Entering the Vietnamese market requires securing your trademarks early. Vietnam is a first-to-file jurisdiction – priority generally goes to whoever files first, not whoever used first. This means foreign businesses should register their trademark in Vietnam as soon as possible to prevent local “squatting”. Unregistered signs – well-known marks, trade names, and commercial indications protected against unfair competition – are statutorily protectable in Vietnam. However, establishing such rights through evidence of actual use and reputation is demanding and often uncertain. Accordingly, unregistered brands face heightened misuse risk, so registration remains the most reliable path to protection and enforcement. Registering your trademark grants legal exclusivity, helps deter imitators, and enhances your brand’s value in Vietnam’s rapidly growing market.

This guide, prepared by KENFOX IP & Law Office, a qualified IP Firm in Vietnam, outlines the entire trademark application process in Vietnam, including available application routes, types of protection, eligibility criteria, step-by-step procedures, examination and appeal processes, official fees, and strategic considerations. It is tailored for foreign businesses (such as foreign enterprises entering Vietnam) and focuses on Vietnam’s current laws and practices.

I. Foundational Legal and Institutional Framework

1. Applicable IP Legislation and International Treaties (Trademarks)

Vietnam’s trademark regime is grounded in the Law on Intellectual Property (2005), as amended in 2009, 2019, and 2022 – with the 2022 amendments being the most far-reaching to date. The framework aligns with Vietnam’s international obligations as a WTO/TRIPS member and party to the Paris Convention. For cross-border filing and protection, Vietnam participates in the Madrid System for the International Registration of Marks (incoming designations to Vietnam and outgoing filings by Vietnamese applicants). Vietnam also implements trademark-relevant commitments under major trade agreements with robust IP chapters, notably CPTPP and the EU–Vietnam FTA (EVFTA) (as well as RCEP).

Implementing rules: Operational procedures and forms are set by sub-law instruments. The current keystone is Decree No. 65/2023/ND-CP (effective 23 Aug 2023), which implements the 2022 IP Law for industrial property (including trademarks) – covering examination, opposition, invalidation, enforcement coordination, and remedies. At the ministerial level, Circular No. 23/2023/TT-BKHCN (effective 30 Nov 2023) provides the procedural templates and workflows for establishing and protecting trademark rights (filing formats, priority/Paris claims, Madrid handling, oppositions, non-use cancellations, renewals, recordals, etc.).

2. The Role of the NOIP/IP VIETNAM and Mandatory Representation

The Intellectual Property Office of Vietnam (IP VIETNAM or IPVN, formerly NOIP) is the central authority under the Ministry of Science and Technology responsible for receiving, examining, and granting industrial property rights. The head office in Hanoi conducts substantive examination and issuance of titles. IPVN also operates representative offices in Ho Chi Minh City and Da Nang, which serve applicants in the southern and central regions by accepting filings (including PCT national phase), handling formalities and fee payments, processing recordals/renewals, and providing applicant liaison/services. Substantive examination remains centralized at headquarters.

Mandatory local representation: Foreign applicants – i.e., individuals without permanent residence in Vietnam and organizations without a production or business establishment in Vietnam – must file and prosecute trademark, industrial design, and patent matters through a Vietnamese industrial-property representation service organization (a qualified IP firm). This is not a mere formality. A Vietnamese representative is critical for end-to-end compliance – from accurate classifications and data consistency to publications, office actions/oppositions, and post-grant recordals (name/address changes, assignments, licenses, renewals). For Madrid designations, a local representative is effectively indispensable to handle provisional refusals and lodge any follow-on recordals within the prescribed time limits

II. Application Routes: National vs. Madrid International

Vietnam offers two avenues for trademark protection: a direct national filing or an international application via the Madrid System designating Vietnam.

• National Application (Direct in Vietnam): Foreign applicants can file directly with the IPVN. A local IP agent is required for foreigners, with a signed Power of Attorney. The application and all documents must be in Vietnamese. A national application is suitable if you only need protection in Vietnam or want direct control through a local attorney.
• Madrid International Application: Vietnam is a member of the Madrid Agreement and Protocol. If you have a base application or registration in China, you can file a Madrid application through CNIPA/WIPO and designate Vietnam (and any other Madrid member countries) in one international filing. This allows a single application and fee in one language to cover multiple countries. The International Bureau (WIPO) will transmit the request to the IPVN, which then examines the trademark as if it were a national application. Vietnam must issue any refusal or decision within 18 months under Madrid rules. If Vietnam issues a provisional refusal, the Madrid applicant must appoint a local Vietnamese agent to respond within 03 months. If no refusal is issued, the mark is granted protection in Vietnam and recorded in the International Register. The Madrid route is cost-effective for securing protection in multiple countries at once, but remember that it depends on the “central” local registration for 5 years (so ensure your trademark in the country of origin is stable to avoid cancellation of the international registration). For a single-country focus, the national route may be simpler, but many foreign firms use Madrid to bundle Vietnam with other ASEAN markets.

III. Eligibility, Types of Trademarks & Practice Notes

1. Trademark eligibility

In Vietnam, a diverse array of signs can qualify for trademark registration, provided they meet three essential criteria. First, the trademark must be visible, encompassing various forms like letters, words, drawings, images, holograms, or even a combination of these, and can be presented in one or more colors. Additionally, sound marks capable of graphical representation are also eligible for registration.

Second, the trademark must possess distinctiveness, meaning it has the capacity to set apart one business’s products or services from those offered by others. This distinctiveness ensures consumers can easily identify and associate the mark with a specific source. Lastly, the sign must not fall under any of 07 prohibited categories specified in Article 73 of the Law on Intellectual Property. These prohibitions encompass signs that are deceptive (i.e., falsely represent the origin, quality, or characteristics of goods or services), lack distinctiveness, conflict with public order or morality, or infringe on prior rights (copyright, trade name, industrial design, etc.).

2. Types of Trademarks

In Vietnam, protectable trademarks fall into two broad categories, each subject to the same core tests of distinctiveness, non-descriptiveness, and no conflict with earlier rights:

(1) Standard marks

These cover the everyday signs businesses use: Word marks, figurative (logo) marks, and combined word-and-device marks; combinations of letters or numerals are also acceptable.

