Defeating non-use claim with modified trade mark in Vietnam
A registered trade mark in Vietnam which was a product label for instant noodles was subject to a request for cancellation for non-use.
Under Article 95 of the Vietnam’s Intellectual Property Law, a trade mark registration may be cancelled at the request of a third party if the mark has not been used by its owner or its licensee without justifiable reasons for five (5) consecutive years prior to the request for cancellation for non-use, except where use of the mark has commenced at least three (3) months before the request for cancellation for non-use.
In fact, the exact packaging design had not been used by the trade mark owner, but it was a slightly modified version of the said mark that had been used.
In defence, the owner of the mark filed evidence of use of the mark to prove that the currently used bears a minor modification of the mark as originally registered, with the following slight differences:
- The trade mark in use featured a different word element. In fact, the new word element was the abbreviation of the new trading name of the trade mark owner; and
- The trade mark in use contained some different figurative elements – including some images which were represented slightly differently from the registered mark.
In its decision, the National Office of Intellectual Property of Vietnam (NOIP) upheld the arguments of the trade mark owner that the slight modification of some minor descriptive elements did not alter the general impression and distinctive character of the mark, and that its function of identifying the origin of goods had been maintained.
However, because the original word element did not appear in the trade mark in use, NOIP decided to partially cancel the registration with respect to the word element – a part of the mark.
The current Vietnam trade mark law has no provision explaining whether the use of a registered mark in a modified form will be sufficient to prove the use itself. Thus far, it has been generally understood that use of a trade mark must be in the form in which it was originally registered to be acceptable as trademark use. However, Vietnam is a member of the Paris Convention for the Protection of Industrial Property, which specifically stipulates (Article 5C(2) ) that use of a trade mark by the proprietor in a form differing in elements “which do not alter the distinctive character of the mark in the form in which it was registered” shall not entail invalidation of the registration and shall not diminish the protection granted to the mark. NOIP’s approach is in accordance with the Paris Convention.
- EU SMEs shall be aware that they have to use their registered trade marks in Vietnam otherwise their mark could be challenged for cancellation and they can lose their rights.
- SMEs shall know to which extent they can use the marks with minor modifications in respect to the registered trade mark is allowed.
- The remaining question is how far the mark in use can differ from the registered mark. Thus, it is always advisable for trade mark owners to consider registering modified versions of their registered trade marks or stick with the use of what they have registered.