Responding to a notification of refusal issued by the Intellectual Property Office of Vietnam (IP Vietnam) for an international trademark application designating Vietnam (filed via the Madrid System) requires careful preparation and adherence to Vietnamese IP law and WIPO procedures. Below is a detailed guide on how to overcome the refusal:
1. Reason of refusal
There are some common reasons of refusal as below:
- Term of goods/services are too vague
- Devoid of distinctiveness
- Confusingly similar to the earlier mark
2. How to overcome the refusal
2.1. Term of goods/services are too vague
The applicant need to amend the international registration to clarify the vague goods/services into specific goods/services with the WIPO. Before recording the amendment of goods/services with the WIPO, the applicant can consult with a IP Agent in Vietnam on how to clarify the goods/services.
After recording the amendment with the WIPO, the applicant need to file a response to the notification of Vietnam IP Office to notify that the vague goods/services were amended.
2.2. Devoid of distinctiveness
The applicant need to file a response to the Vietnam IP Office and argue the mark’s distinctiveness, or clarify it’s not deceptive/descriptive. The applicant should provide the evidence of wide-use of the mark in Vietnam or over the world to prove that the mark has acquired distinctiveness through use. Registration Certificate of the mark in other countries are also useful.
2.3. Confusingly similar to the earlier mark
The applicant may choose the following options:
- Filing a response to the provisional refusal by arguing that the Applied Mark and cited mark are distinguishable. Letter of Consent from the owner of the cited mark will increase the chance of success.
- Taking non-use cancellation against the Cited Mark (if applicable).
- Entering into a trademark assignment agreement with the owner of the cited mark.
3. Deadline
Applicant have 3 months from the date Vietnam IP Office issues the refusal to respond. This deadline is reflected in the WIPO notification. Extensions may be requested (up to 3 additional months), fee required.
4. Requirement
- Appoint a Vietnam IP agent to response to the refusal as foreign applicants cannot act directly with the Vietnam IP Office.
- The response must be in Vietnamese and submitted to Vietnam IP Office (not WIPO directly).
- Amendments of goods/services must stay within the original scope of the international registration.
This process ensures compliance with Vietnamese law and maximizes your chances of overcoming the refusal. For precise execution, consult a local IP professional with your refusal notice in hand.
We have been recognized as an IP Agent by Vietnam IP Office. If you have any further question, please feel free to contact our email info@march.vn. Our experts are willing to help.
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