The National Assembly has just passed the amended Law on Intellectual Property which will take effect from January 1st, 2023. In order to bring the IP system closer to the world's treaties and common practices, the law brings important changes, covering a wide range of essential matters. For this article, we would like to bring the ones in respect of the Trademark Opposition to your attention.
The new law continues the current pre-registration opposition system Vietnam has adopted for years. Currently, any party may proceed with opposition against a pending application until it has been granted or refused for registration. However, upon the new law comes into effect, there will be a time limit for the opposition, namely, an opposition against a trademark application will be just available within 05 months as of its publication date (Article 112a.1.c).
After considering various factors including the relevant procedural matters, public trademark database, and the trademark awareness of the right holders in Vietnam, the lawmakers have come to a conclusion that 05 months as of the publication date is the most suitable time frame for potentially opposing parties to obtain information about a particular application and to take the necessary steps to obtain advice and raise an opposition.
The law is silent on whether there is any available extension of the above time limit. We note that in some other jurisdictions (i.e. United States, Kingdom, Singapore, etc. ), a first extension may be granted upon request of the opponent, and a further extension may require the consent of the applicant and/or a showing of good cause. We now have to wait for other sub-law documents that may give details in this regard.
If the interested party fails to file the Opposition in due time, he is still able to submit his written opinion to bring facts to the Office by a so-called Observation procedure in respect of the registrability of an Application. However, this is a long-available mechanism and remains unchanged in the new law. There is still no time limit for the Observations provided that the Application has not been registered or finally refused. Of course, the opinions will be treated just as a referential source for the Office's examination and they would not cause any obligation on the side of the Office. It also means that the person submitted the written opinions is not in the position of an opposing party who may receive any official responses/update on the Application examination result of the Office .
In other aspect, the Observation has been viewed as a helpful and effective tool for any person who is unable to establish the third party's right but just want to act for the public interest. Accordingly, as of the effective date of the new law, we expect that this procedure may be utilized by the conflicted parties who are unable to take action within the Opposition time limit.
Of note, there is no exception for the effective time of this new Opposition regulation, it will take effect on the same day as of that of the new law, i.e. for all trademark applications which are filed as of January 01, 2023.
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.