(2) Non-traditional marks

Non-traditional marks are trademarks that go beyond standard word or logo formats – e.g., 3D shapes or sounds – they are protectable if they function as source identifiers and meet standard tests of distinctiveness and no conflict with earlier rights.

• 3D (shape) marks: Registrable for the shape of goods/packaging if the sign is distinctive and non-functional. A three-dimensional shape mark will be refused registration if it consists exclusively of (i) a shape that results from the nature of the goods themselves; (ii) a shape of goods that is necessary to obtain a technical result; or (iii) a shape that gives substantial value to the goods.

• Sound marks: Recognized under the 2022 amendments (effective 2023). Applications should include an audio file plus a graphical representation (e.g., musical notation or sonogram).
• Color per se & other non-traditional signs: Not per se excluded, but they face high distinctiveness hurdles; robust evidence of acquired distinctiveness may be required. Single colors cannot be registered. A combination of colors should be arranged or combined in an unusual and distinctive manner. Kindly note that marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

Special categories:

• Geographical Indication (GI): GIs have a separate registration process and specific requirements. The GI must indicate the geographical origin of a product, and the product’s quality, reputation, or other characteristics must be essentially attributable to its geographical origin. The applicant must also provide evidence of the link between the product and its geographical origin.
• Collective marks and Certification marks: These marks have specific requirements regarding the applicant’s eligibility and the regulations governing their use. Collective marks are used by members of a collective organization, while certification marks certify specific characteristics of goods or services.
• Well-known marks – protected without registration; recognition depends on evidence (use, reputation, market share, etc.).

3. Practice notes

• To maximize protection and enforcement flexibility in Vietnam, file at least two separate applications: one for your core word mark and one for your logo. Avoid relying solely on a composite application (word + logo), because if an objection targets a single dominant element (e.g., the logo is confusingly similar to an earlier device mark), the entire composite can be refused. By filing separately, a refusal of the logo will not affect the word mark, so you still secure your key brand asset. Where budget permits, add a composite filing as well: it can broaden coverage against “look-alike” overall presentations, while the separate word and logo registrations preserve independent rights. (See our article “Registering Composite Marks in Vietnam: What Legal Risks to Consider Under the 2022 IP Law?” or “在越南注册组合商标：根据2022年《知识产权法》需注意哪些法律风险？”)

• File Class 35 early. If your business involves retail/wholesale, advertising, import–export, or online/e-commerce (incl. virtual storefronts/virtual goods), include Class 35 with specific, accurate service descriptions (avoid over-breadth). A timely Class 35 filing can bolster oppositions and block later filings in related goods channels, and it gives a clear hook for enforcement against sellers/advertisers exploiting your mark. (See our article: Registering Class 35 – A Choice or an Imperative Strategy in Vietnam, Laos, and Cambodia or “第35类商标在越南、老挝和柬埔寨的注册：可选项，还是战略必需？”

• When your brand spans both physical goods and virtual/digital goods or services (e.g., avatars, in-game items, virtual stores), ensure your trademark registrations in Vietnam cover the full spectrum: goods classes + relevant service classes (including digital/online services). For virtual/digital use-cases (metaverse, virtual goods, online services): explicitly draft your specification to include “virtual items,” “digital goods downloadable,” “online retail store services for virtual goods,” etc., where relevant. The IPVN is increasingly examining marks in virtual contexts. (See our article: Trademarks in the Metaverse: How to Effectively Protect Trademarks for “Physical” Products in the Virtual Space in Vietnam? or “元宇宙中的商标：如何在越南的虚拟空间中有效保护“实体”产品的商标？”

• Under Vietnam’s IP Law, letters/words in an “uncommon language” (e.g., Chinese, Korean, Japanese, Arabic scripts) are often found non-distinctive when filed as stand-alone word marks, exposing them to refusal under Article 74.2(a). To avoid this risk, file a composite mark that pairs the Chinese words with their corresponding Latin transliterations. If no Latin transliteration is desired, the Chinese-word mark must be accompanied by a unique, distinctive graphical element (a logo).

• File an additional, separate application for the Vietnamese name (e.g., the local market name) to create a barrier against both phonetic/visual confusion and conceptual similarity infringement.

• File separate applications for your core word and logo to maximize coverage, avoid filing an application for a composite sign (comprising both word and logo) to avoid likelihood of refusal of entire mark if one element is refused, and to facilitate enforcement options.

• The overall look, feel, and packaging of a product – often referred to as Trade Dress or “commercial indication” – is a critical element of brand equity. Infringers frequently copy this complete presentation to cause consumer confusion. Relying on a single form of Intellectual Property (IP) protection is often insufficient for effective enforcement. Register a “commercial indication” (e.g., product packaging) in various forms of IP registration including trademark, industrial designs and copyright to effectively enforce against IPR infringement (see our article: “Similar” product packaging: How to handle unfair competition and copyright legislation in Vietnam? or “ 相似”产品包装：如何依据越南不正当竞争法与著作权法加以应对？”)

• Vietnam accepts multiclass applications and applies the Nice Classification (Vietnam is not a Nice Agreement signatory, but uses the system). Fees include up to 6 items per class; each additional item incurs extra official fees.

• Series/family marks: There is no “series” mechanism—each variant (e.g., color/black-white/descriptor changes) should be filed as a separate

• For non-traditional marks, provide clear descriptions, any needed transliteration/translation (for non-Latin elements embedded in 3D/sound branding), and consider evidence of use to support distinctiveness if relevant.

VI. Trademark Application, Examination and Timelines

The lifecycle of a trademark application in Vietnam involves several distinct stages. For an unopposed application without substantive objections, the total registration process typically requires 18 to 24 months. However, complex cases, oppositions, or refusals can easily extend this timeline by an additional 6 to 36 months.  

1. Required documents for trademark filings in Vietnam

• Power of Attorney (PoA): One (1) original, wet-ink signed document from the Applicant. The PoA must bear the signature and seal (for corporate applicants). Notarization or legalization of the PoA is NOT necessary. A scanned copy is sufficient for immediate filing, but the original must be submitted to the IPVN within 30 days from the Vietnamese filing date.
• A trademark image.
• Goods/Services List: List of goods/services to be covered by the trademark.
• Priority Document: A certified paper copy of the priority documents and its English translation must be submitted to the IPVN within 90 days from the filing date of the Vietnamese application

• Transliteration/ Translation/Meaning: If the trademark specimen contains characters from a non-Latin script (such as Chinese, Japanese, Korean, Arabic, etc.), provide the phonetic transcription of the characters into the Latin alphabet & a precise English translation thereof.

