When can a trademark registration be terminated in Vietnam? Learn about five-year non-use, surrender, non-renewal, required evidence, filing procedures, and practical strategies before the Intellectual Property Office of Vietnam (IP Vietnam).
When can a trademark registration be terminated in Vietnam? Learn about five-year non-use, surrender, non-renewal, required evidence, filing procedures, and practical strategies before the Intellectual Property Office of Vietnam (IP Vietnam).
A Trademark Registration Certificate is the principal legal instrument establishing the registered owner’s exclusive rights to a trademark in Vietnam. However, trademark rights do not automatically remain effective indefinitely. Apart from expiry due to non-renewal, a trademark registration may be terminated, in whole or in part, when certain statutory grounds arise.
In practice, termination of a trademark registration is also an important legal mechanism for removing earlier registrations that are no longer genuinely used, particularly where an existing registration is cited against a new trademark application or otherwise prevents a business from commercially using or protecting its brand in Vietnam.
Under Vietnamese intellectual property law, a Trademark Registration Certificate is valid from the date of grant until the end of 10 years from the filing date. It may be renewed for consecutive 10-year periods without limitation on the number of renewals.
Accordingly, trademark protection can potentially continue indefinitely, provided that the owner duly renews the registration and complies with the applicable legal requirements.
Nevertheless, even during a valid registration period, the protection may be terminated in whole or in part if statutory grounds for termination arise.
It is important to distinguish termination of validity from invalidation of a trademark registration. Termination generally concerns circumstances arising during the lifetime of an established trademark right, such as prolonged non-use. Invalidation, by contrast, generally concerns defects existing at the time the right was established, such as failure to satisfy the conditions for protection or lack of entitlement to file the application.
Under Article 95 of the Vietnamese Law on Intellectual Property, a Trademark Registration Certificate may cease to have effect in circumstances prescribed by law.
Depending on the applicable ground, termination may occur at the request of the trademark owner or upon a request filed by an eligible third party.
A Vietnamese trademark registration is protected in 10-year periods. To maintain the registration beyond the current term, the owner must complete the renewal procedure within the prescribed period.
If the registration expires and is not renewed within the statutory period, its validity will terminate from the expiration date.
Businesses managing multiple trademark portfolios should therefore maintain an effective docketing and renewal system rather than reviewing registration status only when a dispute or commercial transaction arises.
A trademark owner may voluntarily surrender its industrial property rights in a registered trademark.
The surrender must be made in accordance with the prescribed procedure and recorded by the competent authority.
Voluntary surrender may be appropriate where a business has discontinued a brand, reorganized its trademark portfolio or determined that maintaining a particular registration is no longer commercially necessary.
A registration may be terminated where the trademark owner no longer exists, or no longer conducts business, and there is no lawful successor to the trademark rights.
For this reason, intellectual property assets should be carefully reviewed and transferred when a company undergoes a merger, consolidation, restructuring, conversion, dissolution or other corporate reorganization.
Failure to properly address trademark ownership during corporate restructuring may result in unnecessary legal risks and difficulties in maintaining or enforcing the registration.
This is one of the most commercially significant grounds for terminating a trademark registration in Vietnam.
A registered trademark may be subject to termination if it has not been used by the owner or by a person authorized by the owner for five consecutive years preceding the date on which the termination request is filed, without a legitimate reason for such non-use.
An exception may apply where use of the trademark commenced or resumed at least three months before the filing date of the termination request.
Vietnamese law also contains safeguards addressing circumstances where use is commenced or resumed only after the trademark owner becomes aware that a third party is preparing to seek termination. Accordingly, both the timing and circumstances surrounding resumed use should be carefully examined in a non-use cancellation strategy.
The owner of a collective mark is responsible for controlling its use in accordance with the registered regulations governing the use of the mark.
Where the owner fails to exercise such control, or exercises ineffective control over compliance with those regulations, the registration may become subject to termination.
Certification marks are subject to specific obligations because their function is to certify certain characteristics of goods or services rather than merely identify their commercial origin.
A certification mark registration may therefore be terminated where its owner violates the regulations governing use of the mark or fails to effectively control compliance with those regulations.
A registered trademark may also be subject to termination where its use by the owner or an authorized user causes consumers to be misled as to the nature, quality or geographical origin of the relevant goods or services.
Trademark ownership does not permit a registered mark to be used in a manner that materially distorts consumers' understanding of the products or services offered under that mark.
A successful trademark can, in certain circumstances, become so widely used that consumers begin treating it as the common name of the relevant product or service rather than as an indication of commercial origin.
Where a registered trademark becomes the generic name of the goods or services for which it is registered, its registration may be subject to termination.
Trademark owners should therefore actively manage how their marks are used in advertising, packaging, commercial communications and by third parties to reduce the risk of a distinctive trademark becoming a generic term.
Depending on the statutory ground, termination proceedings may be initiated by the registered owner or by another organization or individual entitled to request termination under Vietnamese law.
Third-party termination requests frequently arise where an earlier trademark registration is preventing another business from obtaining protection for its own trademark.
For example, a company may file a new trademark application in Vietnam and receive an objection because an earlier similar trademark has already been registered. Subsequent investigation may indicate that the cited trademark has not been commercially used for several years.
Where the statutory requirements are satisfied, the applicant may consider filing a non-use termination action against the cited trademark registration.
However, the mere fact that a trademark cannot easily be found in the marketplace or through an Internet search does not necessarily establish legal non-use. A proper assessment normally requires investigation and the preparation of a coherent evidentiary record.
