On 26 August, our Chinese client contacted us with a pressing issue: their trademark application had been refused by the Intellectual Property Office of Vietnam (IP Vietnam). It came as a shock to them after investing considerable money, energy, and time in building their brand. This situation is not uncommon and raises a frequent question: How can one overcome a trademark refusal in Vietnam?
Understanding the Value of a Trademark in Vietnam
A trademark is a crucial asset in the realm of intellectual property—a subset of intangible property. It represents the outcome of human creativity and plays a significant role in commerce. In Vietnam, a trademark can be commercialized through means such as capital contribution, licensing, or franchise agreements. But all these begin with one essential step: trademark registration.
Registering your trademark establishes legal ownership and protection against infringement. If your application is successful and a Vietnam trademark registration certificate is granted, you gain statutory rights. However, if your trademark is refused by IP Vietnam, you may find yourself in a challenging dilemma.
Facing a Trademark Refusal in Vietnam: Your Options
If your trademark is refused, you generally have two strategic paths:
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Option 1: Discontinue prosecution and allow the application to lapse. This can save time, cost, and effort, allowing you to invest in creating a new trademark that may be more likely to pass the examination.
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Option 2: Challenge the refusal and continue pursuing your trademark by filing a formal response and taking all legal actions permitted under Vietnamese IP law. This approach requires resilience and a mindset of “I want to overcome the refusal.”
Why Was the Trademark Refused?
In Vietnam, a trademark is commonly refused based on Article 74.2.e of the Intellectual Property Law, due to its likelihood of confusion with a prior registered mark. The article states:
“2. A trademark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
[…]
e) A sign which is identical with or confusingly similar to a registered trademark of another organization, individual in respect of identical or similar goods or services on the basis of a registration application having earlier filing date or earlier priority date […]”
Legal Strategies to Overcome Trademark Refusal in Vietnam
To overcome a trademark refusal in Vietnam, you have four main options:
1. Submit Arguments Highlighting the Differences
You can submit a detailed analysis to demonstrate that the Refused Trademark and the Prior Trademark are sufficiently distinct in:
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Appearance
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Pronunciation
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Conceptual meaning
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Commercial origin
Also, assess whether the lists of goods/services are dissimilar, which may reduce the likelihood of confusion.
🔍 Pro Tip: Emphasize any significant difference in product classes to argue distinctiveness.
2. Obtain a Letter of Consent (LoC)
You may seek a Letter of Consent from the owner of the Prior Trademark, confirming they do not oppose your use and registration of the mark in Vietnam.
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An LoC can strengthen your case, but acceptance depends on IP Vietnam’s discretion.
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Even if both owners agree, IP Vietnam may still reject coexistence if consumer confusion is deemed likely.
3. Request Invalidation Based on Non-Use
You can file a non-use cancellation request if the Prior Trademark has not been used in Vietnam for five consecutive years, per Article 95.1.d:
“The mark has not been used by its owner or the licensee without justifiable reason for five (5) consecutive years prior to a request for termination of validity…”
Steps to file a non-use invalidation:
Step 1: Conduct an official investigation on the use status of the Prior Trademark in Vietnam.
Step 2: Submit the invalidation request with supporting documentation (e.g., investigation report from MPM or other accredited agency).
IP Vietnam will notify the trademark owner, who may provide counter-evidence. You will then have the opportunity to rebut these responses.
4. Negotiate for Assignment of the Prior Trademark
Engage in negotiation to acquire the Prior Trademark from its current owner. If the assignment is successful:
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You become the owner of both trademarks.
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You can successfully register the Refused Trademark without conflict.
💡 Strategy Tip: Filing a non-use invalidation request alongside negotiation may add pressure, increasing your chances of a favorable assignment deal.
What If the Refusal Is Upheld?
If your arguments or LoC are rejected, IP Vietnam will issue a final decision of refusal. You can:
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File an appeal with IP Vietnam, showing the refusal violates applicable legal provisions.
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If the appeal fails, escalate the case to:
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The Ministry of Science and Technology (MoST)
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Or initiate a lawsuit at a Vietnamese court
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🛡️ Note: Pursuing appeals or litigation requires a strategic legal team with experience in Vietnam trademark law.
Conclusion: A Trademark Journey That Requires Persistence
Securing trademark protection in Vietnam is both critical and complex. The process is not always smooth, and refusals may occur. But as our client’s case shows, you have multiple legal strategies to challenge a trademark refusal in Vietnam.
Whether it’s filing appeals, negotiating assignments, or launching a non-use invalidation, your efforts can pay off. Most importantly, choose the right strategy—and combine multiple strategies if needed—to successfully overcome trademark refusal by IP Vietnam.
Let our experienced team help you register your trademark in Vietnam with confidence. We understand every nuance of Vietnam’s intellectual property law, and we’re here to guide you at every step.
