General concept of Letter of Consent:
In the field of intellectual property in general and in the procedure to establish trademark rights in particular, the concept of Letter of consent (LC) is to refer to a legal document signed and issued by the owner of a pre-registered mark (usually a cited mark) giving consent and not objection to registration and use of an identical or similar trademark application subsequently filed by another entity for the same or similar product/service or product/service.
LC under the current law of Vietnam:
The current IP Law of Vietnam does not have a specific provision on the Letter of Consent. However, in a few articles, there is an indirect reference to a form of granting a letter of approval related to the “Right to register a mark” – Article 87:
– 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
Practical examination of trademark applications related to LC and some emerging issues:
In the past ‘s practice for decades, although the law does not give specific regulations, the National Office of Intellectual Property of Vietnam (NOIP) has basically accepted the “Letter of consent” in substantive examination process, or re-examination or even in the appeal stages relating to trademark application. The acceptance of the Letter of consent is based on the principle that the coexistence of the pending trademark and the cited mark in the market does not cause confusion for consumers. Of course, in accordance with international practices, in order to be considered and accepted during the registration process, the Letter of consent must normally also meet certain conditions and standards in terms of content, form…
It is worth noting that, recently, in the practical examination of trademark applications at the NOIP, there are emerging views that significantly different from those before, such as:
1. Because the law has no specific provisions, there is no legal ground for considering the reasonableness and legitimacy of the Letter of consent. (If in the past, it was somehow accepted that the law was wrongly applied!). This view is based on the principle that state officials and civil servants in public service activities can only do what the law allows. If the examiner intentionally abuses his power to go beyond the limits of the law, and in case there are related complaints or lawsuits in the future, the official (examiner) will bear the risk of being disciplined…
2. While the current law does not have specific provisions about LC, but according to international and Vietnamese practices so far, it is still possible to consider accepting the legal value of the LC as the basis for granting of a trademark. However, in order to minimize the potential risks arising, LC should be accepted only in a limited number of specific cases, for example only in cases where the applicant and the cited trademark holder are public companies or parent company – a subsidiary of the same group, or an affiliated company; and in the content of the LC there must be a commitment of the control mark owner that there will be no lawsuits or complaints about the registration and use the protected mark on the basis of the LC…
3. Since the LC is only for the purpose of serving as a basis for considering the grant of a protection title for a trademark in the procedure for establishing rights, there should be a limit on the time (and the chance) for the applicant to submit LC for the NOIP’s consideration. Specifically, if during the examination of the trademark application, the application owner provides a valid LC from the cited mark owner, then the trademark application can be granted protection. When substantive examination procedure has ended – that is, the NOIP did already issue a Decision on refusal of the trademark application, then the applicant cannot exercise the right to appeal against that Decision on the basis of a LC. This view is based on the fact that: The NOIP’s decision is correct, not illegal, so it is not subject to complaints according to the Complaint law. In this case, the applicant is advised to re-file a fresh new trademark application!
Comments and recommendations:
We duly realize that the above-mentioned views are raised on some certain legal grounds. However, the application of the same in the actual examination of a trademark application will potentially lead to adverse legal consequences for the applicant. It will likely create inequality among the trademark applicants before and after the new point of view is applied. From other view, it will even nullify or/and entail lots of risks related to legal liability for the legitimate advice on the LC that IP lawyers /IP agents did advise his clients before…
In order to both protect the legitimate rights and interests of the trademark owners involved, and ensure the consistency and professionalism of the IP consulting services, and IP agents’ activities, we strongly and respectfully request that the above mentioned changes in relation to trademark examinationneed a reasonable transition period and should only be applied after an official Notice has been issued.
In long term, in order to create a legal basis for the uniform application of the provisions of the LC in the registration procedure to establish trademark rights, it is necessary to legislate in the Intellectual Property Law a number of provisions on LC such as: Basic content, required of LC, sample and template of LC (notarization procedure, legalization, language of LC), time limit and limit of acceptance of LC, scope and conditions under which the LC can be accepted as the basis for granting a certificate of trademark registration, The actual use of the mark was granted based on the LC, procedures for renewal, transfer, license for trademark was granted based on LC…
By Trinh Duong Van
INVESTIP – IP LAW FIRM