Currently, in reality, there are many trademarks that have been registered and granted protection titles (also known as Trademark Registration Certificates). However, for various reasons, trademark owners do not continue to use the trademarks. This situation occurs quite frequently, especially with international trademark applications designating Vietnam for registration. This directly and adversely affects entities wishing to register similar or identical trademarks to develop their brands in Vietnam. In such cases, is there any way to resolve this issue and create opportunities for other entities to practically register and use those trademarks?
The answer is yes! According to the provisions of Article 95 of the Law on Intellectual Property of Vietnam 2005, one of the grounds for requesting the termination of a trademark protection title’s validity is proving that “the trademark has not been used by the owner or a person authorized by the owner for five consecutive years prior to the date of the request for termination of validity without a legitimate reason, unless the use commenced or recommenced at least three months before the date of the request for termination of validity.”
So, what procedures are needed to re-register and use a trademark that has been registered for protection at the National Office of Intellectual Property but has been inactive or ceased operations for a long period? LawFirm.Vn is an experienced unit in assisting clients in collecting evidence and documents proving non-use of a trademark for 5 years or more, and representing clients in carrying out the procedure to request termination of the protection title’s validity at the National Office of Intellectual Property of Vietnam. We summarize some contents related to the procedure for terminating the validity of a trademark protection title as follows:
1. Proving Non-Use of Trademark for 5 Consecutive Years
LawFirm.Vn will represent you, our client, to conduct an investigation into the actual use of the trademark in Vietnam to prove that the trademark requested for termination has not been used for 5 consecutive years prior to the request for termination.
Implementing agency: Vietnam Industry and Trade Information Center – Ministry of Industry and Trade.
Investigation period: 7-10 working days
2. Procedure for Requesting Termination of Trademark Protection Title Validity at the National Office of Intellectual Property
LawFirm.Vn is an Intellectual Property Representative organization. LawFirm.Vn will represent you, our client (through a power of attorney), to collect documents, prepare dossiers, submit applications, and respond to official letters from the National Office of Intellectual Property related to the procedure for requesting termination of the trademark protection title’s validity.
The dossier for requesting termination of the trademark protection title’s validity includes:
- Declaration form (02 copies as per template);
- Evidence;
- Power of attorney (As per LawFirm.Vn’s template);
- Explanation of reasons for the request;
- Receipts for fees and charges.
Receiving agency: National Office of Intellectual Property
3. VN Law Firm’s services related to terminating the validity of Trademark Protection Titles (Trademark Registration Certificates)
- Consulting on conditions for terminating the validity of Trademark Protection Titles;
- Consulting and searching for information on trademark usage in Vietnam;
- Consulting and drafting dossiers related to the procedure for searching trademark usage status;
- Consulting, drafting dossiers, and responding to official letters from the National Office of Intellectual Property related to the procedure for terminating the validity of Trademark Protection Titles;
- Representing clients to work with competent state agencies to carry out procedures for searching trademark usage status and terminating the validity of Trademark Protection Titles;
- Reporting progress and advising clients on next steps;
- Consulting clients on legal and intellectual property issues after completing the procedures;