2. Trademark Examination Process in Vietnam

In Vietnam, a trademark application undergoes “formality” examination, publication, and then substantive examination. The formality examination (within one month) checks for complete documents and correct fees. If accepted, the application is published in the official gazette for two months. Afterward, the substantive examination takes up to nine months to assess registrability, followed by a decision to register or refuse.

2.1. Formal Examination

The first stage is a formality (formal) examination to ensure your application documents are in order. The IPVN checks that all required information is provided, the goods/services are properly classified, fees are paid, and the POA or translations (if needed) are submitted.

This stage is usually completed in about one (01) month from the filing date.

Outcome:

• Accepted: If the application meets all formal requirements, the IPVN issues a Decision on Acceptance as to Formality.

• Refused: If deficiencies are found, the IPVN issues a notice requesting amendments or corrections within two (02) months Failure to comply can lead to the rejection of the application.

2.2. Publication

After passing formality check, the application is published in the Industrial Property Official Gazette. Publication generally occurs about 2 months after the formality acceptance. The gazette publication includes the trademark sample, applicant name, application number, filing date, and the list of goods/services. This publication serves as notice to the public and marks the start of the opposition period.

Pre-Grant Opposition Procedure (Article 112 and 112a):

If a third party believes that your trademark application in Vietnam is likely to conflict with or adversely affect their prior rights, or that it does not meet the criteria for protection, they may submit their opinions on the grant of an exclusive right to your trademark application to the IPVN after it has been published in the industrial property gazette of Vietnam. Vietnam’s IP Law 2022 gives third parties two options for voicing their opinions on pending pending applications in Vietnam: (i) Opposition, and/or (ii) Third-party Observation.

• Formal Opposition: is an administrative procedure that allows a third party to challenge the validity of an industrial property registration application and then request the IPVN to refuse the grant of a protection title, provided that the opponent provides the legal grounds to prove his case. For trademark, within 05 months from date the trademark application is published in the Industrial Property Official Gazette, a third party may file a formal opposition request under the IP Law (Article 112a).

• Third party observation (Informal Observations)is a procedure that allows the public to provide their opinion on industrial property registration applications, from which the IPVN makes decisions on applications under examination. Any third party retains the right to submit written opinions to the IPVN regarding the patentability of the invention (e.g. citing prior art) from publication until a decision to grant. Third-party’s observation are not formal oppositions, but serve as a reference source for examiners during the application examination process. This means if an opposition cannot be filed within the deadline, a third party may still submit their opinions on the registrability of the trademark application through a third-party observation procedure. 

The formal opposition process is treated by the IPVN as an active legal proceeding, similar to an invalidation or appeal. The IPVN forwards the opposition arguments to the applicant, who is given a 2-month deadline to submit counter-arguments and comments. The IPVN is empowered to facilitate direct discussions between the parties and ultimately settles the opposition, communicating the outcome, alongside the substantive examination result, to the opposing party.  

The formalization of the opposition process fundamentally alters the pre-grant environment from passive examination to potentially active contention. Applicants must now recognize the publication date not just as a procedural step, but as a trigger for a period of required proactive legal defense. This necessitates preparing legal arguments and supporting evidence within the short two-month response window, treating the successful survival of opposition as a necessary step in strenthening trademark rights to effectively enforce against potential trademark infringement later.  

Where an opposition concerns the right to file the trademark, the IPVN will generally require the opponent to pursue the entitlement dispute in court. If the opponent submits a court “acceptance of case” notice within 2 months, the IPVN will suspend examination of the patent application until the court issues a judgment; the IPVN will then settle the application in line with the court’s decision. If no court-acceptance notice is filed within 2 months, the opposition is treated as withdrawn and the application proceeds.

2.3. Substantive examination

In this critical phase, the IPVN’s examiners evaluate the registrability of the trademark on both absolute and relative grounds.

• Absolute groundsrelate to the inherent characteristics of the trademark itself (, lack of distinctiveness, descriptiveness, generic, contrary to public policy).

• Relative grounds primarily relate to the potential conflict of the applied-for trademark with prior rights held by other parties. These grounds focus on the relationship between the new trademark application and existing trademarks or other intellectual property rights.

These grounds are detailed in Articles 73 and 74 of Vietnam’s IP Law. Article 90 outlines the “first-to-file” principle, which is crucial in resolving conflicts.

Generally, absolute grounds for refusal include immoral, generic, descriptive, non-distinctive and customary marks (see Article 73, Vietnam IP Law and Article 74.2(a, b, c, d and đ)). Meanwhile, relative grounds cover identicalness to or confusing similarity with previously registered or earlier filed trademarks, widely used trademarks, well-known trademarks, trade names, geographical indications or currently protected industrial designs of others (see Article 74.2(e, g, h, i, k, l, m and n), Vietnam IP Law).

See our article “Trademark Examination Process and Common Grounds for Trademark Refusal in Vietnam” or “越南商标审查流程及商标驳回的常见理由”

This stage officially can take up to 9 months by law, but in practice often ranges from about 9 to 18 months (it can be longer if backlogs exist or if complex issues arise). During substantive examination, the examiner will check:

(a) Distinctiveness/Absolute Grounds:

The IPVN runs its substantive examination on the “absolute grounds of refusal”, which aims at determining if an applied-for trademark falls within the scope of signs that are prohibited from protection as provided under Article 73.5, Vietnam IP Law. This ensures that the mark is not generic, purely descriptive, misleading, contrary to public order or morality, etc., per Article 73 of the IP Law. For instance, marks consisting solely of common trade terms or functional shapes will be refused unless the applicant can prove acquired secondary meaning. Non-traditional marks like 3D or sound marks are also examined for distinctiveness (a sound mark can’t be a common sound devoid of source-identifying character, and it cannot be the national anthem or similar forbidden audio).

(b) Conflicts/Relative Grounds:

The IPVN’s examiners will conduct a comprehensive searched against Vietnam’s database of prior trademarks. If an identical or confusingly similar mark was filed earlier for overlapping goods or services, your application will be provisionally refused under Article 74 (relative grounds). The examiner will also consider well-known marks and possibly unregistered marks that are widely used in Vietnam.

