When the Intellectual Property Office of Vietnam (IP Vietnam) raises an objection to a trademark application, the applicant usually has an opportunity to respond. The response depends on the reason given.
For a business dealing with a trademark refusal in Vietnam, the first question is whether IP Vietnam is inviting a response or has already made a final decision. This determines the available procedure and deadline. The business also needs to consider whether the protection it can still obtain would cover its products or services.
The decision forms part of managing intellectual property in Vietnam. Foreign teams should allow time to prepare the response in Vietnamese and translate supporting documents where required. For filing procedures, use a qualified industrial property representation service organization in Vietnam (IP representative). Forward the full notice promptly so the IP representative has time to assess the objection and prepare the response.
Quick Reference
The current national procedure allows two months from the notice date to respond to a substantive refusal, which concerns whether the mark qualifies for protection. Some pending applications still follow an earlier three-month rule.
During examination, the response period can be extended once by the same length, on a written request filed before the deadline and payment of the prescribed fee. This does not extend the deadline for a complaint against a final refusal. If the notice appears inconsistent with the applicable rule, ask for clarification promptly and work to the earlier date while the issue is resolved.
The below options concern responses during examination, a final refusal, or a new filing or a change of brand. Depending on the objection, the business may use more than one option.
Trademark Refusal in Vietnam: 7 Response Options for Applicants
Correct Problems with the Filing Documents
A formal objection concerns the filing requirements. It may involve the applicant’s details, the power of attorney, the classification of goods and services, or missing documents. The IP representative should compare the notice with the application and identify exactly what needs to be corrected. These documents form part of the trademark registration in Vietnam process.
A straightforward correction usually needs less work than an argument about whether the mark qualifies for protection. However, an inconsistency in the applicant’s name may require a review of the ownership documents, rather than a simple change to a form. Head office should confirm who can approve the correction and provide any documents that the local team does not hold.
Explain Why the Mark Should be Accepted
When IP Vietnam cites an earlier trademark, the response should explain why the two marks can be distinguished. This requires a comparison of their appearance, sound and meaning, as well as the goods or services involved. The earlier mark’s filing date and current protection also need to be checked. Different class numbers alone do not establish that the goods are unrelated.
An objection that a mark is descriptive requires a different assessment. The response may explain why the wording does not describe the goods or services concerned. Where the law allows distinctiveness acquired through use, the applicant can instead provide evidence that customers already recognized the mark as identifying its goods or services before the filing date. Sales and advertising evidence must support that recognition in Vietnam. Overseas registration certificates alone do not establish it.
The response needs to address each reason given in the notice. Solving one objection will leave the application at risk if another remains unanswered. Collecting the evidence and arranging translations early also matters because a later complaint has limits on amendments and new facts.
Limit the Goods or Services or Divide the Application
An objection may affect only some of the goods or services in an application. Removing items that the business does not need can help resolve the problem. Before agreeing to a deletion, management should check the proposed wording against current products and planned activities. Removing an important product category could leave the eventual registration with little practical value for the business.
Another option is to divide the application before a grant or refusal decision. This separates selected goods or services into another application and can allow the part without an objection to proceed separately. A qualifying divided application keeps the original filing and priority dates, but has its own application number, fees and further work. The disputed part still needs a response.
Amendments must remain within the original scope and cannot change the nature of the mark. A substantially different mark generally requires a new application. The IP representative should explain both the protection retained and the total cost before the business approves an amendment or division.
Consider an Agreement with the Earlier Owner
Where an earlier trademark is the main obstacle, an agreement with its owner may be worth considering. Before making contact, assess whether the business’s existing use could infringe that owner’s rights.
A consent letter can support an explanation of why the marks can coexist, but IP Vietnam must still assess the risk of confusion. Where the marks and goods are identical, relying on consent alone is a weak approach. Where there are meaningful differences, the response should explain them. Obtain advice on how consent is being treated in comparable applications before paying for it.
Any agreement should deal with use of the mark as well as registration, including the products and sales channels it covers. A license gives permission to use a mark within agreed terms. An assignment transfers ownership and must be recorded under the applicable procedure. Before signing, a contract review should confirm who can bind each party, when payments are due and what happens if registration is still refused. Negotiations may continue beyond the response deadline, so the response to IP Vietnam and any extension request still need to be prepared on time.
Challenge the Earlier Registration
The earlier registration may itself be open to challenge. Invalidation concerns whether protection should have been granted in the first place. Termination concerns later events, including qualifying non-use. The choice depends on the legal ground and the evidence available.
For non-use termination, the mark must have gone unused by the owner or an authorized person for five consecutive years before the request, without a justifiable reason. The law also protects the registration where use began or resumed at least three months before the request. An inactive website alone is not enough to establish non-use. Ending the registration requires a procedure and a decision.
For the specified earlier-mark grounds, the law allows the applicant to request suspension of examination while a termination or invalidation challenge is decided. The refusal response should identify the challenged registration, provide the filing details and include the request for suspension. Examination continues after the challenge is resolved. The IP representative should confirm that examination has been suspended and explain which deadlines remain applicable.
Expiry or termination of an earlier registration does not always clear the way immediately. It can remain an obstacle to a conflicting application for up to three years after protection ends, subject to the specified non-use exception. This does not give the former owner three extra years of exclusive rights. Other earlier rights and objections still need to be checked.
Challenging a registration adds another proceeding, with its own evidence, cost and uncertain completion date. If the business needs to launch before that dispute is likely to finish, it should also consider whether another brand would meet its needs.
