Trademark

Invalidating a Trademark Registration

Avater User Author Bud & Prairie

Last update Oct 21, 2023

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):
    • 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.
  1. Who Can File for Invalidation:
    • 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.
  1. Time Limit for Filing:
    • 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.
  1. Procedure for Invalidation:
    • 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.
  1. Appeal Process:
    • 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.
  1. Legal Effects of Invalidation:
    • 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.
  1. Applicable Fees:
    • 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:

    • 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.

 

Why must a Trademark Registration Invalidated?

A trademark registration may be invalidated for several reasons. The process of invalidating a trademark—sometimes referred to as “cancellation”—typically involves proving that the trademark was improperly granted or that circumstances have changed that make the registration invalid. Here are some common grounds for invalidating a trademark registration:

  1. Lack of Distinctiveness: If a trademark is not distinctive or is merely descriptive of the goods or services it represents, it may be invalidated. A trademark must be capable of distinguishing the goods or services of one business from those of another.
  2. Prior Rights: If another party has an earlier right to the same or a confusingly similar trademark for the same or similar goods or services, they can challenge the registration. This can include prior registered trademarks, common law rights, or well-known marks.
  3. Non-Use: If a trademark has not been used for a certain period (often three to five years, depending on the jurisdiction), it may be subject to cancellation due to non-use. Trademarks are meant to be used in commerce; if they are not, their registration can be invalidated.
  4. Misrepresentation or Fraud: If the trademark owner provided false or misleading information when applying for the trademark registration, it may be invalidated. This could include false claims about the use of the trademark or the nature of the goods or services.
  5. Genericism: If a trademark becomes generic—meaning that it has become the common name for a type of product or service rather than identifying its source—it can be invalidated. For example, “aspirin” was once a trademark but became generic over time.
  6. Violation of Public Policy or Law: Trademarks that are deceptive, scandalous, or contrary to public policy or law (e.g., containing offensive or illegal content) can be invalidated.
  7. Likelihood of Confusion: If a registered trademark causes confusion among consumers due to its similarity to an existing mark, it may be invalidated.
  8. Bad Faith: If it can be demonstrated that the trademark was registered in bad faith—such as an intent to block another party from using a similar mark or to extort money from a rightful owner—it may be subject to invalidation.

Invalidating a trademark typically involves legal proceedings before a trademark office or a court, depending on the jurisdiction and the grounds for invalidation.

What are the Takeaways for Invalidation of a Trademark Registration?

The invalidation of a trademark registration can have significant consequences for businesses and individuals. Here are the key takeaways for understanding invalidation:

1. Retroactive Effect:

When a trademark registration is invalidated, it is considered void from the date of registration. This means that the trademark is treated as if it were never legally protected from the beginning.

The owner loses all exclusive rights to the trademark, including any legal recourse for infringement that may have occurred during the period of registration.

2. Grounds for Invalidation:

Lack of Distinctiveness: If the trademark is not distinctive enough to differentiate the goods or services of one party from those of another.

Prior Rights: If another party can prove they have prior rights to a similar or identical trademark for the same or similar goods/services.

Misrepresentation or Fraud: If the registration was obtained through false information or fraudulent claims.

Genericism: If a trademark has become generic and is now used as a common term for a type of product or service.

Violation of Public Policy: If the trademark is deemed offensive, deceptive, or contrary to public policy or law.

Bad Faith: If the registration was done in bad faith, such as to block a competitor unjustly.

3. Legal Proceedings:

Invalidation is generally pursued through legal proceedings, either before a trademark office or in a court. It often involves a third party filing a formal request for invalidation and providing evidence to support their claim.

The process can be complex and requires thorough documentation and legal argumentation to establish the grounds for invalidation.

4. Impact on Businesses:

Losing a trademark through invalidation can have serious implications for businesses, including the loss of brand recognition, goodwill, and legal protection against infringement.

Businesses may have to rebrand or cease using certain trademarks if they are invalidated, which can result in substantial costs.

5. Third-Party Challenges:

Competitors or other interested parties can challenge the validity of a trademark if they believe it does not meet the necessary legal criteria for registration.

Companies should be vigilant about monitoring the trademark registrations of competitors and be prepared to challenge any that infringe upon their own rights or are improperly granted.