Outcome of Substantive Examination:

• Accepted: If the examiner finds no obstacles (and no successful opposition), the application is approved for registration. In this case, the IPVN will issue a Notice of Intended Grant. Upon full and timely payment of prescribed fees, electronic certificates are issued within 2 to 3 months. Trademark rights become legally effective upon the registration date.  

• Refused: If issues are found, the IPVN will issue an Office Action (officially called a Notification of Refusal or an Examination Opinion) detailing the grounds of refusal or required amendments. You typically have 3 months, extendable to another 3-month term with a fee, to respond to a substantive examination notice Commonly, refusals cite either conflict with a prior mark or lack of distinctiveness in some element of the mark. The IPVN may also offer a partial acceptance – e.g. they might accept the application if certain goods are deleted or if a disclaimer is added (for descriptive portions).

1. Responding to an Office Action

Upon receiving an Office Action (officially called a Notification of Refusal or an Examination Opinion) from the IPVN, applicants have several options for responding, depending on the grounds for refusal. 

[i] File a counter-argument and submit evidence

If you disagree with the refusal, you can argue against the examiner’s findings with supporting evidence. 

• For refusals based on a lack of distinctiveness (absolute grounds): Argue the mark is inherently distinctive. You can submit evidence of extensive use and recognition in Vietnam and other countries to prove that it has acquired distinctiveness through use.
• For refusals based on similarity to a prior mark (relative grounds): Argue that the marks are not confusingly similar. You can emphasize differences in appearance, sound, and meaning. Provide evidence of coexistence in the market and demonstrate that there is no likelihood of consumer confusion. 

[ii] Seek a Letter of Consent

If the refusal is based on a similar prior trademark, you can seek a Letter of Consent from the owner of the cited mark. This letter, which indicates the other owner has no objection to your registration, can significantly increase your chances of success. 

Statutorily, Vietnam does not adopt consent letter regime to exclude the likelihood of confusion. Vietnam’s IP law doesn’t explicitly include Letter of Consent (“LoC”) as a deciding factor in trademark disputes. This means the IP VIETNAM isn’t obligated to accept an LoC as automatic proof that confusion is unlikely. The core principle in trademark law is preventing consumer confusion. Even if two trademark owners agree that confusion isn’t likely, the IP Vietnam’s primary focus is whether the marks are similar enough to confuse consumers about the origin of goods or services. This is why clear evidence of dissimilarity is so important, even with an LoC.

However, a LoC does hold value as supporting evidence. While not legally binding, an LoC can positively influence the IP VIETNAM examiners. It can demonstrate that the owner of the prior mark doesn’t believe there will be confusion and thus doesn’t object to the registration of the adverse party’s mark. This can strengthen arguments on distinguishability between the marks in questions.

Various useful insights can be obtained from our article titled:

• Letter of Consent in Vietnamese Trademark Registration: How KENFOX Helped a Client Overcome a Trademark Refusal (or: 在越南商标注册中同意函的运用：KENFOX如何协助客户克服商标驳回)
• Letter of Consent for Trademarks Within Corporate Groups in Vietnam: Legal Analysis, Practice, and Recommendations
• Letter of Consent: The Key to Overcoming Trademark Refusal by the IP Office of Vietnam? (or 同意函：克服越南知识产权局商标驳回的关键？)

[iii] Request partial registration

If the refusal applies only to some of the goods or services in your application, you can:

• Amend the application to delete the conflicting goods or services, which will allow the registration of the accepted portion.
• Divide the application to separate the refused goods or services into a new application. This allows the non-conflicting goods and services to proceed toward registration. 

[iv] Challenge the cited mark

If the cited prior mark is blocking your registration, you can attempt to remove it from the register through the following actions:

• Cancellation for non-use: File a cancellation action if the cited mark has not been used in commerce in Vietnam for five consecutive years.
• Invalidation: Initiate invalidation proceedings if the cited mark was registered improperly, such as in bad faith or without meeting the protection requirements.

VI. Opposition

Trademark Opposition Regulations in Vietnam

• Deadline for Opposition: A trademark opposition in Vietnam must be filed within five (05) months from the date of publication of the trademark application in the Industrial Property Official Gazette. This statutory deadline is non-extendable.
• Third-Party Observation: If an opposition cannot be filed within the deadline, a third party may still submit their opinions on the registrability of the trademark application through a third-party observation procedure. An observation can be filed at any time during the pendency of the application, from its publication date until the Intellectual Property Office of Vietnam (IP Vietnam) issues a decision on the grant of the Registration Certificate.

Grounds for Trademark Oppositions

The following legal grounds may be invoked for an opposition:

1. Prior Rights of the Client: Confusing similarity to a registered or pending trademark for identical or similar goods/services, copyrighted works, or trade names.
2. Well-Known Trademark: Based on the client’s well-known trademark.
3. Wide Use of the Client’s Trademark: Based on the wide use of the client’s trademark.
4. Bad Faith of the Adverse Party: If the trademark application was filed in bad faith.
5. Non-Entitlement of Trademark Registration: If the applicant does not have the right to register the trademark.
6. Prior Copyright: Signs containing copies of works without the permission of the copyright owner are not eligible for protection as marks in Vietnam.

For more useful insights, read our article titled “Trademark Oppositions In Vietnam: What Grounds And How To Effectively Apply?” or “越南的商标异议制度: 有哪些异议理由？如何有效适用？”

Determinant Factors for Filing Trademark Oppositions

• First-to-File Principle: Vietnam follows a strict “first-to-file” principle, generally favoring the earliest applicant who meets formal requirements.
• Evidence of Prior Use/Well-Known Status: Examiners at the IPVN rarely accept oppositions on grounds of prior use or well-known status unless the opponent proves exceptionally widespread and reputable use in Vietnam. This requires clear, concrete evidence of significant market presence and consumer recognition.
• Proof of Bad Faith: The IPVN generally requires direct evidence of bad faith, such as a prior business relationship or explicit acknowledgment of the client’s mark. Circumstantial evidence, like being competitors in the same industry, might not be considered strong enough.
• Copyright as a Ground: While the IP law amendment on January 1, 2023, introduced prior copyright as a ground for refusing trademark registration, detailed procedures and precedents are still developing. The decision to refuse a trademark based on copying an entire work or a substantial part depends on the examiner’s judgment.
• Foreign Bad Faith Filings: Bad faith filings outside Vietnam are generally treated as supplementary reference information rather than key determinative evidence by IP Vietnam.

