You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

July 5, 2022

How Vietnam’s Amended IP Law Will Impact Trademarks

Subscribe to Updates

The recently approved comprehensive revisions to Vietnam’s Law on Intellectual Property (“Amended IP Law”) mark the most significant changes to Vietnam’s intellectual property regime since the last time the IP Law was revised more than a decade ago, in 2009, affecting 80 out of 222 articles and introducing 12 new ones.

The National Assembly of Vietnam approved the Amended IP Law on June 16, 2022, and, except for a few provisions, it will take effect on January 1, 2023.

Some notable points of the revised law regarding trademark matters include:

1. Protection of Sound Marks

To fulfill Vietnam’s commitments as part of the CPTPP, the Amended IP Law adds sound marks to the list of signs eligible for protection as trademarks. However, to more easily examine these non-traditional marks, the law provides that sound marks must be able to be presented in graphical representations.

Article 73.7 was also supplemented to include a ground for refusal of sound marks that comprise “copies [in whole or part] of copyrighted works, unless with consent from the copyright holders”. This provision is wide-reaching and may be used in many cases apart from those involving sound marks, and it is expected to better secure copyright in broad terms.

2. Definition of Well-Known Mark

Article 4.20 modifies the definition of a well-known mark to mean one that is “widely known by the relevant sectors of the public in the territory of Vietnam” instead of the old general definition of “widely known by consumers throughout the territory of Vietnam”. This new definition is in line with international standards, and with this positive step, and the chances of trademark owners having their marks recognized as well-known marks in Vietnam should increase.

The Amended IP Law also clarifies that well-known status must be acquired before the filing date of a later trademark to serve as grounds for refusal of such later mark. Furthermore, the Amended IP Law confirms that the recognition of a trademark as well-known might be determined based on either several or all of the eight criteria indicated in Article 75.

3. Reduction of Time Limit for Expired Mark to Be Used to Refuse Later Marks

Given the shorter life cycles of products nowadays, and to make Vietnam’s regulations more compatible with the laws and practices of other jurisdictions, the time limit for an expired mark to be used to prevent a later-filed trademark from being protected has been shortened to three years (instead of five years under the previous provision).

4. Stay of Trademark Prosecution Pending Cancellation or Invalidation Proceedings

In the past, due to the lack of regulations, trademark applicants often faced a dilemma when the prosecution of a trademark was not compatible with the cancellation or invalidation proceedings against cited marks. However, under the Amended IP Law, applicants are entitled to request Vietnam’s IP Office to halt trademark examination procedures of their marks to wait for the outcome of the related non-use cancellation or invalidation proceedings. This is a small step that may have a major impact on one’s trademark destiny.

5. “Bad Faith” Officially Available as Ground for Opposition and Invalidation

The lack of bad-faith grounds has long been a huge difficulty for trademark holders, especially for those without trademark registration in Vietnam, to fight against trademark squatters. For the first time, the Amended IP Law recognizes the act of “bad faith” as an independent legal ground to oppose and invalidate a trademark application or registration.

6. New Grounds to Refuse Pending Trademark and Termination/Invalidation of Registered Marks

Refusal

The Amended IP Law adds two more grounds to refuse pending applications: (i) the use of the name of a plant variety that has been or is being protected in Vietnam if such sign is registered for goods that are a plant variety of the same or similar species or a product of the same species harvested from plant varieties; and (ii) the use of names and images of characters or figures in works covered by copyright protection of others that were widely known before the filing date of the application.

Termination

The Amended IP Law also adds two more grounds for termination of the validity of a registered trademark: (i) such registered trademark has become the common (generic) name of goods or services bearing that registered trademark; and (ii) the use of a protected trademark by the owner of the trademark or by a person authorized by the owner misleads consumers as to the nature, quality, or geographical origin of the goods or services. This amendment reflects Vietnam’s commitments under the EVFTA.

Invalidation

There are two new legal grounds for invalidating a registered trademark in the Amended IP Law: (i) a registered trademark may be partly or entirely cancelled if the applicant for that trademark is ruled to have bad faith; and (ii) the revision or modification of a trademark application has broadened or changed the nature of the originally filed trademark.

7. More Detailed Reasons to Refuse Three-Dimensional Trademarks

The Amended IP Law provides additional grounds and clarifies the grounds for refusal of three-dimensional trademarks:

  • The three-dimensional mark is the generic shape of the goods.
  • The three-dimensional mark is merely a representation of necessary technical (functional) characteristics of the goods.
  • The three-dimensional mark substantially increases the value of the goods.

While the first two grounds are common and clear, the third ground is quite new and vague, and further guidance on how to interpret and apply this provision is needed.

8. Parallel Procedures of Trademark Opposition and Third-Party Opinions

The Amended IP Law introduces a new mechanism allowing a third party to oppose a trademark application, in addition to the long-available mechanism for third parties to share written opinions during the examination procedures, which remains unchanged. It is worth noting that a third party’s written opinion only serves as a reference source for examining a trademark application, and can be filed at any time from the publication date of the mark in question until prior to the date of decision on grant of protection title of such mark. Meanwhile, opposition is an independent scheme that allows any third party to file an opposition against a trademark application within five months from the publication date of the trademark application.

Comments

Although there are still some unclear provisions, in general, the Amended IP Law is a progressive step that makes trademark prosecution easier, secures rights in a better way, and moves Vietnam closer to the world’s treaties and common practices.

Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 28, 2026
When considering a franchise, many people first think of a restaurant, retail chain, or service outlet. From a legal perspective, however, the foundation of every franchise lies in the right to use a brand, which is typically granted through a trademark license. Trademarks are often the most valuable assets in a franchise system. Through a trademark license, a franchisor authorizes a franchisee to use its trademarks, logos, and branding while maintaining control over how the brand is presented to customers. The Role of Trademarks in Franchise Businesses Under the Trademark Law 2019, a mark is defined as a sign that is capable of distinguishing the goods or services of one undertaking from those of others in the course of trade. This distinguishing function is particularly important in a franchise arrangement, where the franchisee’s use of the franchisor’s trademark allows consumers to recognize the source, quality, and reputation of the business. In this way, trademarks help preserve brand identity, strengthen market recognition, and protect the commercial value of the franchise system. Legal Foundation for Franchise Brand Protection Myanmar presently does not have a specific statutory framework governing franchise arrangements. As a result, franchise agreements are generally regulated under the broader applicable legal framework, including the Contract Act 1872, the Trademark Law 2019, the Competition Law 2015, the Consumer Protection Law 2019, and the relevant implementing rules and regulations. The licensing of trademarks within a franchise arrangement is particularly governed by the Trademark Law 2019. Franchisors should ensure that the trademarks intended to be licensed to franchisees in Myanmar are registered under the Trademark Law 2019 and that the relevant trademark license is properly recorded with the Intellectual Property Department (IPD). Trademark License Recordal Under the Trademark Law 2019, the owner of a registered trademark may grant a license to another
Read More
August 27, 2026
It is generally understood that patents are granted for new designs that have not been widely known or used in Thailand and not been disclosed anywhere prior to the date of the patent application. It is trite law that design law protects the distinctive appearance or products. Under Section 3 of the Thai Patent Act B.E. 2522, as amended by the Patent Act (No. 2) B.E. 2535 and the Patent Act (No. 3) B.E. 2542, a design is defined as “any form or composition of lines or colors that gives a product a special appearance and can serve as a pattern for an industrial or handicraft product.” This raises an important question. Can a patent be issued for a product design that contains text, numerals, trademarks, or symbols that do not fall under the definition of a design? This issue commonly arises when attempting to register packaging, labels, and graphical user interfaces (GUIs). Until a few years ago, applicants could file design applications with the Thai Patent Office for designs that contained such elements, provided that an appropriate disclaimer was included. This practice was generally accepted by Thai design examiners at that time, but the Patent Office has since implemented a change in its practice that could have a significant impact on applicants for design patents. Where design representations are submitted as line drawings or computer-aided design (CAD) drawings, the examiner may now issue an office action requiring their removal. This practice, however, appears to be applied inconsistently, as some examiners still exercise their own discretion in determining whether drawings containing these elements are acceptable. Below are examples of a GUI design, a CAD drawing design, and a photographic design representation that illustrates issues relating to the presence of nonallowable elements. GUI design For this GUI design, the submitted
Read More
August 27, 2026
Franchising in Thailand has matured into a sizeable commercial sector, but the rules governing franchisor–franchisee relationships remain scattered across general legislation rather than consolidated in a dedicated franchise statute. In this environment, the decisions of the Trade Competition Commission of Thailand (TCCT) have emerged as valuable practical guidance. Thailand follows a civil-law system in which judicial and administrative decisions do not create binding precedent; however, past rulings are nonetheless influential. This article examines the most instructive recent TCCT decisions and distills the practical compliance considerations for franchisors and franchisees operating in Thailand. Postcontract Changes: Justified or Unfair? A recurring issue is whether a franchisor may alter the terms of engagement after contract execution. The TCCT has established that midterm modifications are not inherently unfair; the determinative factors are whether there was a reasonable business justification, adequate advance notice, and a transparent process. In a 2023 coffee franchise matter, for instance, the TCCT declined to find a violation where a franchisor increased raw material prices, noting the increase had been communicated in advance and supported by demonstrable cost pressures. A bubble tea franchise matter reinforces this principle. The TCCT found that postcontract mandatory purchases of branded syrup and flavorings were justified, as the agreement reserved the franchisor’s right to modify product requirements, the materials were sold at or below market prices, and the branded ingredients possessed distinctive qualities deemed essential to franchise quality. The complaint was dismissed, with the additional requirements characterized as a legitimate measure to preserve brand consistency. Considered together, these decisions indicate that post‑contract modifications will be evaluated against three criteria: (1) whether there is a legitimate business rationale, (2) whether adequate advance notice was provided, and (3) whether franchisees were treated equitably throughout the transition. Discriminatory Treatment: Are Renewals and Information Equal? A 2024 automotive dealership
Read More
August 20, 2026
As part of its membership in Lex Mundi, Tilleke & Gibbins has released the latest edition of its Guide to Doing Business in Thailand, providing an overview of the legal, regulatory, and commercial considerations for companies establishing or expanding operations in Thailand. The 2026 edition offers practical insight into the country’s business environment, investment framework, and operational requirements. The guide covers a wide range of topics relevant to foreign and domestic investors, including: Investment incentives and promotion schemes Financial facilities and banking regulations Exchange controls and money transfers Import and export regulations Business structures and incorporation options Requirements for establishing a business Operational and compliance considerations Business cessation and insolvency procedures Employment and labor laws Taxation Immigration and visa requirements Prepared by Tilleke & Gibbins lawyers across multiple practice areas, the publication outlines key aspects of doing business in Thailand, including foreign investment restrictions, regulatory compliance obligations, corporate structures, employment requirements, and recent legal and economic developments affecting investors. The publication forms part of Lex Mundi’s Country Guides series, a global collection of jurisdiction-specific reference materials prepared by member firms around the world. Together, these guides help companies evaluate opportunities, compare regulatory environments, and plan international business activities across multiple markets. The full Guide to Doing Business in Thailand 2026 is available through the button below.
Read More