Yes. Termination does not necessarily affect the entire registration.
Depending on the legal ground and the goods or services concerned, a Trademark Registration Certificate may be terminated in whole or in part.
This issue is particularly important in non-use proceedings where a trademark is registered for a broad range of goods or services but has only been genuinely used for some of them.
Before filing a termination request, the requesting party should therefore carefully determine:
Defining the appropriate scope from the outset can help avoid an unnecessarily broad request and strengthen the overall legal position.
Depending on the circumstances of the case, a termination request generally includes:
For proceedings based on five consecutive years of non-use, the quality of the evidence and the legal presentation of that evidence can have a significant impact on the outcome.
The first step is to review the legal status of the registration, the registered owner, the designated goods and services, and the proposed ground for termination.
Where non-use is relied upon, a trademark use investigation should generally be conducted before proceedings are initiated.
The request should clearly identify:
the registration to be terminated, the applicable statutory ground, the factual circumstances supporting that ground, and whether termination is requested for all or only part of the registered goods or services.
Merely citing a provision of law without establishing the relevant facts is unlikely to provide a sufficiently persuasive basis for termination.
The request is filed with the Intellectual Property Office of Vietnam (IP Vietnam) for examination in accordance with the applicable procedures.
Where a third party files the request, IP Vietnam may notify the trademark owner and invite the owner to submit observations and supporting documents.
In contested proceedings, particularly non-use cases, the trademark owner may submit evidence showing that the mark has been used or may establish legitimate reasons for non-use.
The requesting party may then need to review and challenge such evidence.
As a result, termination proceedings can develop into a substantive dispute involving legal arguments, evidence of commercial use, the relevant period of use and the scope of goods or services for which use has been established.
After considering the request, supporting evidence and submissions of the parties, IP Vietnam may:
The resulting decision is subsequently recorded and published in accordance with the applicable regulations.
The processing time depends on the legal ground, the party initiating the request, and whether the proceedings involve objections or exchanges of evidence between the parties.
Where the trademark owner voluntarily requests termination, the procedure is generally more straightforward.
A third-party termination proceeding may involve notification to the trademark owner, a period for submitting observations, examination of evidence, and consideration of competing arguments. Consequently, actual processing times may be longer in complex or contested cases.
Businesses should therefore consider the expected duration of termination proceedings when coordinating them with a new trademark application, product launch, enforcement action or broader brand protection strategy.
Evidence is often the most challenging aspect of a non-use termination action.
Conceptually, the requesting party is seeking to establish a negative fact: that the trademark was not used during the relevant statutory period. There is rarely a single document capable of conclusively proving non-use.
A persuasive case may therefore need to be constructed from multiple sources, including market investigations, information concerning the owner's commercial activities, corporate websites, e-commerce platforms, distribution channels, advertising records, retail availability and other publicly accessible information.
Conversely, a trademark owner seeking to defend its registration should systematically retain evidence of genuine trademark use, including contracts, invoices, sales records, product packaging, catalogues, advertisements, website records and other documents capable of establishing when, where, by whom and for which goods or services the trademark was used.
A termination action may be particularly relevant where:
However, a termination request should not normally be filed solely because no use can be found through a basic online search.
An effective strategy should consider the legal status of the cited registration, the available evidence, the relationship between the respective marks, the prospects of registration for the requesting party's trademark, and the likely response of the registered owner.
Obtaining a Trademark Registration Certificate should not be treated as the final step in trademark protection.
To maintain enforceable and commercially valuable rights, trademark owners should:
Effective trademark management therefore extends throughout the entire lifecycle of a brand.
Identifying a statutory ground for termination is only the beginning. In contested trademark matters, the outcome can depend significantly on the evidentiary strategy, scope of the request and quality of the legal arguments presented before IP Vietnam.
A.D.V.N assists Vietnamese and international clients with matters including:
Where a trademark owner is facing a third-party termination action, A.D.V.N can also assist in reviewing evidence of use, preparing counterarguments and developing a strategy to preserve the validity of the registration.
A trademark may be subject to termination where it has not been used by the owner or an authorized person for five consecutive years preceding the filing date of the termination request, without a legitimate reason, subject to the statutory exceptions under Vietnamese intellectual property law.
Potentially, yes. A Trademark Registration Certificate is initially valid until the end of 10 years from its filing date and may be renewed for successive 10-year periods without limitation.
However, continued registration remains subject to compliance with the applicable legal requirements, including the rules concerning use of the trademark.
Yes. Depending on the circumstances, termination may apply to the entire registration or only to certain registered goods or services.
Partial termination is particularly relevant where use has been established for some goods or services but not for others.
Generally, no. Online search results are only one potential source of evidence.
A non-use assessment should normally consider the overall commercial circumstances and multiple sources of information covering the relevant five-year period.
There is no single strategy suitable for every case.
Depending on the circumstances, a business may consider filing the new trademark application first, initiating termination proceedings first, pursuing both procedures in parallel, or adopting another approach.
A preliminary assessment of the cited registration and the available evidence can help determine the most commercially effective strategy.
If you are seeking professional assistance with:
- Patent registration;
- Utility solution protection;
- Industrial design registration;
- Trademark registration;
- Intellectual property strategy and enforcement,
please contact:
Hotlines: 0903.693.301 - 0903.641.946
A.D.V.N Law Firm
Website: https://advnlaw.vn
A Dong Intellectual Property Consulting Company Limited (A Dong IP)
Website: https://a-dong.com.vn
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