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

June 29, 2017

Vietnam: Bad Faith Trademark Filings

Subscribe to Updates
Managing Intellectual Property

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.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

June 24, 2026
Patent enablement requirements are provided under Article 102 of Vietnam’s Law on Intellectual Property (IP Law). In particular, a patent specification must “fully and clearly disclose the nature of the invention to such an extent that, based on the specification, a person having ordinary skill in the relevant art can implement the invention.” In pharmaceutical and biotechnology patents, this requirement is more complicated and subject to more rigorous assessment. The Patent Examination Guidelines (Guidelines) of the Intellectual Property Office of Vietnam (IP Office) were amended in March 2026 to introduce Annexes III and IV for the pharmaceutical and biotechnology sectors, in which Annex III provides detailed guidelines on the assessment of specification requirements. These amendments were made under a project for strengthening capacity in industrial property examination between the Japan International Cooperation Agency (JICA) and the IP Office. Annex III provides detailed instructions on how examiners assess enablement in a pharmaceutical or biotechnology application, and offers examples of acceptable and unacceptable descriptions with regard to the enablement aspect. Enablement Requirements in Pharma and Biotech Patents Article 12.7 of Circular 10/2026/TT-BKHCN (Circular 10) adds to the requirements of Article 102 of the IP Law that the description must demonstrate the novelty, inventive step, and industrial applicability of the technical solution. For pharmaceutical composition subject matters, Article 12.9 of Circular 10 sets out that the description must present the results of clinical trials and/or the pharmacological effects of the claimed pharmaceutical composition, and must include at least the following information: Substance/mixture used. Testing method (system) employed. Information on the test results. Correlation between the pharmacological effects obtained from the tests and the application of the pharmaceutical product in the prevention, diagnosis, and treatment of diseases. The Guidelines note that pharmacological study results should be presented in a quantified manner, and pharmacological
Read More
June 16, 2026
Since the implementation of the Trademark Law 2019 on April 1, 2023, Myanmar has operated under a modern first-to-file trademark system that brings its registration framework closer to international practice. As the new regime continues to develop in practice, applicants are increasingly required to navigate formal examination requirements, substantive objections, and procedural deadlines with greater precision. This article provides a high-level review of the trademark examination process in Myanmar, focusing on the principal stages from initial review to approval, the types of objections commonly raised by the Intellectual Property Department (IPD), and the key considerations for responding effectively. A clear understanding of these issues is essential for applicants seeking to secure registration efficiently and to mitigate avoidable delays or refusals. Examination Process: Key Stages Trademark applications filed with the IPD undergo two stages of review. Formality Examination The IPD first verifies compliance with procedural requirements, including: Correct Nice Classification Clear mark representation Accurate applicant details Clearly defined goods or services Representative details, if the application is filed by a representative Other formality requirements cover translation and transliteration of any non-English or non-Myanmar elements in the mark, color claim details, applicable disclaimers, and payment of official fees. Deficiencies result in an office action requiring correction within 30 days, which may be extended upon request. Registrability Examination The IPD also assesses registrability. A mark may be refused if it: Lacks distinctiveness Is descriptive or generic Misleads the public or violates public order/morality Contains prohibited state symbols Only compliant applications proceed to publication. Responding to Office Actions Applicants must respond within 30 days of notification from the IPD. Depending on the nature of the objection, strategies may include submitting legal arguments for distinctiveness, providing evidence of acquired distinctiveness, filing appropriate disclaimers, clarifying descriptions such as color claims, or amending the listed goods
Read More
June 15, 2026
The surge in AI development has led to a desperate demand for large, high-quality training data. However, real-world data can be expensive to collect, difficult to access, and often subject to strict privacy and regulatory constraints. Synthetic data, which consists of artificially generated records that replicate the statistical properties of real-world data without reproducing specific individuals’ information, provides an appealing solution by generating artificial datasets at scale without relying on identifiable personal information. It combines speed, cost efficiency, and regulatory compliance, making it a sensible alternative for organizations seeking to reduce risks while maintaining data utility. When properly anonymized, synthetic datasets may fall outside the scope of laws such as the EU’s General Data Protection Regulation (GDPR) or Thailand’s Personal Data Protection Act (PDPA), reducing compliance burdens while still supporting high-quality model training. However, relying on synthetic data without rigorous legal due diligence could be a strategic mistake. It replaces one set of known risks (scraping, direct privacy liability) with a new set of complex liabilities. The narrative that synthetic data is a “silver bullet” for privacy and IP compliance is dangerous and could be misleading. While synthetic data addresses data scarcity, it also introduces new legal uncertainties. Legal counsel should anticipate downstream risks arising from compromised data sources. Models trained on unlawfully obtained data may need to be decommissioned, even if their outputs appear lawful. What is synthetic data? Synthetic data refers to artificially generated information created using AI techniques such as deep learning and generative models. Instead of copying real records, it reproduces the statistical patterns and relationships found in the original dataset. Synthetic data generally falls into three categories: Fully synthetic data – Entirely new data points generated from learned patterns. The model studies the structure of the original data and produces records that resemble real-world
Read More
June 10, 2026
In March 2026, the Intellectual Property Office of Vietnam (IP Office) issued a decision refusing a trademark application after considering an opposition based primarily on copyright grounds. The outcome is noteworthy because the foreign brand owner had neither trademark registrations nor applications in Vietnam at the time the opposition was filed, and the IP Office has historically applied a stringent approach to oppositions relying on copyright. The Opposition Maurten is a well-known Swedish sports nutrition brand recognized globally for its innovative hydrogel technology, which is designed to help endurance athletes fuel more effectively without gastrointestinal discomfort. The brand’s distinctive logo is characterized by clean lines and a bold black-and-white color scheme, and has long been associated with the company’s performance products. The brand’s logo is displayed above. An identical mark was filed for registration by a Vietnamese trademark squatter. In 2023, a Vietnamese individual filed an application for registration of an identical mark (Application No. 4-2023-38668), a practice commonly observed in Vietnam as trademark squatting. The brand owner engaged Tilleke & Gibbins to assist with strategy and filing an opposition to the mark. At the time, Maurten had no trademark rights or meaningful use in Vietnam, and global marketing data showed only modest figures without any local presence. Thus, to convince the IP Office to refuse the squatter’s application, instead of relying on trademark rights or use evidence, the opposition strategy centered on the copyright protection of the logo itself, as copyright arises automatically in Vietnam upon creation of the work and does not require registration. (It is worth noting, however, that the IP Office has traditionally been cautious in accepting copyright as a basis for refusing trademark applications.) On September 24, 2024, an opposition was filed on three main grounds: confusing similarity, copyright infringement of the artistic work,
Read More