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In recent years, Vietnam has witnessed an alarming increase in cases of bad-faith trademark registrations. These are acts of registering trademarks identical or confusingly similar to well-known brands, not for legitimate use, but with the intent to usurp intellectual property rights from other businesses or to gain personal profit through illegal actions such as extortion or monopolizing intellectual property usage.
The Concept of Bad-Faith Trademark Registration in Vietnam
A trademark is a sign used to distinguish the goods or services of one organization or individual from those of others. Registering a trademark not only helps businesses protect their brands from infringement but also serves as an effective tool for building consumer trust, expanding market reach, and safeguarding commercial interests.
Bad-faith trademark registration has caused severe negative consequences for original businesses and the market as a whole. First, it creates significant obstacles for businesses attempting to expand into new markets, forcing them to engage in complex and costly legal disputes to reclaim their brand name.
Additionally, this phenomenon undermines the intellectual property legal framework, complicating the management and enforcement of intellectual property rights. Fake or unauthorized trademarks circulating in the market may confuse consumers, eroding trust in legitimate brands and reducing overall market reliability.
Current Legal Framework for Trademarks in Vietnam
According to Clause 2, Article 72 of the Intellectual Property Law 2022 (No. 07/2022/QH15), a trademark must be distinctive and not identical or confusingly similar to previously registered trademarks or other protected items such as national flags or emblems.
Moreover, trademark registration requires applicants to have a genuine intent to use the trademark in good faith. The concept of bad faith was introduced as a new provision in the 2022 Intellectual Property Law. However, despite its inclusion, no specific definition or detailed guidelines exist to prevent bad-faith trademark registrations.
For instance, the current examination process lacks mechanisms to verify how applicants intend to use the trademark in commerce, including the scale and geographical scope of use. This creates opportunities for applicants to exploit the system and appropriate trademarks belonging to reputable businesses.
Determining bad faith during the trademark registration process remains a significant challenge for authorities. The applicant’s intent is often unclear, and proving malicious intent relies on evidence that is difficult to obtain. Consequently, enforcing appropriate legal measures is challenging.
Furthermore, Vietnam’s courts and administrative bodies face many difficulties in handling trademark disputes, including lengthy and complex procedures, coupled with growing pressure from an increasing number of cases.
Countermeasures Against Bad-Faith Trademark Registrations in Vietnam
Upon learning that their trademark has been registered in bad faith, Vietnamese businesses can file complaints or initiate lawsuits to request that authorities determine the legality of the trademark and protect their rights.
However, a prerequisite for successful litigation is that the business must demonstrate the registrant’s bad-faith intent.
According to Clause 2, Article 34 of Circular 23/2023/TT-BKHCN, a trademark protection title may be revoked if the applicant is found to have registered the trademark in bad faith under the following circumstances:
a) There is evidence that, at the time of filing, the applicant knew or should have known that the trademark they registered was identical or confusingly similar to a trademark widely used in Vietnam or a famous trademark in other countries for identical or similar goods or services; and
b) The registration was intended to exploit the reputation and goodwill of the said trademark for profit, or primarily to resell, license, or transfer the registration rights to the trademark owner mentioned in point (a); or to prevent the trademark owner mentioned in point (a) from entering the market to restrict competition; or to engage in other acts contrary to fair commercial practices.
At the time of filing, the condition of the applicant “knowing or having grounds to know” applies if the original trademark had already been widely used in Vietnam or abroad for the same type of products or services.
If the original trademark only gained widespread reputation after a certain period following the filing of the trademark application in Vietnam, this condition would not be satisfied. Additionally, the concept of “knowing or having grounds to know” remains ambiguous and depends largely on the perspective of the relevant authorities and the specific circumstances of the applicant. This is because the reputation of the prior trademark may be well-known in one region but not widely recognized in the applicant’s location.
The criteria regarding the malicious intent of the trademark registration in Vietnam are relatively clearer. This is due to actions such as leveraging the reputation to resell, pressuring the rightful owner of the trademark, monopolizing the market, or blocking others from entering the market being easily identifiable, particularly when a request for investigation or cancellation of the protection title is filed by the rightful owner.
To substantiate a claim of bad-faith trademark registration, the rightful trademark owner must actively seek evidence and documents to prove both conditions. If only one of the two conditions is met, the argument will be deemed insufficient and subsequently dismissed.
Thus, even if it can be demonstrated that the applicant registered the trademark with malicious intent for dishonest, self-serving purposes based on the reputation of the rightful owner, it must also be proven that the applicant knew or had grounds to know about the existence of the original trademark. This poses significant challenges due to the uneven distribution of information accessibility and the visibility of the original trademark across different geographical areas.
Nevertheless, despite these challenges, this regulation is necessary to distinguish bad-faith registrations from unintentional cases where an applicant files for a similar or identical trademark with no ulterior motive—a scenario still prevalent in Vietnam’s market today. In such cases, applications are merely rejected without penalties or further investigation into the applicant’s intent.
Conclusion
In summary, bad-faith trademark registration in Vietnam poses a significant challenge to Vietnam’s legal system and businesses. Addressing this issue requires concerted efforts not only from authorities but also from businesses themselves in protecting their intellectual property rights through proactive measures such as monitoring, filing complaints, and gathering evidence.
A transparent and robust legal framework will play a crucial role in preventing such activities, safeguarding legitimate business interests, and ensuring sustainable market development.
To protect their rights, businesses should proactively adopt defensive measures, such as preemptively registering trademarks for their intellectual property, even if those assets are not currently in use. In cases where a bad-faith trademark registration of a similar mark is discovered, businesses should consult a reputable and specialized law firm experienced in trademark infringement and intellectual property protection in Vietnam and internationally for timely support.
ASL Law is a leading full-service and independent Vietnamese law firm made up of experienced and talented lawyers. ASL Law is ranked as the top tier Law Firm in Vietnam by Legal500, Asia Law, WTR, and Asia Business Law Journal. Based in both Hanoi and Ho Chi Minh City in Vietnam, the firm’s main purpose is to provide the most practical, efficient and lawful advice to its domestic and international clients. If we can be of assistance, please email to [email protected].
ASL LAW is the top-tier Vietnam law firm for Intellectual Property Services. If you need any advice, please contact us for further information or collaboration.
