BROSS & PARTNERS
How to Tackle Trademark Backlog in Vietnam
Attorney Le Quang Vinh
Presented on the afternoon of October 23, 2023 at VNIPO
vinh@bross.vn
Over 60,000 trademark apps. annually filed, eight-fold greater than patent apps. and nearly twentyfold more than design apps.
2
Trademark examination completion is now sluggish (2-3 times longer than 9-month statutory time limit)
Annual growth more than 10%
Huge Backlog of Unexamined Trademarks
> 60.000
> 8.000
> 3.000
PHASE I
01
Establishing general rules on conflict with prior rights
Exceptions to first-to-file rule and priority rule:
Articles 74.2i, 74.2g, 74.2k, 87.7
Appropriateness of relevant evidence
Clearly specifying the criteria for enjoying the exceptions
Current priority rule at Article 91 IP Law is interpreted too narrowly
Foreign laws and practice: famous trademark, widely-used-and-recognized trademark which are neither filed nor registered
generally considered to have priority right better than the filing date of the disputed mark
1. Completing Trademark Examination Guide
Class 3
Class 43
Class 30
Class 6
2. Nice classification: Acceptable Identification of Goods/Services Updated and Public
Encourage the use of acceptable classification, ie. prioritizing examination of trademark apps. using acceptable goods/services.
Feasible because 60% total apps. are represented by IP agents those who can recommend their clients to use acceptable identification of goods/services
Regularly updating goods/services acceptable by VNIPO
3. Quota and KPI for Examiner Should be Redetermined
Current norms are merely based on apps. receipt number, neither differing simple/difficult applications, nor single-class, nor multiple-class ones
Present norms should be redefined by ease/difficulty of applications to exactly assess examiner’s completion capacity and KPI as a basis for considering bonuses, salaries to create fairness and work motivation
Multi-class applications, or those containing both word and figurative elements are examined longer than those containing single-class or word mark only
Categorizing different applications
Quota for examination assigned
4. Adequate investment in IT
Proposing to upgrade and use IT infrastructure to ensure efficiency and smoothness
Examination stopped in the past 5 months due to IT system changes caused:
* Frustrating applicants too much,
* Great pressure on the IP agents’ responsibility of explanation to their clients
* Continuing to increase new backlog to old backlog, causing more pressure on Trademark Examination Center
Proposing the Ministry of Finance to spend money for the VNIPO to implement the IP national strategy (not requiring spending money due to "specialized sector")
5. Priority mechanism for accelerating some types of applications
Trademarks in dispute in market should be prioritised
Applications having unacceptable identification of goods/services; complicated trademarks (verbal & figurative elements combined)
Applications having long list of goods/services
Trademarks that has been in used
Trademark applications opposed
Consequence: Help reduce social frustration by satisfying their needs in time
6. Internal Information System Significantly Improved
7. Don't worry too much about the possibility of incorrect grant of protection
With respect to geographically misunderstanding, misdescriptive or deceptive marks, current pre-assumption mindset should be changed to post-assumption
IP5 countries do not automatically equate geographical names with geographical origins
Do not consider a sign automatically a false indication as to as long as there is convincing evidence to the contrary
“Tên địa danh” (place name) should not be used since such term can be misundertood as the name of a place with reputation for a particular product. “Geographical name” should be adopted in replace
8. Mindset in Examining Location Names Changed
9. Examination of Tradename and Business Name Should Change
The boundary between trade names and trademarks lies in the way the sign is used, specifically if it is used to identify one business with another, it is called a trade name; if it is used to distinguish the origin of this product from the same product of another business, it is called a trademark
Even though the right over tradename is automatically established like copyright (but copyright only arises if both conditions are met: originality and material fixation) then it does not mean that such right automatically arises in the business name, but that right exists only when a subject claiming rights to a trade name can successfully prove that the business name satisfies the conditions for protection as a trade name
Neither advisable and nor necessary to equate
all business names (enterprise names) with tradenames by reason of:
VNIPO has no obligation to prove the existence of a trade name, but the burden of proof lies with the subject claiming rights to the trade name. Disputes related to trade names should be classified as disputes with prior rights, and it is best to let them be resolved by other procedures such as complaints, cancellation, or administrative or civil lawsuits
PHASE II
02
1. Trademark Examination Reformed
2. Similar Group Code Established
Class 30
3201
3209
3001
3003
3029
A system of similar group code helps automatically determine the similarity of goods/services
similar group code would enable examiner free up 50% of the examination time (he/she does not have to compare the identity or similarity of products bearing the trademarks, but only compares the likelihood of confusiong between the trademarks).
similar group code would decrease unnecessary controversies, disagreements, or inconsistencies between departments, especially reducing complaints.
3. Revising the 2022 IP Law to Clearly Delineate Absolute and Relative Grounds
Article 73
Amending relevant Articles in the 2022 IP Law to operate new examination process, especially recasting absolute grounds and relative grounds (cần phân định rõ ràng 2 loại căn cứ này).
Article 74