New Trends in Trademark Examination in Vietnam

The Vietnam Intellectual Property Office recently made a significant change in its approach to examining trademark applications. If an examiner finds that a new trademark application is identical or confusingly similar to a pending trademark, the Trademark Office will defer its examination decision until the prior trademark receives a final examination result.

This practice complies with Article 74 of Vietnam's Intellectual Property Law, which states that a prior trademark must be registered, widely used or well-known, and that a prior trademark cannot be a reason for rejecting a trademark application. However, this move has brought obvious inconvenience to applicants in reality.

Due to the obvious delay in trademark examination in Vietnam, the examination time for ordinary trademark applications usually takes 2-3 years, and complex trademark examinations take even longer. This period is much longer than the period stipulated by law, which has caused a lot of inconvenience to the actual operation of applicants.

Therefore, it is necessary and beneficial for applicants to know the examination results as early as possible, even if the prior trademark is still pending. This helps applicants to proactively formulate business strategies and take necessary actions to speed up the trademark registration process. The measures that applicants can take are as follows:

• Filing an objection request: If the applicant disagrees with the examination opinion issued by the Trademark Office, he/she may file an objection request and submit evidence for reference by the Trademark Office examiner.
• Pursue alternatives: If the applicant agrees with the Trademark Office’s conclusion that there is a likelihood of confusion between the marks, the applicant may pursue other options.
• Adjustment Application: If the cited mark affects only some of the applied goods/services, the applicant may delete those goods/services or file a division to obtain registration for the remaining goods/services quickly.
• Strategic planning: If there is no feasible solution, applicants can use official information to adjust their business strategy and avoid wasting time and resources on trademark registration.

In addition, postponing the substantive examination in order to wait for the examination result of the prior application may lead to a chain reaction of delays in many applications, such as application B waiting for the result of application A, and application C waiting for the result of application B. Therefore, it is recommended that applicants specifically cite the unregistered prior trademark when filing an application for trademark registration, so as to proactively and timely safeguard their legitimate rights and interests.

For applicants submitting multi-class trademark registrations, if obvious risks have been identified in a portion of them, it is recommended that the applicant file a separate registration to avoid delays in the entire class.