Terminating the validity of the protection title is one of the important contents which has been recently supplemented in the amended IP Law 2022. Hereinafter are some notable amendments and supplements:
1. Supplement of 03 cases applied for termination:
According to Article 95 of the Amended IP Law 2022, the supplemented cases where the protection title is terminated are:
- The use of a protected mark for goods or services by the trademark owner or a person authorized by the trademark owner misleads consumers about the nature, quality or geographical origin of such goods or services;
- The protected mark becomes the common name of the goods or services registered for the mark itself;
- A foreign geographical indication is no longer protected in the country of origin.
2. Supplemental provisions on termination of the validity in whole or part of a protection title
The new regulation clearly states: “The protection title is terminated in whole or in part in the following cases”
The current regulations do not clearly stipulate the partial termination of the validity of a protection title. Therefore, in practice, it results in a very rigid interpretation and application that rejects the request for termination on the part of the validity of the protective title…
3. Any third party has the right to request termination
In the spirit of Clause 4, Article 95, the right to request termination is any organization or individual. In details: “organizations and individuals have the right to request the state management agency in charge of industrial property rights to terminate the validity of a protection title for the case specified at Points c, d, đ, e, g, h, i and k, Clause 1, provided that fees and charges must be paid.”
4. Procedures for the invalidation of the international industrial designs registration are recognized
For the first time, Clause 7 of the Law recognized the procedure for terminating an international registration mark for an industrial design. This Clause also intends to fulfill the Hague Agreement on International Registration of Industrial Designs, to which Vietnam is a signatory.
5. Results of the consideration and legal repercussions related to the request for termination
According to Clause 5 of the Law, based on the results of considering the application for termination of validity of a protection title for the cases specified in Clauses 3 and 4 of this Article, opinions of related parties, the state management agency in charge of industrial property rights shall notify the refusal to terminate the validity of the protection title or decide to terminate the whole or part of the validity of the protection title.
Thus, the outcomes of the consideration of the request for termination of the protection title will be issued in one of the following forms:
- Notice of refusal to terminate the validity of a protection title – in case the request is not fully accepted; or
- Decision on termination of the validity of the protection title in its entirety; or
- Decision on partial termination of the validity of a protection title – in case only a part of the request is accepted.
Despite the fact that the aforementioned regulation is quite new and has not yet formally gone into force, we realize that there are many issues that need to be further guided and explained in order to implement the same effectively in practice:
- 02 additional cases that could be taken into account for the invalidation of protection titles.
1) The use of a protected mark for goods or services by the trademark owner or by a person authorized by the mark owner misleads the consumers about the nature, quality or geographical origin of such goods or services. management of such goods or services;
2) The protected mark becomes the common name of the goods or services registered for the mark itself.
We deem that, in theory, the above provisions are predictable and predictive in order to make Vietnam’s practical legal system compatible with international commitments. However, it will be difficult in practice to demonstrate what would be considered as “misleads the consumers about the nature, quality or geographical origin” while the holder of a trademark protection title (and the person authorized by the trademark owner) still fully comply with the obligation to use the mark as prescribed.
With respect to the provision “Protected trademark becomes the common name of goods”, it can be seen that this is not a rare case in practice, for example the well-known trademarks such as MAGGI (MAGI) registered and protected for dipping sauce products, oyster sauce, soy sauce or trademark Honda for motorcycles, mopeds; or trademark Lavie registered and used for bottled drinking water, mineral water… For most Vietnamese people, “motorcycle” means “Honda”, bottled drinking water is “Lavie”, and Maggi/Magi is just the name of the sauce.
So the question is that, may trademarks that have been used as common names registered (used) for the trademarks themselves in the aforesaid examples be terminated? And is that acceptable and reasonable?
From another aspect, it may inadvertently result in the abuse of power by third parties to prevent the use, exploitation and enforcement of rights of protection title holders; even it would lead to the increasing of the amount of work that needs to be handled at the NOIP – which has been and is always overloaded with many long backlogs.
- Procedure of examination and the legal repercussion of settlement of the request for termination.
We understand that when the NOIP’s procedure for considering an application for termination of validity of a protection title finishes by the issuance of one of the official documents indicated in Clause 5 of the Law, consequently the person who made the request, paid the termination fees will have the right to appeal, the right to request reconsideration, bring the case to court… if he does not agree with the NOIP’s opinion. There will even arise the right to have the opinion by other related third parties…
Thus, due to the specific nature of the field of IP, it would be necessary to have more in detail instructions on the further exercise of the rights to appeal, initiate lawsuits, etc. related to the procedure for invalidation of protection titles in order to avoid leading to inconsistent interpretations and applications.
Ms. Tran Thanh Binh