The mark does not fully satisfy the prescribed protection conditions
- The application satisfies the conditions for the grant of a protection title but fails to comply with the first-to-file principle.
Procedures of refusal
The NOIP will first send a Notice of its intended refusal to grant a protection title, setting a 3-month time limit for the Applicant to correct the errors or object to the intended refusal. The Applicant is permitted to extend the deadline once for a maximum of 3 months, provided that they submit a written request for an extension before the last date of the set time limit.
If the Applicant makes no objections or makes unjustifiable objections to the intended refusal, the NOIP will issue a Notice of refusal to grant a protection title.
A Notice of refusal to grant a protection title is issued in the following 4 cases:
- The Applicant fails to correct errors, improperly corrects errors, fails to reply, or the reply to the intended refusal is rejected
- The Applicant fails to pay fees and charges for granting the protection title.
- The Applicant fails to make any objections or makes unjustifiable objections.
- An opponent successfully filed an opposition claim against the registration application.
The most common situation is where the Applicant fails to correct errors or makes an unjustifiable objection to the intended refusal, resulting in the mark being refused for the grant of a protection title.
The time necessary for the NOIP to issue an intended refusal or an intended grant of a protection title ranges from 6 to 9 months, and in reality can take up to 12 months .
The review process for issuance of a Notice of Grant or Notice of Refusal after receiving a response may take 6 to 9 months.
In total, the Applicant can pursue a case of trademark registration for up to 2 years.
Article 73, 74, 115, and 117 of the 2005 Law on Intellectual Property, amended in 2009
Point 15 of Circular 01/2007/TT-BKHCN amended in Circular 16/2016/TT-BKHCN
What can the Applicant do?
Upon receiving the Notice of intended refusal to grant a protection title:
- Correct the errors as per the NOIP’s request.
- Respond to the results of the substantive examination by the NOIP to prove the Applicant’s ability to meet the protection conditions.
- Send a request for re-examination of the application before the NOIP issues the Notice of refusal to grant a protection title. The evidence and argument attached therein should be different from that of the previous phase.
Upon receipt of a Notice of Refusal to grant a protection title, the Applicant can either lodge a complaint regarding the administrative decision or initiate a lawsuit.
Article 73, 74, 117, and 119 of the 2005 Law on Intellectual Property, amended in 2009
Point 9, 15, and 16 of Circular 01/2007/TT-BKHCN amended in Circular 16/2016/TT-BKHCN
Request for assistance
As explained above, pursuing a trademark registration process can take up to 2 years, making it costly, time consuming, and difficult for the Applicant to focus on developing the brand itself.
In practice, there are many ways to respond to a Notice of Refusal, requiring the respondent to have an in-depth understanding of relevant legislation.
In addition, having experience working with government agencies is an important advantage that can help minimize errors and save a considerable amount of time.
Our practical experience
1. Respond to the intended refusal to grant a protection title based on the same grounds that the NOIP used for the refusal.
The NOIP stated in the intended refusal that “the trademark has no distinctive character and is easily misleading”.
The Applicants may seek to prove that the mark is wholly distinctive, easy to remember and easy to recognize, or that although part of the mark or the geographical indication may be confusingly similar, it is a common noun that has been recognized.
2. Filing an opposition claim is an effective measure to protect the Applicant’s mark.
For example: A Notice of Opposition can be based on evidence that the opponent is registering its mark for the purpose of appropriating the Applicant’s mark.
Masan Consumer Corporation (“Masan”)
Sagami Chain Co., Ltd. (“Sagami Chain”)
Both using the same name ‘SAGAMI’ and registering Class 30 (including the sub-classes of noodle-based prepared meals and noodles).
Sagami Chain filed an opposition against Masan’s trademark application with evidence proving the latter’s intention of registering ‘SAGAMI’ with the knowledge that it is identical to Sagami Chain’s trademark.
3. Even if the trademark is well known abroad, it is still necessary to register for trademark protection in Vietnam.
For example: In the lawsuit involving the brand ‘X-Men’, the Ha Noi City Court has dismissed the argument that Marvel’s X-Men is a well-known brand in Vietnam since its popularity couldn’t be proven among Vietnamese consumers.
4. Eliminating the rejected components of the former application, and registering a new application.
For example: Removing goods or services from the registered class reduces the chance of rejection, without compromising the mark’s scope of business.