The client’s trademark was a famous mark in connection with automatic vending machines in the United States. To support our case, we conducted in-depth Internet research and found a significant amount of online content in Vietnam showcasing automatic vending machines bearing the client’s mark.
Based on this, we were able to establish that:
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The client had operated a business involving automatic vending machines bearing the mark in Vietnam.
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The opposing party was aware of the client’s trademark and had registered an identical or similar mark for vending machine services in Class 35 in Vietnam in bad faith.
Legal Framework: Invalidation of Trademark Registration in Vietnam
The legal process of invalidating a trademark registration in Vietnam is governed by the Vietnamese Law on Intellectual Property (IP Law), particularly Articles 95 and 96. Below is a breakdown of the relevant legal grounds and procedures:
1. Grounds for Invalidation (Article 96 – IP Law Vietnam):
A trademark registration can be invalidated based on the following grounds:
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Non-compliance with Protection Criteria: The mark does not meet requirements under:
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Article 72 – Distinctiveness,
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Article 73 – Prohibited Signs,
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Article 74 – Distinctiveness of the mark.
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Conflict with Prior Rights: The mark infringes existing rights such as a prior registered trademark, trade name, geographical indication, or other protected rights.
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Bad Faith Registration: The trademark was filed dishonestly or in bad faith by someone with no legitimate right to the mark.
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Procedural Irregularities: The registration was based on misleading or incorrect documentation.
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Invalidation of International Base Registration: If the international registration upon which the Vietnam registration is based is canceled, the Vietnam registration may also be invalidated.
2. Who May File for Invalidation?
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Any third party with a legitimate interest (individual, organization, or state agency) may file a request with IP VIETNAM (the Intellectual Property Office of Vietnam).
3. Time Limit for Filing
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No time limit: A request for invalidation may be submitted anytime during the validity of the registered trademark.
4. Trademark Invalidation Procedure
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Petition Submission: File a written invalidation request to IP VIETNAM, stating legal grounds and supporting evidence.
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Examination Process: IP VIETNAM will review the request. The registrant will be notified and allowed to submit a response.
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Decision Issuance: A decision to invalidate (in whole or in part) or reject the petition will be issued.
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Notification to Parties: Both parties are formally notified of the outcome.
5. Appeal Procedure
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A party may appeal IP VIETNAM’s decision or file a lawsuit in a competent court for a judicial review.
6. Legal Effect of Invalidation
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If invalidated, the trademark is deemed null and void from the date of registration. All rights associated with it cease from that date.
7. Applicable Fees
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Fees are applicable upon filing and cover administrative and examination costs.
Proving Wide Use of a Trademark in Vietnam
In Vietnam, establishing the wide use of a trademark is a key element in invalidating a bad-faith trademark registration, defending against non-use cancellation, or proving well-known status under Article 74.2(g) of the IP Law.
Step-by-Step Guide to Proving Wide Use:
1. Collect Strong Evidence of Use
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Sales Receipts & Invoices: Evidence of goods/services sold under the trademark.
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Marketing & Advertising Materials: Flyers, catalogs, social media posts, digital ads.
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Distribution Contracts: Agreements with local distributors or retailers in Vietnam.
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Media Mentions: Articles, interviews, or news coverage related to the brand.
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Online Presence: Website traffic stats, screenshots of Vietnamese pages.
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Consumer Research: Market surveys, focus groups, and user feedback.
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Photos & Packaging: Images showing the trademark on products in the local market.
2. Prove Duration, Scope, and Extent
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Show how long, where, and for what goods/services the mark has been used.
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Aim for at least 3–5 years of uninterrupted and genuine use in Vietnam.
3. Provide Financial Evidence
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Sales volume, market share, ad spend, and audited financial records showing brand activity in Vietnam.
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Include tax filings, import/export data, and business registration documents.
4. Prove Trademark Recognition
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Consumer surveys, awards, and media coverage that indicate wide recognition of the mark in Vietnam.
5. Affidavit or Declaration of Use
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A notarized declaration, signed by the trademark owner’s representative (e.g., CEO, Legal Counsel), summarizing use and evidence.
6. Submit to IP VIETNAM
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File your evidence in proceedings related to invalidation, cancellation, or recognition of well-known status.
7. Respond to Challenges
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Be prepared to submit supplemental evidence or attend hearings if the mark’s wide use is challenged.
Practical Contexts Where Wide Use Evidence is Critical
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Defending Against Non-Use Cancellation: If a mark is unused for 5+ years, it risks cancellation. Evidence of use prevents this.
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Establishing Well-Known Trademark Status: Broader protection is granted to marks proven to be well-known.
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Opposing Infringers: Demonstrating extensive use helps prove likelihood of confusion and damage.
Legal Recognition of Bad Faith in Vietnam
At the time of this case, Vietnam’s IP Law did not explicitly define bad faith. Thus, recognition of dishonest trademark filings was done case-by-case by IP VIETNAM, relying on common factors:
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Evidence that the registrant knew of the genuine trademark holder’s rights.
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Business relationships (licenses, contracts, or investments) linking the two parties.