Key Practical Advice on Trademark Oppositions

• Strong Evidence is Crucial: The chance of success in opposition depends heavily on the abundance and strength of evidence, especially for wide-use, well-known status, or bad faith claims. All evidence of well-known status or wide use should be incorporated into a notarized Declaration/Affidavit.
• Copyright Registration in Vietnam: If the brand’s logo or any distinctive element qualifies as an artistic work, consider registering it with the Vietnam Copyright Office. This provides strong legal evidence and a critical fallback right, especially if commercializing products in Vietnam before securing trademark protection.
• Comprehensive Evidence Compilation: Accompany legal filings with a dossier of evidence including advertisements, sales, consumer recognition, invoices, contracts, social media data, and e-commerce data showing Vietnamese consumer engagement.
• Emphasize Bad Faith Narrative: Even if specific proof of bad faith is required, it’s important to paint a compelling narrative of the squatter’s behavior (e.g., filing numerous trademarks mirroring well-known foreign brands) to provide critical context to examiners.

Necessity of Filing an Opposition vs. Waiting for Invalidation

• Risk of Failed Opposition: If supporting evidence in a trademark opposition is not strong and convincing, it is advisable not to file a Notice of Opposition/Observation, but rather, wait until the trademark matures into registration to file an invalidation action.
• “Internal Precedent”: If an opposition fails at the Trademark Examination Center (TEC), it creates a strong “internal precedent” or “presumption of validity” that the Department of Inspection and Appeal Settlement (DIAS) is hesitant to overturn, even with new evidence.
• DIAS Receptiveness: DIAS, which handles invalidation, may be more receptive to arguments because they are not bound by the same examination precedents as TEC and may have a different mandate focusing more on broader principles of unfair competition or the rights of well-known marks.
• Strategic Advantage of Invalidation: Allowing marks to proceed to registration without opposition prevents creating a negative case history and allows for presenting a fresh case with potentially new and more comprehensive evidence at the invalidation stage.
• Combined Strategy: A comprehensive strategy that combines legal actions with governmental and diplomatic interventions is often recommended, especially when traditional legal remedies alone may not guarantee success.

For more useful insights, read our article titled  ““Bad Faith”, “Conflict of Rights”, and “IP Abuse” in Vietnam: What Lessons Can Be Drawn from the “Foellie” Trademark Dispute?” or “元宇宙中的商标：如何在越南有效保护“实体”产品在虚拟空间中的商标？”

VII. Cancellation/Invalidation

Overview: The validity of a registered trademark in Vietnam can be challenged through a process known as trademark invalidation or cancellation, which is governed by the Intellectual Property Law of Vietnam. This mechanism is crucial for maintaining the integrity of the trademark register, allowing third parties to remove marks that were improperly granted protection or have since ceased to meet the legal requirements for validity.  

In Vietnam, the terms “cancellation” and “termination” (often used interchangeably with “invalidation” in general discussion, though “cancellation” in legal texts often refers to void ab initio issues) generally refer to actions taken to nullify or end the validity of a Trademark Registration Certificate.

Competent Authority: 

The Intellectual Property Office of Vietnam (IP Vietnam) is the competent authority to handle invalidation actions.

Legal Basis

The primary regulations are stipulated in the Intellectual Property Law of Vietnam (as amended) and its guiding decrees. The law draws a distinction between:  

1. Termination of Validity (often referred to as “Cancellation”):

A Trademark Registration in Vietnam can be revoked or cancelled under 8 grounds as provided in Article 95 of the IP Law. Cancellation deals with issues that arise after the trademark has been granted. These often involve actions or inactions of the trademark owner, such as non-use (i.e., not used for five consecutive years without justification), failure to pay renewal fees, misleading use (e.g., the use of the mark causes confusion about the nature, quality, or origin of the goods or services), or changes in circumstances that affect the mark’s validity (e.g., the mark has become a common name for the goods or services it represents), failure to control collective or certification mark use, or cessation of business activities by the owner without a legal heir.

In case of trademark cancellation, a Trademark Registration Certificate remains valid from the date of issuance until the cancellation takes effect. This is typically based on reasons arising after the registration was granted.  

2. Invalidation of Validity (often referred to as “Invalidation”):

A Trademark Registration in Vietnam can be invalidated under 4 grounds as provided in Article 96 of the IP Law. Invalidation deals with issues that existed at the time of registration. These are typically more fundamental problems, such as bad faith applications (e.g., the applicant registered the trademark with malicious intent), lack of registrability (e.g., the applicant didn’t have the right to register the mark), non-compliance (e.g., the mark doesn’t meet the conditions for protection (e.g., lack of distinctiveness, descriptiveness)), or failure to meet procedural requirements (e.g., improper amendment). An invalidated mark is treated as if it was never valid in the first place. In a broader sense, the Trademark Registration Certificate is deemed invalid ab initio (from the date of issuance). This is based on grounds that the mark failed to meet the protection criteria at the time of registration or was filed in bad faith.

Procedure Summary                      

• Filing: Any organization or individual can file a request for cancellation/invalidation with the IPVN. A Power of Attorney and supporting evidence are required.  
• Notification & Response: The IPVN examines the request. If it is reasonable, the request is sent to the trademark owner, who is given a period (usually two months, extendable) to submit a counter-statement and evidence of use/justification.  
• Additional notification: The IPVN may also seek additional arguments/documents from the parties if necessary.
• Settlement: The IPVN reviews the evidence and arguments from both parties and issues a decision on the validity of the trademark registration.  
• Appeal: Either party may file an appeal against the decision with the IPVN or initiate a lawsuit at court. The overall process can be lengthy, often taking 1-3 years or more.

Determinant Factors for Filing Trademark Invalidation/Cancellation

• First-to-File Principle: Vietnam follows a strict “first-to-file” principle, generally favoring the earliest applicant who meets formal requirements. This means that if the adverse party has an earlier filing date, it can be challenging to invalidate their mark unless strong evidence of prior use, well-known status, or bad faith can be presented.
• Foreign Bad Faith Filings: Bad faith filings outside Vietnam are generally treated as supplementary reference information rather than key determinative evidence by the IPVN.
• Statute of limitations: There is no time limit for invalidation based on lack of registrability or bad faith. However, invalidation for non‑use must be filed within five years from the grant date; after this period only termination for non‑use is possible.
• Risk of counterclaims: The trademark owner may retaliate by alleging infringement, filing their own proceedings or negotiating settlements. Petitioners should evaluate the overall IP portfolio and business relationship before initiating cancellation.

