Bad faith trademark filings are not uncommon in Vietnam. In fact, bad faith is often included under the label of “dishonesty basis” as a ground for opposition or cancellation of a trademark application/registration. Generally speaking, bad faith is deemed to occur when an applicant intentionally registers a trademark to benefit from the goodwill and reputation associated with the trademark of another owner. Some notable issues of bad faith trademark filings in Vietnam are discussed below.
Criteria for Determining Bad Faith
The criteria for determining bad faith are not specified in any relevant statutory provisions. However, the notion of bad faith trademark filings is shown in court rulings as well as in decisions of competent authorities like the National Office of Intellectual Property (NOIP) and the Ministry of Science and Technology (MOST). Typical examples of bad faith trademark filings in Vietnam include:
- An applicant files for registration of a trademark that is identical or confusingly similar to a well-known trademark with the intention of preventing the owner of such well-known trademark from entering the Vietnam market.
- An applicant files for registration of a well-known trademark with no intention of using it, but for the sole purpose of benefiting from the sale, licensing, or transfer of the registration to the rightful owner of the well-known trademark.
- An applicant simply wishes to profit from the reputation of a well-known trademark.
Many of the criteria for determining bad faith which are recognized as best practices in the INTA Resolution on Bad Faith are not yet recognized in Vietnam. For example, the warehousing of trademarks and related domain names, or the copying of very striking or unique logos or trade dress is often not considered bad faith.
Strategies to Address Bad Faith Applications
In Vietnam, proving the applicant’s knowledge of the pre-existence of a trademark is crucial in showing bad faith. However, in practice, proof of such prior knowledge can be very difficult to obtain if the applicant keeps denying any knowledge of the prior trademark, or the trademark applied for in bad faith is confusingly similar but not identical to the prior trademark. Therefore, the best strategy is to obtain incontestable proof showing prior knowledge, which is a document evidencing that there was once a business relationship/cooperation experience between the applicant and the rights holder, such as a contract signed between the two parties, payment vouchers, etc.
In addition to citing evidence of prior knowledge, rights holders can also focus on the lack of intent to use the mark to strengthen bad faith arguments. In other words, rights holders can prove that the applicant is requesting trademark protection for certain goods/services but, in practice, as well as in terms of long-term business strategy, the applicant does not manufacture or trade in such goods/services. This helps show that the applicant might be registering the mark just to disrupt the rights holder’s business activities, to prevent the rights holder from acquiring its trademark rights, or to sell, license, or otherwise transfer the mark to the rights holder.
Specifically, evidence showing the applicant’s lack of intent to use the mark might include:
- Applicant’s lack of documentary or other objective evidence that it can/will use the mark;
- Applicant’s lack of capacity or experience needed to manufacture or trade in the goods/services bearing the mark;
- No licensing of the mark;
- Failure to take any concrete actions or to develop any concrete plans for use;
- Applicant’s pattern of filing for marks which were then not put into use.
Where appropriate, rights holders may also consider mentioning multiple filings by the applicant if the applicant has a history of filing for marks that are similar to other well-known trademarks.
Tips for Rights Holders
Trademark owners can take steps to discourage the practice of bad faith trademark filings:
Filing for trademark registration: Vietnam adopts the first-to-file principle, which grants exclusive trademark rights to the first party that applies for registration of the mark. Therefore, filing for trademark registration in Vietnam as soon as possible will help rights holders prevent bad faith trademark applications from maturing to registrations. Further, the cost for registering a trademark is much lower than the cost to pursue an opposition or cancellation against a confusingly similar or identical mark applied for in bad faith.
Keeping a close watch on the IP Gazette: After passing the formality examination, a trademark application is published in the monthly IP Gazette issued by the NOIP. Keeping a close watch on the IP Gazette will help rights holders detect any mark that might be applied for in bad faith. Rights holders could then file an opposition against such mark before it matures into registration. Once the mark has been registered, rights holders have no choice but to file for cancellation of the mark applied for in bad faith. In practice, pursuing a cancellation case is much more expensive and time-consuming than an opposition case, and the chance of success is very low.