legitimatize Letter - Intellectual Property Law

It is time to legitimatize Letter of consent into the Intellectual Property Law

CategoriesHighlights, Legal News

Current law and applicable practice:

The current IP Law of Vietnam took effect as from July 1, 2006, which is almost silent on Letter of consent, except for Article 87 with provisions on the right to file a trademark application as below:

– Organizations and individuals conducting lawful commercial activities have the right to register trademarks for products that they put on the market but are produced by others, provided that the manufacturers do not use such marks for products and do not object to such registration – Clause 2

– For a mark protected in a country that is a contracting party to an international treaty that prohibits the representative or agent of the mark owner from registering such mark, which the Socialist Republic of Vietnam also as a member, such representative or agent is not allowed to register the mark without the consent of the trademark owner, unless there is a good reason – Clause 7

In practice, although the law has no specific provisions, the National Office of Intellectual Property of Vietnam (NOIP) has basically accepted the legality of “Letter of consent” document in the process of examining, re-examining of trademark application or reviewing a claim, appeal related to a trademark application.

In order to improve the current IP legislation, including provisions about “Letter of consent”, NOIP is now conducting a survey to seek for opinions and suggestions on the same. Hereunder are some common and basis issues in the NOIP’s survey:

  • Should a trademark in the application under consideration be allowed to overcome a refusal on the grounds that it is identical or confusingly similar to a previously registered trademark (cited mark) only by the Letter of consent from the cited trademark owner or not?
  • What is the basic, mandatory content of the Letter of consent?
  • In terms of form, how should the Letter of consent be made? Fixed sample or model of the of Letter of consent is needed?
  • To what extent should a Letter of consent be considered for approval?
  • Does the Letter of consent need to be provided for consideration and acceptance within any limited time and procedure?
  • What conditions must be ensured for the actual use of the trademark granted based on the Letter of consent to prevent risks and confusion for the public and consumers?
  • Post-licensing procedures related to the Letter of consent, such as: procedures for renewal, assignment, and licensing of trademarks granted based on the Letter of consent, how should be handled?…

Our comments and recommendations:

1. Should or should not grant a trademark on the basis of Letter of consent?

We are inclined to support the point of view of accepting the Letter of consent in the trademark registration procedure because after all, trademark is the intellectual property of the owner, the relationship between the trademark owner and the applicant is of a civil nature. By way of negotiation and agreement, the cited mark owner may agree to give consent to use and registration to the applicant. Of course, that agreement must be consistent with certain principles and conditions to ensure the correct function and role of the trademark.

According to a survey of WIPO (*), the majority of the countries participating in the survey agree with the acceptance of the Letter of consent, including: Australia, China, Russia, UK, USA, Singapore and Vietnam. Therefore, we strongly believe that it is time for Vietnam to legislate into the revised IP Law and guiding regulations to create a legal basis for uniform and consistent application.

2. Does the Letter of consent need to comply with the content requirements? And what are those contents?

We are of the opinion that the Letter of consent needs to meet some certain conditions in terms of content. The minimum required contents of the Letter of consent should be:

– Full and accurate name and address of the cited mark owner;

– Complete and accurate information about the cited mark;

– The correct name and address of the applicant;

– Full information about the trademark application (application number, filing date, list of classes and products/services, trademark name, trademark sample);

– Content showing that the owner of the cited mark allows and does not object to the registration and use of the respective applied-for mark (for specific classes and products/services)

– Commitment to the responsibilities and obligations of the cited mark owner for related disputes and lawsuits arising, if any.

3. Does the Letter of consent need to comply with the formality requirements?

We agree that the Letter of consent also needs to meet certain conditions in terms of form such as:

– Languages: must be made in the official language of the IP Office at which the trademark application is under consideration. For example, at the National Office of Intellectual Property of Vietnam, the language of Letter of consent must be in Vietnamese or bilingual Vietnamese-English-Vietnamese…

– Signature: The person signing the Letter of consent must be the legal representative of the cited mark owner or the very cited mark owner (individual). The signature shall be clearly and fully executed together with the written of full name as well as the position of such person in his company/organization (if any)

– Execution: The Letter of consent submitted to the IP office for consideration must be original and in hard copy. The letter needs to be signed and/or stamped for certification according to the formality prescribed by applicable law at the place where the Letter of consent is made (notarization, signature certification, consular legalization, translation notarization).

– Others: The Letter of consent shall indicate the name of the IP Office receiving and considering the same (e.g. the NOIP of Vietnam), the date of signing the Letter of consent; where the Letter of consent consists of multiple pages, the pages must be numbered and signed and/or stamped.

4. To what extent should a Letter of consent be considered for approval?

We support the view that the relationship between the cited trademark owner and the applicant is of a civil nature, so there should be no fixed restriction on the scope or circumstance that the Letter of consent to be approved. A decision on whether to accept or not to accept a Letter of consent needs to be comprehensively and thoroughly considered not only basing on general principles and regulations but also depending on each specific situation and case flexibly.