Legal References:
(1) Article 95 – Termination of Protection Titles
“1. The validity of a protection title shall be wholly or partially terminated in the following cases:
…
d) The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity…”
(2) Article 96 – Invalidation of Protection Titles
“1. A protection title shall be entirely invalidated in the following cases:
a) The application is filed for malicious intent;
b) The application is filed against regulations on security control regarding inventions prescribed in Article 89a of this Law;
c) The invention is directly created from a genetic resource or traditional knowledge about a genetic resource but the registration application does not disclose or accurately disclose the origin of the genetic resource or traditional knowledge…”
If you need tailored assistance on trademark refusal appeals in Vietnam, or seek a strategy to protect your intellectual property in Southeast Asia, contact our team today.
We turn IP challenges into victories.
What are the signs ineligible for protection as marks?
The following signs shall be ineligible for protection as marks:
- Signs identical with or confusingly similar to national flags or national emblems.
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
How can we define the distinctiveness of marks?
The ability of a mark to “identify and distinguish” a good or service is known as “distinctiveness. Dating back to 1976, Judge Henry Jacob Friendly established five basic categories of marks along a spectrum of distinctiveness, ranging from “fanciful” marks that are inherently distinctive on one end and on the other end “generic” marks that are never distinctive and thus not eligible for trademark registration. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. An element of a sign is not distinctive if it is exclusively descriptive of the goods and services themselves or of the characteristics of those goods and services (such as their quality, value, purpose, provenance, etc.) and/or if its use in trade is common for those goods and services. Similarly, an element of a sign that is generic (such as a common shape of a container or a common colour) will also lack distinctiveness. An element of a sign may be distinctive to a low degree(weak)if it refers to (but it is not exclusively descriptive of) characteristics of the goods and services. If the allusion to the goods and services is sufficiently imaginative or clever, the mere fact that there is an allusion to characteristics of the goods might not materially affect distinctiveness. An element of a sign that is neither non-distinctive nor weakly distinctive possesses a ‘normal’ degree of inherent distinctiveness. This means that the element of a sign in question is fully distinctive, in the sense that its capacity to identify the goods and services covered by the mark as coming from a particular undertaking is not in any way diminished or impaired.
Distinctiveness of a Mark
A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases mentioned below.
Indistinctiveness of a Mark
A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
(a) Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
(b) Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
(c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
(d) Signs describing the legal status and business sector of business entities;
(dd) Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
(e) Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
(g) 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;
(h) Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
(i) Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
(k) Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
(l) Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
(m) Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
(n) Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark..
Below are the five categories of distinctiveness ranging from lowest to highest.
- Generic: A generic mark uses a common word for a product or service. Generic marks cannot identify the source of a good or service and are therefore completely ineligible for trademark protection.
- Generic terms can be used effectively in distinguishing company’s products from each other (e.g. Google Maps, Google Calendar, Google Analytics, etc.). Example: Blogger for blogging platform.
- Descriptive: A descriptive mark is an ingredient, quality, characteristic, function, feature, purpose, or use of a good or service. A descriptive mark is not automatically distinctive and becomes eligible for trademark protection only when it becomes associated in the minds of the public with the relevant good or service. Examples: Sharp for televisions, DoubleClick for online advertising.
- Suggestive: A suggestive mark suggests or hints at a good or service, but requires some imagination to arrive at the ultimate meaning of the mark. Although less distinctive than arbitrary or fanciful marks, a suggestive mark is distinctive and eligible for protection. Examples: Greyhound for transportation services, Jaguar for cars.
- Arbitrary: Arbitrary marks are existing words that have no relation to the relevant goods or services. Arbitrary marks are inherently distinctive and afforded higher trademark protection by courts. Examples: Apple for electronics, Camel for cigarettes.
- Fanciful: A fanciful mark consists of an invented word or phrase. Fanciful marks are at the highest end of the distinctiveness spectrum and receive the most protection from courts. Examples: Kodak for photography equipment, Pepsi for beverages.
Why does trademark distinctiveness matter?
Trademark distinctiveness is an essential concept of the law applicable to trademarks and service marks. A trademark which is arbitrary (random) or fanciful (made up words) is considered to be the most distinctive. This means that the mark cannot be so similar to another mark that it causes consumers to confuse the brand or entity associated with that mark. A trademark is inherently distinctive if it does not refer the consumer to a multitude of sources when it is evaluated in light of related products or services. Nike, Apple, Google are extremely protectable because they are extremely unique and distinctive.
When selecting a trademark for your goods or services, you want to be as far to the right as you can on the spectrum of distinctiveness. Brand distinctiveness is a powerful tool for capturing consumer attention and building a memorable brand. By focusing on creating and strengthening distinctive brand assets, you can increase your brand’s salience and protect it from competitors. In short, trademark distinctiveness is important for two reasons. Firstly, it defines whether a name can be protected or not. Secondly, for those names that are distinctive and protectable, the degree of distinctiveness is important when assessing how strong the trademark protection is against other companies.
If you are wondering whether your trademark is worth registering, or if you need any advice on its distinctiveness, please do not hesitate to contact us for our free assistance.
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