Several types of trademark refusals, and ways to overcome them in Vietnam.
In practice, a trademark application may be refused registration for the whole list of the applied-for goods/services (or only part of them) on the grounds outlined below.
1. Trademark refusal issued on absolute grounds
This is the situation where a trademark lacks distinctive character (the main purpose of a trademark is to help consumers to differentiate goods and services that originate from different companies). For example, whenever a trademark describes the goods/services to which they are applied or if it is contrary to public policy or morality.
Should your trademark contain elements that fall into a prohibited category under the Vietnamese law currently in force, no arguments would be accepted to overcome the refusal. In other cases, you need to prepare and submit arguments to confirm that your trademark has a distinctive character. The objective is quite straightforward: change the mind of the examiner by submitting arguments and relevant evidence.
2. Trademark refusal issued on relative grounds
This is the situation where a trademark is identical or confusingly similar to a prior trademark or to several prior trademarks (also called cited trademarks), to the extent that it creates a likelihood of confusion between such trademarks.
Here the main objective of the response to the OA would be to argue that the refused trademark is not similar to the cited trademark(s), and that no likelihood of confusion exists between such trademarks.
Some of the techniques that are commonly used to accompany replies to this type of trademark refusal are detailed below.
- Submitting a Letter of Consent (LOC)
The LOC is a document issued by the owner of the cited trademark, in which they clearly express that the refused trademark is not a threat to their established rights i.e. giving consent and not objecting to the registration and use of the refused trademark. This document needs to be submitted to the examiner by the applicant of the refused trademark.
Currently, LOCs are considered and accepted on a case-by-case basis by IP Vietnam, therefore contacting a local IP expert to analyse the situation beforehand is recommended.
- Requesting the division of a trademark application or removing the refused goods/services
Your trademark may be refused registration for only the part of the list of goods/services that is considered identical or similar to those protected by the cited trademark(s). Requesting the division of your trademark application can be a good solution (one application for the accepted goods/services and another comprising the rest of the goods/services that were refused). The objective is to obtain a smoother and faster application process for the accepted goods/services and, in parallel, file arguments regarding the refused goods/services in the newly created application. Alternatively, you may simply remove the refused goods/services from your trademark application and the registration process will resume.
- Filing a non-use cancellation or an invalidation action against the cited trademark(s)
The goal of these actions is to obtain the removal of the obstacle to your trademark application (i.e., obtaining a cancellation or invalidation of the cited trademark(s)). Such actions may be filed only against registered trademarks and a successful outcome would imply the resumption of the registration process.
It’s important to note that the specific details of overcoming a trademark refusal in Vietnam can vary based on the individual circumstances of the case. Therefore, it’s advisable to seek professional legal advice to ensure the best possible approach for your situation.
Source: European Commission