International Use vs. Domestic Recognition
While foreign use of a trademark (e.g., in the U.S.) may help support a claim, under Article 74.2(g) of Vietnam’s IP Law, a mark is refused protection if it is identical or confusingly similar to one that has been widely used and recognized in Vietnam before the adverse party’s filing date. Hence, domestic commercial presence is key.
Our Client’s Invalidation Strategy
Our client submitted robust documentation to IP VIETNAM, including:
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Company background, establishment date, and scope of operations.
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Consumer base and brand awareness data.
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Geographic reach within Vietnam.
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Sales turnover and volume for five years.
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Start date and continuity of mark use.
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Awards or recognitions related to the mark.
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Advertising materials, budgets, and photographs.
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Trademark registrations and recognition abroad.
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Financial investments in trademark promotion.
The chance of success hinged heavily on the quality and quantity of wide-use evidence, all consolidated into a notarized Declaration of Use. Notably, exhibits were not required to be notarized, but the declaration itself had to be.
Affidavit or Declaration of Use in Vietnam
This sworn statement, made by a company representative, certifies the mark’s extensive use and is often a decisive piece of evidence in legal proceedings regarding:
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Trademark cancellation for non-use
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Bad faith invalidation actions
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Well-known trademark recognition
For companies seeking to maintain or enforce their trademark rights in Vietnam, submitting a well-prepared Affidavit of Use is a critical legal step. Below is a professional and SEO-optimized template you can adapt to your company’s specific case.
[Company Letterhead, if applicable]
AFFIDAVIT OF USE OF TRADEMARK
1. INTRODUCTION
I, [Full Name], currently serving as [Job Title] at [Company Name], a company duly registered and existing under the laws of [Country], with its principal office located at [Company Address], do solemnly affirm and state as follows:
Declarant Information
I am the authorized representative of [Company Name] (the “Company”), and I have direct knowledge of the facts set forth in this declaration.
Authority to Declare
I am legally empowered to submit this affidavit on behalf of the Company.
2. TRADEMARK INFORMATION
The Company is the rightful owner of the trademark “[Trademark Name]” (the “Trademark”), which was officially registered under Registration Number [Registration Number] by the National Office of Intellectual Property of Vietnam (NOIP) on [Registration Date]. The Trademark is registered for the following class(es) of goods/services: [List Class Numbers].
3. EVIDENCE OF TRADEMARK USE IN VIETNAM
a. Duration of Use
The Trademark has been actively and continuously used in Vietnam since [First Date of Use], in relation to the goods/services specified in the registration.
b. Nature of Use
The Trademark is prominently featured on the Company’s products and services, including but not limited to:
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Product packaging
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Promotional materials
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Advertising campaigns
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Digital platforms (official websites, e-commerce listings, and social media channels)
c. Geographic Scope
The Trademark is currently used across multiple regions in Vietnam, including [List Key Cities or Provinces], where the Company’s products/services are marketed and sold.
d. Extent of Use – Supporting Evidence
The following documentation is attached to this affidavit to demonstrate the scope and legitimacy of trademark usage:
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Exhibit A: Copies of invoices and sales receipts from [Start Year] to [End Year]
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Exhibit B: Samples of advertising materials such as brochures, flyers, banners, and online ads
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Exhibit C: Distribution and retail agreements with Vietnamese partners
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Exhibit D: Press coverage and media articles referencing the Trademark
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Exhibit E: Survey reports showing consumer recognition and brand awareness
e. Advertising Investment
From [Year] to [Year], the Company has allocated an estimated total of [Amount] toward advertising and promotional activities to reinforce the visibility and value of the Trademark in Vietnam.
f. Market Position and Brand Recognition
According to market research conducted by [Market Research Firm, if applicable], the Trademark has achieved a significant level of recognition among Vietnamese consumers in the relevant market segment. (See Exhibit E)
4. DECLARATION & SIGNATURE
I hereby affirm, under penalty of perjury under the laws of Vietnam, that all information contained in this affidavit is accurate and true to the best of my knowledge and belief.
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Date: [Date of Declaration]
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Signature: [Declarant’s Signature]
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Name: [Declarant’s Full Name]
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Position: [Job Title]
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Company: [Company Name]
5. NOTARIZATION
This affidavit must be notarized by a notary public or competent authority in accordance with Vietnamese legal requirements.
IMPORTANT NOTES FOR TRADEMARK AFFIDAVIT FILING IN VIETNAM
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Required Attachments: Include all supporting exhibits (e.g., receipts, agreements, promotional materials, and surveys).
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Notarization: Ensure the document is legally notarized for full enforceability.
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Legal Consultation: For maximum compliance and protection, we recommend working with a licensed Vietnamese intellectual property attorney.
Need Help with Your Trademark in Vietnam?
If you have questions or need professional assistance with trademark declarations or IP protection in Vietnam, feel free to contact our legal team 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:
- 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.
- 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.
- 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.
- 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.
- 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.
- 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.
- Likelihood of Confusion: If a registered trademark causes confusion among consumers due to its similarity to an existing mark, it may be invalidated.
- 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.
Bud & Prairie
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