Some new points about trademark in Circular No.23/2023/TT-BKHCN

Circular No.23/2023/TT-BKHCN was issued by the Ministry of Science and Technology and has been effective from November 30, 2023. This Circular replaces Circular No. 01/2007/TT-BKHCN and the previous amending ones to provide detailed regulations on some provisions of the amended Intellectual Property Law of 2022 and the implementation of Decree 65/2023/ND-CP.

Circular No.23/2023/TT-BKHCN (referred to as Circular 23) inherits the basic contents of previous Circulars while making the following changes:

(i) Detailing certain provisions of the amended Intellectual Property Law 2022;

(ii) Reasonably inheriting and adjusting the regulations which are still applicable under Decree 103/2006/ND-CP to overcome arisen difficulties;

(iii) Removing administrative procedure regulations (transferred to Decree 65/2023/NĐ-CP) to align with the Law on Promulgation of Legal Documents;

(iv) Adjusting the format and presentation of content to ensure clear, concise, and reader-friendly regulations.

Regarding the regulations on Trademark, Circular 23 has some noteworthy new points as follows:

1. The authorization of filing applications (Article 5)

The previous Circulars have clearly stipulated that the authorization must be in written form (Power of Attorney or Authorization Contract), as well as the contents and conditions for replacing the authorization, and re-authorization. Inheriting these provisions, Circular 23 has additional supplementary provisions such as:

♦ The replacement of authorization must be declared in writing, but the content can be flexibly presented in a separate authorization document or even within the Power of Attorney itself.

♦ Re-authorization can only be carried out if (i) the authorized organization or individual meets the requirement as the representative of the applicant and/or the complainant, and (ii) re-authorization is carried out after the initial authorization is recognized by the Intellectual Property Office under the regulations (the date on which the Intellectual Property Office receives the valid initial authorization document).

2. Formality examination of trademark applications (Article 9)

Unlike previous Circulars that regulate the conditions for the formality acceptance of the applications, Circular 23 specifies this matter in an exclusive manner, clearly listing cases where the application is considered unsatisfied with the conditions of formality. In particular, the Circular regulates the provisions as the basis for determining the applicant’s lack of registration rights and/or for the first time indirectly referring to “subjects owning intellectual property contrary to social ethics, public order, harmful to national defense, security” as one of the grounds that can make Vietnam IP Office immediately conclude the unaccepted formality of the application (Article 9.1.c).

In addition, Circular 23 also regulates the scope of formality examination for collective marks and certification marks (Article 25) by specifically listing issues that would not be considered in the process of examining the formality of these types of trademark, such as “evaluation method/assessment method of the characteristics of goods, services certified by the mark“, “method of controlling the use of the mark” and “conditions for using the mark” etc.

3. Publication of valid trademark application (Article 10)

For the first time, the content of the publication of trademark application will include “Usage Regulations” if the applied mark is a collective mark or certification mark. This can be considered as a document specific to collective marks and certification marks that needs to be published on IP Gazette in addition to the basic contents of a regular trademark such as the trademark sample, international classification, and list of goods, services, etc.

4. Handling the other party’s opposition request (Article 11)

Regarding this issue, Circular 23 has made changes to the “deadline for parties’s submitting opinions/arguments” as follows:

♦ Clearly stipulate that Vietnam IP Office will determine a period of 02 months for the parties involved to respond/give opinions after receiving the Notification of the Opposition and/or the response of the applicant regarding the content of the opposition. This period in the previous Circular was only 01 month;

♦ Clearly stipulate a deadline of 02 months for the opposing party to submit to Vietnam IP Office a copy of the Court’s Acceptance for handling the case in the event of an opposition request related to the registration right, and Vietnam IP Office requests the opposing party to file a lawsuit with the court. The corresponding period in the previous Circular was only 01 month.

In addition, Circular 23 also clearly sets out the excluded cases in which Vietnam IP Office will still handle oppositions related to “registration rights” without requiring the opposing party to initiate legal proceedings. These are cases where Vietnam IP Office has solid grounds to immediately continue handling the opposition request in accordance with the provisions of the IP Law (Article 11.5).

In terms of formality, Circular 23 also for the first time clearly stipulates that the language used to opposition shall be Vietnamese. The accompanying documents may be in other languages but must be translated into Vietnamese when requested by Vietnam IP Office.

It can be said that the above-mentioned amendments have a positive nature, being both clear and detailed, and are in line with practicality, making it easier for the parties to fulfill their rights and obligations in accordance with legal regulations.

5. The criteria for determining geographical names (Article 24.8)

Circular 23 inherits the previous regulations but presents in detail the criteria used to determine what constitutes a geographical name and other signs indicating the geographical origin of the product. It is noteworthy that, for the first time, a geographical name as well as a symbol of the locality will be considered as indicating the geographical origin if it is “used for specific services (services associated with the specific characteristics of the locality) ” This is a case that has never been mentioned, regulated in the previous circulars, and is practical and suitable for the current practical use of geographical names.

6. The content of the application (Article 26)

Circular 23 has provided more specific regulations on rejecting parts as a result of the trademark application examination stage. Specifically, the rejection of protection for each part is determined based on the classification of goods/services, and Vietnam IP Office will address both the acceptance for protection and the rejection in the same notification sent to the applicant (if the trademark application is only granted protection for a part of the applied mark). Accordingly, depending on the reasonable or unreasonable response of the applicant to each content, Vietnam IP Office will determine to grant protection certificates or reject the entire trademark as regulated.

This is considered a progressive regulation due to its clarity and detail in the process of handling trademark applications by Vietnam IP Office at substantive examination stage. This provides applicants with orientation and reasonable choices in responding to Vietnam IP Office at this stage.

7. Determining bad faith in trademark registration (Article 34.2)

It can be said that this is a very progressive regulation because the reality shows that there are increasingly many acts of filing for trademark registration with the nature and purpose of “bad faith”. This issue has been previously regulated in IP Law and guidance documents, but all only mentioned the concept and name of the issue without any specific provisions to define the essence of this behavior.

Therefore, Article 34.2 of Circular 23 lists the cases considered as “bad faith” in filing for trademark registration. Although these cases are only “qualitative” in nature, they have a broad scope and contain many values and meanings that are directional in helping to collect evidence to prove the “bad faith” of the applicants who are not sincere, engage in speculation, and intentionally seek benefits through trademark registration.

It is worth noting that Article 34.3 of the Circular clearly states that the consideration of “bad faith” is also carried out during the examination of trademark applications. This shows a difference from the previous regulations when “bad faith” was almost only used as a basis for canceling the validity of a certificate of trademark registration.

By Nguyen Trong Tu

Trademark Department