5. Does the Letter of consent need to be provided for consideration and acceptance within any time limit and procedure?

We support the view that it is necessary to set a specific time limit for the applicant to submit and provide the Letter of consent in the trademark registration procedure. This ensures that the application examination process takes place smoothly, within the time limit prescribed by law.

However, we realize that the revised IP Law needs to clearly stipulate that the Letter of consent will be considered for acceptance in other procedures related to the trademark registration procedure, including: the response to the office action (both national application and international registration under Madrid system), re-examination, the appeal procedures (first time and second time), administrative lawsuit… according to prevailing regulations.

6. What conditions must be met for the actual use of the mark granted based on the Letter of consent to prevent risks and confusion for the public and consumers?

We realize that this is one of the issues that attracts a lot of attention and concern from the trademark registration agency. However, from a practical perspective, the relationship between a trademark being accepted for protection (on the basis of the Letter of consent) and the actual use of the same by the trademark owner are   different matters, taking into account: i) The approval to issue the Letter of consent mostly comes from the subjective will of the mark owner at the time of making the decision; and ii) The NOIP’s consideration to accept for registration of a trademark on the basis of the Letter of consent is just the result of the theoretical examination and evaluation process, a desk work only (with more or less subjective); and iii) However, in order to confirm the actual confusion caused to the consumers/the related public or not a market survey is a must. In addition, the practice of using a trademark and the actual likelihood of confusion among the public and consumers will also vary over time…

From practical point of view, in order to minimize the risk, we are thinking about some suggestions such as: i) Should the trademark registration Certificate issued on the basis of the Letter of consent be endorsed a symbol, a sign or a notation that somehow represents same? ii) Further, such the information shall be recorded in the official data base and publicly available so that it can be looked up and checked when needed, and iii) The responsibility when using the mark granted on the basis of the Letter of consent should also be added, for example: in actual use, it must be represented by a certain sign, sign or indication – equivalent similar to the current obligation of the licensee when he use a trademark on the basis of a license agreement…

7. How should problems arise after a trademark has been granted a Certificate on the basis of a Letter of consent?

7.1 Whether the owner of the cited mark has the right to withdraw the Letter of consent after the trademark has been granted a Certificate and request to cancel the protection of that mark is also the matter that the revised IP law should predict to resolve?

In our opinion i) the grant of a trademark on the basis of Letter of consent only when it has already met prescribed conditions and standards at the time of examination and ii) the request thereafter to withdraw the Letter of consent and cancel the trademark should be considered as a new circumstance, and as such there is no suitable basis to cancel the granted trademark (except for cases based on other grounds as otherwise agreed by the parties or provided for by law)

7.2 If in the Letter of Consent, the owner of the cited mark: (i) to allow the trademark applicant under consideration to use and register a mark that is identical or confusingly similar to his previously registered trademark and (ii) to commit that there will not be any disputes arising and to bear all responsibility for the content of this authorization, which is sufficient basis to resolve future disputes (if any). between two trademarks?

We deem that the cited mark’s commitment as stated in the Letter of consent is mainly for the purpose of consideration by the trademark office at the examination stage. Claims and disputes arising in the future need to be resolved on the basis of comprehensive consideration of factors and grounds applied at the time of dispute arising, for example, subsequent additional agreements between related parties…

7.3 Is it necessary to submit a copy of the Letter of consent when carrying out the procedure for renewing a trademark granted on the basis of the same?

We vote for the negative answer because: i) Normally, the Letter of consent will not set forth a period of validity of the same; and ii) Letter of consent by itself will not automatically give the trademark rights to the applicant of the applied-for mark, but the trademark office’s decision does, and iii) The dossier related to the mark granted on the basis of the Letter of consent which has been fully and clearly recorded both on the Protection Title and on the trademark office’s data base that anyone can look up.

7.4 When a trademark is accepted for protection on the basis of a Letter of consent from the cited mark owner, is there a need for subsequent written consent by the cited mark owner for the assignment of that trademark or not?

We support the answer “No” because i) As mentioned above, a trademark is protected, even on the basis of the Letter of consent, but the Letter of consent itself does not automatically give the right to an applied-for trademark ii) It is not feasible or even unreasonable to require subsequent consent from the cited mark owner after a period of about 10 years.

Conclusion

In order to be in line with international laws and practices as well as to meet the requirements of the current practice, we believe that more than ever, it is time to introduce regulations on Letter of consent into the revised IP Law. This would help create a transparent and standard legal framework for the understanding and uniform application of the Letter of consent in the procedures of examination of trademarks in Vietnam, including other related processes.

(*) https://investip.com.vn/wp-content/uploads/2022/05/sct_22_5.pdf

By Trinh Duong Van

Litigation Department

INVESTIP – IP LAW FIRM