidence proving the wide-use of the client’s mark, which included, but not limited to, the following information/documents:

• An introduction of the client’s history, date of establishment, the scope of their business, et
• Estimated number of consumers being aware of the mark through purchase or use of the goods bearing the mark or through advertisement;
• Territories where the goods bearing the mark are circulated/provided;
• Turn-over from sale or distribution of the goods bearing the mark or sales volume of such services (for 5 years to date);
• Duration of time of continuous use of the mark; date of first use of the mark;
• Widespread fame of the goods bearing the mark (information on any fame, accreditation that the services under the mark have been awarded, for at least 5 years to date);
• Advertisement materials, pictures, photographs taken during any advertisement or promotion campaign of the mark (these evidence are important, please submit as many as possible), total investment on advertisement/ promotion of the mark (for 5 years to date);
• List of registrations for the mark worldwide;
• List of countries recognizing the mark as well known;
• Figures on capital contribution invested in the mark.

The chance of success in opposition depended much on abundance and strength of evidence on the wide-use status. Under the trademark practice of Vietnam, all evidence of wide-use status of a trademark should be incorporated in a Declaration, which must be notarized by the notary public and be submitted to IP Vietnam in support to the wide-use/well-known status argument. The annex/exhibits to the Declaration were not required to be notarized.

Affidavit or Declaration of Use

A formal affidavit or declaration detailing the use of a trademark in Vietnam is a sworn statement made by a representative of the trademark owner (such as the CEO, Marketing Manager, or Legal Counsel) affirming the continuous and extensive use of the trademark in Vietnam. This document is often notarized and serves as evidence in legal proceedings, such as defending against a non-use cancellation action or establishing a trademark as well-known.

Here is a basic template outlining the key elements to include in the affidavit or declaration:

[Company Letterhead, if available]

AFFIDAVIT OF USE OF TRADEMARK

1. INTRODUCTION

I, [Name], of [Position] at [Company Name], having its registered office at [Company Address], being duly sworn, do hereby declare and state as follows:

Declarant Information:

I am the [Position] of [Company Name] (“the Company”), a company duly organized and existing under the laws of [Country], with its principal place of business at [Company Address].

Authority to Make the Declaration:

I am duly authorized to make this affidavit on behalf of the Company and have personal knowledge of the facts set forth herein.

2. DETAILS OF THE TRADEMARK

Trademark Information:

The Company is the owner of the trademark “[Trademark Name]” (the “Trademark”), registered under Registration No. [Registration Number] with the National Office of Intellectual Property of Vietnam (NOIP) on [Registration Date] for goods/services in Class(es) [List Class Numbers].

3. EVIDENCE OF USE

Duration of Use:

The Trademark has been continuously and extensively used in Vietnam since [First Date of Use in Vietnam] for the goods/services covered by the registration.

Nature of Use:

The Trademark is prominently used on the following goods/services: [Description of Goods/Services]. The Trademark is displayed on product packaging, promotional materials, advertising campaigns, and digital platforms, including websites and social media channels.

Geographical Scope of Use:

The Trademark has been used in various regions of Vietnam, including [List Specific Cities or Regions], where the Company’s products/services are distributed and sold.

Extent of Use:

The following evidence illustrates the extent of the use of the Trademark:

1. • Sales Receipts and Invoices: Copies of sales receipts and invoices demonstrating the sale of goods/services bearing the Trademark from [Start Year] to [End Year] (Exhibit A).
   • Advertising and Marketing Materials: Copies of promotional materials such as brochures, flyers, advertisements, and digital marketing campaigns featuring the Trademark (Exhibit B).
   • Distribution and Retail Agreements: Copies of agreements with distributors and retailers in Vietnam (Exhibit C).
   • Media Coverage: Copies of media articles and news reports covering the Company’s products/services under the Trademark (Exhibit D).
   • Advertising Expenditure and Marketing Activities:

The Company has invested heavily in advertising and promoting the Trademark in Vietnam, with a total advertising expenditure of [Amount] from [Year] to [Year].

Market Position and Consumer Recognition:

Based on the market surveys and consumer research conducted by [Research Firm, if any], the Trademark has attained significant recognition among the relevant consumer groups in Vietnam. A copy of the survey report is attached as Exhibit E.

Affirmation:
Based on the above evidence and facts, I affirm that the Trademark “[Trademark Name]” has been widely used in commerce in Vietnam and enjoys substantial goodwill and recognition among consumers in the relevant market.

4. SIGNATURE AND NOTARIZATION

Signature and Date:

I declare under the penalties of perjury under the laws of Vietnam that the foregoing is true and correct to the best of my knowledge, information, and belief.

Date: [Date of Declaration]

Signature: [Signature of Declarant]

Name: [Name of Declarant]

Position: [Position]

Company: [Company Name]

Notarization:
[This section should be completed by a notary public or another competent authority in accordance with the local legal requirements.]

Additional Notes:

• Attachments: Include all relevant exhibits (e.g., sales receipts, advertising materials, agreements, market surveys) as appendices to the affidavit.
• Notarization: The affidavit should be notarized by a notary public or a competent authority to ensure it is legally valid.
• Legal Advice: It is advisable to consult with a Vietnamese IP attorney to ensure that the affidavit complies with all legal and procedural requirements of IP VIETNAM.

 

For further information, please do not hesitate to contact us at bud-prairie@bud-prairie.com.