Practical advice for challenging or defending trademarks

For petitioners seeking cancellation/invalidation

1. Strong Evidence is Crucial: The chance of success in an invalidation action depends heavily on the abundance and strength of evidence, especially for wide-use, well-known status, or bad faith claims. Similar to oppositions, invalidation actions based on prior use or well-known status require exceptionally widespread and reputable use in Vietnam. This necessitates clear, concrete evidence of significant market presence and consumer recognition.

All evidence of well-known status or wide use should be incorporated into a notarized Declaration/Affidavit.

2. Conduct Due Diligence + Non-use evidence requirements: Before filing, conduct a thorough market investigation to gather concrete evidence of the registered mark’s non-use or its similarity to your prior rights. For non‑use cancellation, persuasive evidence is crucial. The burden of proof lies with the party seeking cancellation. In non-use cases, reports from a state authority are considered persuasive evidence by IP Vietnam. This typically involves conducting an investigation to show a lack of commercial use for the specified period. The IPVN accepts independent reports issued by Vietnamese state authorities confirming non‑use but does not accept self‑collected internet evidence.

3. Focus on “Bad Faith” for Older Marks: If a conflicting registration is more than five years old, you must base your action on grounds with no time limit, such as bad-faith filing or certain non-use grounds, and prepare strong evidence for this specific claim.

To prove bad faith, the petitioner must show the applicant’s knowledge of the earlier mark and intention to exploit it. Evidence may include prior use, fame of the mark and correspondence demonstrating dishonest intent. The IPVN generally requires direct evidence of bad faith, such as a prior business relationship or explicit acknowledgment of the client’s mark. Circumstantial evidence, like being competitors in the same industry, might not be considered strong enough.

4.  Emphasize Bad Faith Narrative:Even if specific proof of bad faith is required, it’s important to paint a compelling narrative of the squatter’s behavior (e.g., filing numerous trademarks mirroring well-known foreign brands) to provide critical context to examiners.

5. Copyright as a Ground: If the brand’s logo or any distinctive element qualifies as an artistic work, consider registering it with the Vietnam Copyright Office. This provides strong legal evidence and a critical fallback right, especially if commercializing products in Vietnam before securing trademark protection.

While the IP law amendment on January 1, 2023, introduced prior copyright as a ground for refusing trademark registration, detailed procedures and precedents are still developing. The decision to refuse a trademark based on copying an entire work or a substantial part depends on the examiner’s judgment.

6. Use administrative and litigation avenues – If the IPVN upholds the registration, petitioners may appeal to the Minister of Science and Technology or file suit in court. The 2025 Hanoi Superior Court decision in a non‑use cancellation case demonstrated that courts can overturn IPVN decisions when the agency applies overly strict interpretations of “trademark use”. Strategic litigation may therefore be worthwhile when administrative avenues are unavailing.

7. Consider negotiation – Sometimes a cancellation request prompts the registrant to settle or assign the mark. Negotiations can save time and reduce costs.

8. Strategic Advantage of Invalidation: In some cases, it may be more advantageous to wait for a trademark to register and then file an invalidation action, especially if the evidence for an opposition is not strong. This avoids creating a negative case history and allows for presenting a fresh case with potentially new and more comprehensive evidence at the invalidation stage. The Department of Inspection and Appeal Settlement (DIAS), which handles invalidation, may be more receptive to arguments as they are not bound by the same examination precedents as the Trademark Examination Center (TEC)

• Combined Strategy: A comprehensive strategy that combines legal actions with governmental and diplomatic interventions is often recommended, especially when traditional legal remedies alone may not guarantee success.

For Trademark Owners (Registrants)

1. Maintain Evidence of Use: Actively use your registered trademark in Vietnam and meticulously collect evidence of that use (invoices, sales records, advertisements, packaging, distribution agreements) for all registered goods/services.  
2. Use the Mark “As Registered”: While minor differences are sometimes acceptable as “use” of the “registered” mark, use the mark in the form it was registered or in a form that does not alter its distinctive character. If you plan to use a significantly different version, consider filing a new application for that version.  
3. Respond Promptly: If you receive a notice of cancellation, immediately seek legal advice. The deadlines for submitting a counter-statement are strict, and failing to provide a timely, well-supported defense will result in the loss of your registration.
4. Record Licenses: If your mark is used by a third party, ensure the license agreement is formally registered with the IPVN. Use by an unrecorded licensee may not be accepted as valid use.

VIII. Non-use Trademark Cancellation

A trademark registration is vulnerable to cancellation if the mark has not been used by its owner or licensee for five consecutive years without a justifiable reason. The five-year period is calculated from the registration date, and must precede the cancellation request. The owner can prevent cancellation if they begin or resume use of the mark at least three months before the cancellation request is filed.

Steps for initiating a cancellation action

Step 1: Conducting a Non-Use Investigation:

• To prove non-use, a request can be filed with a Vietnamese competent authority, such as the Market Prices Magazine (MPM), a publication under the Ministry of Finance of Vietnam, to obtain an official confirmation on the matter.
• While MPM’s confirmation of “not found evidence of use” is not considered a full information source, the IPVN accepts it as an initial basis to require the trademark owner to prove use of the registered mark.
• Investigation outcomes or reports solely from the client’s attorney are generally not accepted by the IPVN as objective evidence.
• Internet searches on platforms like Google, e-commerce websites (Shopee, Lazada, Tiki), social media (Facebook, Instagram), local news portals, trade/industry publications, business directories, and official company websites can also be conducted to identify visible commercial use of marks.

Step 2: Filing a Request for Cancellation:

• If the investigation reveals non-use for the last five years, a request for cancellation against the mark on non-use grounds can be filed with the IPVN, along with the investigation results as initial evidence.

Step 3: Handling the non-use cancellation of the IPVN

• The cancellation request will be assigned to an examiner. If found reasonable, the IPVN will notify the trademark owner for their counter-statement or response.
• The owner typically has a 2-month period, extendable by up to 4 months, to submit their response.
• The IPVN may request additional arguments or documents from both parties and may arrange an in-person dialogue.
• Once sufficient arguments and supporting documents are received, the IPVN will issue its opinion/conclusion on the cancellation action.