Challenge a Final Refusal Decision
A final refusal requires a different procedure from a notice inviting a response. Depending on the legal conditions, the applicant can make an administrative complaint or bring an administrative court action. The complaint should explain why the decision is wrong and what correction is sought.
The ordinary first-complaint deadline is 90 days from receipt or knowledge of the decision, subject to statutory exceptions. A direct court action ordinarily has a one-year period from receipt or knowledge. If a lawful complaint is made first, the court period has different starting points linked to the complaint decision or the expiry of the prescribed handling period. Have both deadlines calculated before deciding how to proceed.
For a trademark refusal, the first complaint goes to the Director General of IP Vietnam. A second complaint has its own deadline and goes to the Minister of Science and Technology. Foreign organizations without a production or business establishment in Vietnam, and non-resident foreign individuals, must act through an IP representative for the IP complaint. Court representation follows separate rules.
A complaint is subject to limits on amendments and new facts, so it cannot be treated as a chance to redesign the application. Some evidence-gathering and re-examination periods are also excluded from the complaint-handling timetable. The business should obtain an estimate for the work and likely timing of each stage before committing to further proceedings.
File a New Application or Change the Brand
A new application may be the more practical choice when the objection is difficult to overcome or the remaining protection would exclude the business’s main products. This decision should compare the likely cost and delay of continuing with the cost of a brand change. Packaging, domains, product approvals and distributor materials may all need updating. Review delivery promises and brand-related obligations in distributor and customer agreements before agreeing to a new launch date. If the change leads to contract disputes in Vietnam, assess those obligations alongside the trademark response.
A replacement application generally receives a new filing date. Before filing, address the original problem and update the trademark search in Vietnam. Filing the same mark again without resolving the objection is unlikely to improve the result.
The business can prepare a replacement while continuing a response that has reasonable support. Withdrawing the original application needs a separate decision, because withdrawal cannot simply be reversed under the ordinary national procedure. Any remaining priority entitlement should also be checked before closing the original file.
Madrid Provisional Refusals
For an international registration designating Vietnam under the Madrid System, IP Vietnam sends a provisional refusal through WIPO. The response period is three months from the date IP Vietnam sends the notification. The date it reaches head office does not start a new period. Check the actual notification for the sending date and response instructions.
An overseas holder subject to Vietnam’s representation requirement needs an IP representative in Vietnam to respond to IP Vietnam. Appointing someone to handle WIPO correspondence alone may not meet that requirement. The IP representative will need the full notification and application details to prepare the response.
Preparing and Filing the Response
1. Send the IP representative the complete notice, application and earlier submissions so the correct deadline and any available extension can be confirmed.
2. Agree on the response after reviewing the objection, the evidence needed and the goods or services the business wants to retain. Allow time for Vietnamese drafting and required translations.
3. Approve the proposed wording and budget. Any negotiation or challenge to an earlier registration should have its own agreed scope of work.
4. Obtain confirmation that the response and any required procedural requests have been filed. Keep the submission and filing receipt; internal approval alone does not meet the deadline.
5. Review the next communication from IP Vietnam with the IP representative. A favorable result may require grant payments, while a final refusal requires a decision about further proceedings.
Frequently Asked Questions About Trademark Refusal in Vietnam
Q1: How long do I have to respond to a trademark refusal?
The current national procedure allows two months from the notice date. Some older applications retain a three-month period, so confirm which rule applies before calculating the deadline. Formal filing defects generally allow two months from the notice date. For a Madrid provisional refusal, the period is three months from IP Vietnam sending the notification.
Q2: Can the business keep using the mark while responding?
A refusal alone does not require the business to stop using the mark. However, the earlier rights identified in the refusal may create an infringement risk. Assess actual use before approving further sales or packaging expenditure. A pending response gives no protection against an earlier owner’s claim.
Q3: How long does IP Vietnam take after a response?
For national applications governed by the current procedure, the rules provide 50 days from receipt of the substantive response for the specified examination action. This is not a promised registration date and should not be applied to older files, suspended applications or complaints. Grant steps or further disputes can add time, so planning should use a current estimate for the particular application.
Conclusion
A useful response begins with the reason for refusal and the protection the business needs. Once these are clear, management can compare the available options and approve the work within the correct deadline. For assistance from the IP Representatives, provide the full notice, application details and information about the products or services the business plans to offer.
About the Author
Tuan Nguyen is the Managing Partner and founder of ANT Lawyers, with more than 20 years of experience across legal practice, management and compliance. He advises foreign companies, investors and manufacturers on corporate, commercial, international trade, regulatory and dispute-related matters in Vietnam. He holds an LLB from Hanoi National University School of Law and an MBA from Warwick Business School, and is an Associate Member of the Chartered Institute of Arbitrators.
About ANT Lawyers, a Law Firm in Vietnam
Founded in 2012, ANT Lawyers is a Vietnam law firm with offices in Hanoi, Ho Chi Minh City and Da Nang. Our intellectual property lawyers advise on trademark filing and opposition, enforcement and licensing in Vietnam. We combine legal analysis with practical understanding of Vietnam’s regulatory environment and local administrative practice.
General Disclaimer
This article is for general informational purposes only, does not constitute legal advice, and does not create a lawyer-client relationship. Vietnamese laws, regulations and administrative practice change over time, and the correct position for any matter depends on its specific facts and the rules in force when action is taken. Verify the current position before relying on anything stated here, and consult qualified counsel on your specific situation.
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You could learn more about ANT Lawyers IP Practice or contact our IP Attorneys for advice via email ant@antlawyers.vn or call our office at (+84) 24 730 86 529