Practice of examining trademark applications that are rejected by prior pending trademark applications

The Intellectual Property Office of Vietnam (the Vietnam IP Office) has recently made a significant change in the practice of examining trademark applications. If an examiner finds that a new trademark application is identical or confusingly similar to a pending one, the Office will delay its examination decision until the earlier mark receives a final examination result.

In the past, even if the earlier mark had not been registered, it would still be cited in the examination result of subsequent applications.

The new practice complies with Vietnamese IP Law because a pending trademark cannot be the ground for rejecting trademark applications under Article 74, which stipulates that prior trademark must be registered, in widely used or well-known.

However, this practice causes additional disadvantages for applicants in reality.

It should be noted that the current trademark examination time frame in Vietnam is significantly delayed, often taking 2-3 years for straightforward cases and even longer for more complex ones. This period is much longer than that required by law, already causing significant difficulties for applicants in their actual business operations.

In this context, early issuance of examination results, even when the earlier trademark is pending, is essential and beneficial for applicants. It helps them to be more proactive in their business strategies and to take necessary actions to expedite the registration process, specifically:

• Submitting Objections: If the applicant disagrees with the Office Action, they can submit a written objection with persuasive arguments and evidence for the Office to review and potentially grant a registration for the trademark.
• Pursuing Alternatives: If the applicant agrees with the Office’s conclusion on the likelihood of confusion between trademarks, they can pursue alternative options, such as acquiring the cited trademark and recording changes in ownership.
• Adjusting Applications: In cases where a cited application only affects part of the applied goods/services, the applicant can remove those goods/services or divide the application to promptly get the registration for the remaining goods/services.
• Strategic Planning: If no feasible options can be implemented, the applicant still has official information to proactively engage in their business strategies, avoiding wasted time and resources on developing a trademark without registrability.

Additionally, delaying the substantive examination to await the examination results of prior applications can lead to a chain reaction of delays for many applications, such as Application B awaiting the results of Application A and Application C awaiting the results of Application B.

Therefore, when the Office cannot meet the statutory examination time frame and serious delays persist, INVESTIP suggests maintaining the previous practice of substantive examination, specifically citing prior trademarks even when they have not been registered. This allows applicants to proactively protect their legitimate rights in a timely manner.

Furthermore, for applicants considering filing multiple-class trademark applications a part of which the search already identifies clear risks, we recommend submitting separate applications to avoid delays in one class from prolonging the registration time frame of the entire application.

For clients filing multiple-class applications with INVESTIP, we will closely monitor your applications and proactively propose necessary processing solutions to minimize negative impacts from the new practice mentioned above.

By Nguyen Thi Nhung

Trademark Department

INVESTIP – IP LAW FIRM