Timeline

In a smooth case, a cancellation action may take about 12-30 months to obtain IP VIETNAM’s conclusion. In practice, it often takes 15-20 months for a trademark to be registered in Vietnam, and the time may be longer if amendments are required or the mark is opposed or refused

IX. Trademark Use

1. Trademark Use Regulations in Vietnam

As per Article 124.5 of Vietnam’s IP Law, to prove use of your client’s trademarks in Vietnam and avoid the risk of losing them, the following acts are recognized as constituting use of a mark:

(a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;

(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

(c) Importing goods or services bearing the protected mark.

Options if you can’t use on your registered marks in Vietnam now?

Vietnam’s IP Law or sub-law documents do not lay down any specific provisions on “genuine use” and “token use” although, in principle, genuine use of the mark should be in a sustainable and sufficiently broad manner. However, in case “genuine use” is not feasible, symbolic or token use of a registered trademark in Vietnam must be taken into account.

See our article: “Trademark Use in Vietnam: How to Correctly Understand and Effectively Rebut Non-Use Cancellation Attacks” or “越南商标使用：如何正确理解并有效抗辩“不使用撤销”之主张”

2. Legal Issues Concerning Trademark Use in Vietnam

[1] Non-Use Cancellation: A registered trademark in Vietnam may be subject to cancellation if it has not been used by its owner or an authorized licensee for a consecutive period of five (5) years from the date of registration. The burden of proof for non-use lies with the party seeking cancellation, often requiring an investigation to show a lack of commercial use.

[2] “Token” or “Genuine” Use of the Mark in Vietnam

• Commercial Exploitation is Key: Trademark use must be understood as genuine, ongoing participation in the trade of goods or services bearing that mark, with the intent of bringing them to market for profit. Merely displaying a logo without a business purpose or on internal reports not intended for market offerings does not constitute “use”.
• Objectivity of Evidence: Evidence of use must be evaluated objectively, comprehensively, fully, and accurately. It should exist independently of human will or perception and not be fabricated or distorted. Materials produced by a party to mislead the adjudicator are deemed lacking in objectivity and carry no probative value.
• Changes to Mark: A trademark owner can adjust typeface, stylization, design, or color without affecting validity if the changes do not alter the mark’s distinctive character. Adding or omitting non-distinctive or weak elements may also be acceptable. However, significant changes that create a new concept or alter distinctiveness may be deemed improper use.

[3] “Manufacture for Mere Export” and Infringement: 

If you are manufacturing goods in Vietnam for another party and affixing their mark, you face risks if that mark infringes on a third party’s registered trademark in Vietnam. As detailed above, the act of manufacturing and affixing the mark in Vietnam can be considered an act of use and thus, potential infringement, even if the goods are solely for export.

Legal Analysis and Infringement

While the act of “exporting goods bearing a mark” is not explicitly listed as an “act of use of a mark” under Article 124.5 of Vietnam’s IP Law, the manufacturing process itself, which includes affixing the mark to goods or their packaging in Vietnam, is considered an act of use. Therefore, if a client manufactures goods in Vietnam and affixes a sign identical or confusingly similar to another party’s protected trademark without consent, this may constitute trademark infringement.

To determine an Intellectual Property Rights (IPR) infringing act, all four requirements of Article 72 of Decree 65/2023/ND-CP must be satisfied:

• Protected Mark: The alleged mark is a protected one.
• Infringing Element: The alleged mark contains an infringing element, meaning the sign is identical or confusingly similar to the protected mark, and the goods or services bearing the suspected sign are identical or similar to the protected ones.
• Unauthorized Use: The person performing the act is not the owner of the IPRs and is not authorized by law or a competent authority.
• Act in Vietnam: The examined act takes place in Vietnam.

If these four criteria are met, the act of manufacturing products labeled with a similar trademark to a protected trademark in Vietnam, even if solely for export, may be considered an infringement under IP law.

Practical Viewpoints in Enforcement

Despite the legal analysis, the practical application of these concepts by Vietnamese authorities has sparked considerable debate and a lack of consensus.

The IPVN’s Stance: The IPVN usually accepts “manufacture-only-for-export” as an act of use of trademarks when rebutting non-use cancellation actions.

Enforcement Authorities’ Differing Views: Vietnamese enforcement authorities often hold different viewpoints regarding alleged trademark infringement in “manufacture-for-export-only” cases.

• Some Authorities:Some authorities deem that exporting goods bearing another’s trademark constitutes infringement, arguing that the act of manufacturing and affixing the mark in Vietnam falls under “acts of use”.

• Other Authorities (e.g., IMOST):Precedents show that some enforcement authorities, such as the Inspectorate of the Ministry of Science and Technology (IMOST), may not consider “manufacture-only-for-export” a trademark infringement. Their reasoning includes:

√   “Exporting products bearing a mark” is not explicitly listed as an “act of use of trademarks” under Article 124.5 of the IP Law.

√   Exportation of such products is not included in the conducts subject to sanctions for trademark infringement under Decree No. 99/2013/ND-CP.

√   Since products are solely exported and not sold in Vietnam, there is no actual damage to trademark owners or confusion to consumers within Vietnam.

Case Examples:

• Case #1 (2015): A French company initiated administrative enforcement actions against four OEMs in Vietnam for apparel bearing an identical mark to their registered trademark. The OEMs argued the goods were solely for export. The case was closed with a reference to Article 211.1(a), determining that exporting is not administratively sanctioned. However, in a similar case, customs authorities seized and destroyed an export shipment with an infringing trademark.
• Case #2 (2016): The Anti-smuggling, Counterfeit Product Control and Intellectual Property Protection Team (Team 4) seized and destroyed confectionery products bearing an infringing “Choco Pie” sign intended for export. More recently, however, Team 4, after consulting with IMOST, declined a request to raid a manufacturer producing goods for export that allegedly infringed a client’s trademark, suggesting a shift in their approach.

Border and Customs Requirements: Vietnamese customs authorities may require proof that a trademark on exported goods is registered overseas and that the exporter has the right to use it. If a competitor has recorded their trademark with customs in Vietnam, customs authorities have the right to inspect shipments and detain goods bearing signs of trademark infringement.