6. Risk Mitigation:

To avoid the risk of invalidation, it is crucial for trademark applicants to conduct thorough trademark searches before filing to ensure that their proposed mark is distinctive, does not infringe on existing rights, and complies with legal standards.

Proper legal guidance and adherence to trademark laws can help mitigate the risk of a trademark being invalidated.

7. Not Always the End of the Road:

In some cases, even if a trademark registration is invalidated, the owner may still have some rights under common law if the mark has been used in commerce and has acquired distinctiveness in a specific region or market.

Reapplication or registration of a modified trademark may be possible, depending on the circumstances and the reasons for invalidation.

Invalidation of a trademark registration can have profound and far-reaching effects on a brand’s legal standing and business operations. Understanding the grounds, consequences, and potential defenses against invalidation is critical for businesses to safeguard their trademarks and overall brand identity.

 

What are the Differences between Invalidation and Termination of a Trademark Registration?

Invalidation and termination of a trademark registration are two different legal processes, each with its own implications for the status of a trademark. Here’s a breakdown of the differences:

1. Invalidation of a Trademark Registration

Invalidation refers to the legal process by which a trademark registration is declared invalid from the beginning, as if it were never registered. This process usually occurs when a third party successfully challenges the validity of the registration on specific grounds.

  • Effect: The trademark is considered void from the date of registration. It’s as if the registration never existed.
  • Grounds: Common grounds for invalidation include lack of distinctiveness, prior rights of another party, fraud or misrepresentation during the application process, the mark being deceptive or contrary to public policy, or the mark becoming generic.
  • Process: Invalidation usually involves a legal challenge by a third party, often through the trademark office or court.
  • Result: If a trademark is invalidated, it loses all the legal protections that come with registration, and the owner cannot claim exclusive rights over it from the date of registration.

2. Termination (or Cancellation) of a Trademark Registration

Termination (or cancellation) of a trademark registration involves ending the legal protection of a trademark from a specific point onward. Termination generally occurs for reasons related to the use (or non-use) of the trademark after its registration.

Key Points:

  • Effect: The trademark registration is canceled or revoked, and the trademark is no longer protected from the date of termination onward.
  • Grounds: Common grounds for termination include non-use of the trademark for a continuous period (often three to five years, depending on the jurisdiction), the owner voluntarily relinquishing rights, failure to renew the registration, or abandonment of the trademark.
  • Process: Termination can occur through a request by the trademark owner, failure to renew, or a successful challenge by a third party based on grounds like non-use.
  • Result: After termination, the trademark loses its registered status, and the owner can no longer claim the exclusive rights provided by registration. However, the owner may still retain common law rights if the trademark is still in use in commerce.

Summary of Differences

Aspect Invalidation Termination (Cancellation)
Effect Trademark is void from the start, as if never registered. Trademark protection ends from the date of termination onward.
Grounds Issues related to the validity of the registration itself. Issues related to non-use, failure to renew, or abandonment.
Process Legal challenge by a third party or authority. Can be initiated by owner or third party; may involve non-use.
Result All rights associated with the registration are lost retroactively. Rights are lost from the termination date forward; some common law rights may remain.

Both processes serve to remove trademark protections, but invalidation nullifies the registration from the beginning, whereas termination removes protection from a specific point in time going forward.

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We offer a full complement of services in all areas of IP law, including without limitation patents; trademarks; copyrights; industrial designs; IP litigation; anti-counterfeiting and enforcement; and licensing, due diligence, and contract review. Our strong technique fields include bio-chemistry, biotechnology, pharmaceutical, superconductor devices and systems, civil engineering, electrical engineering, mechanical engineering, electronics, computer software, telecommunications, information technology, communications, media, construction. Bud & Prairie boasts a team of highly-qualified lawyers, licensed patent and trademark agents, engineers, paralegals, technical staff and legal professionals whose knowledge, experience, and acumen are second to none. Most of our attorneys and consultants own advanced degrees from both domestic and foreign institutions. We have the depth of experience of our partners with a perfect combination of knowledge, foresight and creativity, making us possible to analyse and solve issues faced by clients from various industries and providing them with all-round or holistic solutions that are not only legally sound, but also commercially sensitiv

                            

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