Filing an opposition against a trademark application in Vietnam involves a specific process governed by the Intellectual Property Law of Vietnam, overseen by the Intellectual Property Office of Vietnam (IP Vietnam). Vietnam operates under a "first-to-file" system, meaning trademark rights are generally granted to the earliest applicant, but opposition proceedings allow third parties to challenge a pending trademark application. Below is a step-by-step guide to filing an opposition:

1. Understand the Timing

• Under Vietnam’s amended IP Law (effective January 1, 2023), an opposition must be filed within 5 months from the publication date of the trademark application on the IP Gazette. This is a stricter deadline compared to the previous system, where oppositions could be filed anytime before the registration decision.
• After the deadline of 5 months, any third party can file an opinion of objection against the pending trademark application. The opinion of objection will be considered as a source of information for the examination but the IP Office will not issue the decision on the opinion objection like the opposition. 

2. Determine Your Grounds for Opposition

• You need valid legal grounds to oppose the trademark. Common grounds include:
  • Similarity or Identicality: The applied-for mark is identical or confusingly similar to your prior registered or unregistered trademark, trade name, or well-known mark 
  
  
  • Bad Faith: The application was filed in bad faith, such as to exploit your mark’s reputation.
  
  
  • Non-Distinctiveness: The mark lacks distinctiveness or is descriptive without acquired secondary meaning.
  
  
  • Geographical Indication Conflicts: The mark infringes on a protected geographical indication.
  
   
• Anyone can file an opposition; you don’t need to prove a direct legal interest, though having a legitimate stake (e.g., ownership of a similar mark) strengthens your case.

 

3. Required Documents

• Written Opposition Request: This must be in Vietnamese and include:
  • The trademark application number and details you’re opposing (e.g., mark, goods/services, applicant’s name).
  
  
  • Your identity (name, address, contact details).
  
  
  • Clear legal grounds for the opposition.
  
  
  • Supporting evidence (e.g., registration certificates, or evidence of the applicant’s bad faith, proof of your prior mark’s use to prove the well-known status such as sales records, marketing materials, or website screenshots) 


• Power of Attorney (POA): If you’re a foreign entity or individual, you must appoint a local IP agent registered with IP Vietnam to file on your behalf. A copy of the POA can be submitted initially, but the original must follow within a reasonable timeframe (often 1-2 months).


• Fee: The official fee is approximately VND 550,000 (around USD 22) per trademark per class of goods/services.

4. Opposition Procedure

• Notification: IP Vietnam notifies the trademark applicant of your opposition, typically giving them 1 month (extendable by another month) to submit a counterstatement.


• Exchange of Arguments: If the applicant responds, IP Vietnam will share their response with you, allowing 1 month for your reply. This back-and-forth may continue if additional clarification is needed.


• Examination: IP Vietnam reviews the opposition alongside the substantive examination of the trademark application. They may:
  • Accept your opposition and refuse the application.
  
  
  • Reject your opposition and proceed with registration (if the applicant’s defense holds). 


• Decision: IP Vietnam issues a conclusion as part of the trademark examination process. Unlike some jurisdictions, there’s no separate "opposition decision"—the outcome is reflected in the final decision on the trademark application.


• Timeline: The process can take several months to over a year, depending on complexity and backlog at IP Vietnam.

5. Post-Filing Options

• No Direct Appeal: If your opposition fails, IP Vietnam’s decision is final within the opposition phase. However, if the trademark is registered, you can file a cancellation action later (e.g., within 5 years for registrability issues or anytime for bad-faith claims).


• Negotiation: You may negotiate with the applicant during the process (e.g., for coexistence agreements), though IP Vietnam doesn’t mediate this directly.

Practical Tips

• Hire a Local IP Agent: Foreigners must use a registered agent, and even locals benefit from expert assistance due to the complexity of Vietnamese IP law.


• Act Quickly: The 5-month window is firm, so monitor the Industrial Property Official Gazette for relevant applications.


• Strong Local Evidence: Prior use or registration in Vietnam carries more weight than foreign use, though international recognition may help in bad-faith cases.

By following these steps, you can effectively challenge a trademark application in Vietnam. For tailored advice, consult a local IP professional familiar with current practices at IP Vietnam.

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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