Vietnam’s Amended IP Law will take effect on New Year’s Day 2023, bringing some good news to trademark applicants. Under Article 117 of the amended Intellectual Property Law, trademark applicants in Vietnam will be able to request that examination of their applications be stayed by the National Office of Intellectual Property (NOIP), pending resolution of cancellation and invalidation proceedings against other trademarks, which could potentially impact the application. Similar amendments to China’s Trademark Law would be greatly welcomed.
Imagine that you want to register a trademark in Vietnam or China. While running a pre-application trademark clearance, your counsel finds that another party already registered the same mark seven years ago. However, available information suggests that the other party has not been using the mark. According to Vietnam’s Intellectual Property Law, a trademark owner has the obligation to use the mark continuously. If the mark has not been in use for a period exceeding five years, you can request that the registration be cancelled by NOIP. In China, the period stipulated by the Trademark Law is just three years.
The problem is that both NOIP and their counterparts at the China National Intellectual Property Administration (CNIPA) will usually make a decision on the trademark registration application before the outcome of the cancellation request is known. This requires you to file a new trademark registration application, at the risk of losing your place in line to another party.
Vietnam’s Amended IP Law solves this issue, by allowing you to ask NOIP to stay your application while the cancellation request runs its course. This will foil anyone trying to cut in line. By contrast, if your application is rejected in China, you will still need to deal with the time gap. And if you do not file a new application right away, another party may file its own application, and position itself to benefit from cancellation action that you filed and paid for!
Both trademark applicants and CNIPA would benefit if China took a page from Vietnam’s Amended IP Law. For applicants, availing themselves of the protections of the Trademark Law would no longer require stressfully dancing to the discordant beats of unconnected proceedings. At the same time, it would help reduce CNIPA’s caseload, with a considerable number of trademark applications no longer necessary. If CNIPA is concerned about the reduction in application fee revenues, then they can charge fees for the stays: Most applicants will gladly pay up.
Apart from hopefully providing inspiration to the neighbor to the north, Vietnam’s Amended IP Law is good news for those who want to register their marks in Vietnam. And if you are doing any kind of business in Vietnam, including sourcing products from the country, you need to register your trademark in Vietnam. And if you are sourcing products from a Chinese company with a Vietnam operation, you definitely need to register your trademark in Vietnam. That, and make sure that the products you are sourcing are not actually made-in-China goods being transshipped through Vietnamese ports.
