Key points which can impact the scope of protection granted under the IR and impact enforcement
According to IP Vietnam statistics,1 there were over 9000 international trademark registration (IR) applications designating Vietnam in 2021 alone. This may be a good time to highlight 2 key points that brand owners may not be aware of which can impact the scope of protection granted under the IR and impact enforcement.
Disclaimers imposed unilaterally by IP Vietnam
Upon examination of a mark, IP Vietnam can make the unilateral decision of disclaiming any elements of a mark. The authority is noted in the Statement of Grant for IRs. If the trademark holder disagrees with the disclaimer, they can file an appeal challenging it with IP Vietnam.
Still, trade mark holders might be unaware of the disclaimers imposed by IP Vietnam. The reason is that IP Vietnam is entitled to send one collective Statement of Grant for multiple IRs if they do not issue any provisional refusals against those IRs within the statutory deadline. Along with the collective Statement of Grant, IP Vietnam will have sent a list of protected marks with their respective disclaimers to WIPO. As the collective Statement of Grant features unrelated marks of other unrelated trademark holders, WIPO will not forward the Statement of Grant to trademark holders. It will only provide information of disclaimer if a specific request is made. As such, a trademark holder will only receive a notification from WIPO informing the protection of their trademarks in Vietnam.
To avoid limiting trade mark holders' rights without their knowledge caused by unreasonable disclaimers imposed by IP Vietnam, it is recommended that the holder reviews the IRs designating Vietnam. This should involve requesting IP Vietnam to provide official validity confirmation of IRs where no Statement of Grant is received.
The 90-day deadline to file the appeal challenging the disclaimers starts from the date trademark holders receive the Statement of Grant with detailed information about the disclaimers. Thus, even if trademark holders receive disclaimer information late, the holders still have sufficient time to take necessary action.
IRs that are partially accepted are no longer automatically protected
In the past, if an IR was partially refused, it would be automatically protected in Vietnam for non-rejected goods/services from the day IP Vietnam issued the Notice of partial refusal. However, since January 2018, the validity of IRs being partially refused is no longer automatically established. Instead, IP Vietnam will issue a Statement of Grant for the accepted goods/services, which will come into effect from its issuance date.
Therefore trade mark owners need to actively obtain a Statement of Grant and can file an official request to IP Vietnam to expedite the process. In such cases, IP Vietnam would prioritize the relevant cases, especially where trade mark owners demonstrate the need to enforce their rights in Vietnam.
If you have obtained a grant or partial acceptance for the IR designating Vietnam, we would recommend obtaining a statement of grant to review the scope of protection and effective date.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.