3. Key Practical Advice on Trademark Use and Preventing Risks in Vietnam

[1] Register Your Trademark in Vietnam: Trademark rights are established based on registration, and Vietnam follows a “first-to-file” principle. This is the most fundamental step to protect your brand.

[2] Consider Additional IP Protection:

• Copyright Registration:If your brand’s logo or any distinctive element qualifies as an artistic work, consider registering it with the Vietnam Copyright Office. This can provide an additional layer of protection (1-2 months) and a strong legal basis.
• Industrial Design Registration:If your product packaging or design is distinctive, consider registering it as an industrial design patent. Obtaining an Industrial Design Patent (7-10 months) can enhance the ability to address trademark-related issues.

[3] Ensure Genuine Commercial Use: Actively use your registered trademarks in Vietnam for the goods and services for which they are registered. Maintain clear records of sales, marketing, advertising, and distribution to demonstrate genuine commercial exploitation. This is crucial for defending against non-use cancellation actions.

[4] Conduct Due Diligence for Manufacturing Contracts + Strictly control manufacturers in Vietnam:

• Verify Rights:Before manufacturing goods for another party, especially for export, ensure they have the legitimate right to use the mark in Vietnam or in the destination country. Request proof of trademark registration and/or a license agreement.
• Indemnification Clauses:Include strong indemnification clauses in your manufacturing contracts to protect your company from liability in case of trademark infringement claims arising from the marks provided by your clients.
• Prohibit Domestic Sales:Clearly stipulate in your contracts that the manufactured goods bearing the client’s mark are solely for export and strictly prohibit any domestic sales in Vietnam without explicit authorization and proof of local trademark rights, and outline consequences for non-compliance.

[5] Monitor for Infringement: Regularly monitor the Vietnamese market for any unauthorized use of your trademarks. This includes online platforms, physical markets, and customs records.

X. Appeal

If your application is finally refused (or if an opposition is decided against you), you have the right to appeal the Decision. Vietnam’s system provides an administrative appeal process within the IPVN or to the courts.

The appeal process in Vietnam is structured in two administrative levels, followed by the option of administrative litigation:

[1] First-Time Appeal (Internal Appeal)

The initial appeal is filed directly with the IPVN, the office that issued the refusal Decision.

• Deadline: The appeal must be filed within 90 days from the date of receiving the Decision of refusal.
• Contents: The appeal must be a comprehensive letter or declaration that: (i)Clearly states the applicant’s disagreement with the refusal Decision; (ii) Analyzes the specific grounds for refusal (e.g., lack of distinctiveness, confusing similarity to a prior mark); (iii) Provides clear reasons and compelling legal arguments to overturn the Decision, and (iv) Includes supporting evidence (e.g., evidence of prior use, letters of consent from owners of cited marks, legal precedents, or additional documents to establish distinctiveness).
• The IPVN’s Review: IP Vietnam reviews the appeal and issues a second Decision (Decision on the settlement of the first appeal). Legally, the settlement time limit is 30 days (extendable to 45 days for complicated cases), though practical processing times can be longer.

An applicant may kip filing a first-level appeal, and file a lawsuit challenging the IPVN’s Refusal Decision in a Vietnamese court.

[2] Second-Time Appeal (External Appeal or Administrative Litigation)

If the applicant is unsatisfied with the IPVN’s second Decision (the outcome of the first-time appeal), or if the first-time appeal remains unsettled after the prescribed time limit, they have two main options for recourse:

(a) Appeal to the Ministry of Science and Technology (MOST)

• Filing: A second-time appeal is lodged with the Ministry of Science and Technology (MOST), which is the supervising body of the IPVN.
• MOST’s Review: MOST examines the case and issues a Decision on the settlement of the second appeal. Legally, the settlement time-limit is 45 days (extendable to 60 days for complicated cases), though practical processing times can also be longer.

(b) Initiating an Administrative Lawsuit

• Filing: Alternatively, the applicant can choose to bypass the MOST appeal and initiate an administrative lawsuit at a competent Vietnamese court against the IPVN’s Decision on the first-time appeal.
• Lawsuit after MOST: If the second-time appeal to MOST is also unsuccessful, the applicant may be then entitled to file an administrative lawsuit against the MOST’s Decision.

XI. First-to-file vs. First-to-use Principle

Trademark rights are territorial in nature and Vietnam follows a first-to-file principle for trademark rights. Any individual or company is free to apply for a mark in Vietnam, regardless of nationality or actual use, as long as the formal requirements are met. This is a globally common approach, but in Vietnam it is applied very strictly. To oppose or invalidate a trademark, the IPVN and relevant parties must “comply with the established legal framework governing such matters”. Therefore, in practice, the IPVN tends to grant rights to the first applicant absent clear evidence of earlier rights in Vietnam.

Statutorily, “first-to-file” principle is not the only ground for establishing trademark rights in Vietnam. “First-to-use” principle is also adoptable in handling trademark disputes in Vietnam. To win a trademark opposition or invalidation, a genuine owner must evidence that his “un-registered” mark has been “widely used” in commerce in Vietnam and/or has become “well-known” in Vietnam. However, a drawback is that Vietnam does not define or provide explicit provisions on how wide a mark must be used to be recognized as “widely-used” in Vietnam. Recognition of a mark as “well-known” one in Vietnam is scattered in rulings in opposition or invalidation cases, but not contained in a list of “well-known marks” officially recorded in Vietnam.

XII. Bad-Faith

Vietnam’s revised IP Law (2022) and Circular 23/2023/TT‑BKHCN introduced an explicit “bad‑faith” ground for refusing or cancelling a trademark application or registration. Article 117(1)(b) of the IP Law allows third parties to oppose applications if there are grounds to believe they were filed in bad faith. Article 96(1)(a) allows cancellation of a granted certificate if the application was filed in bad faith

1. Requirements to Satisfy “Bad Faith” Threshold

According to Article 34.2 of Circular 23/2023/TT-BKHCN, a “bad faith” motive in trademark filing is satisfied if the genuine trademark owner can provide evidence to prove the following:

[1] Knowledge or Reason to Know: At the time of filing, the applicant knew or had reason to know that the mark being registered was identical or confusingly similar to a trademark that was widely used in Vietnam or a well-known mark abroad for identical or similar goods or services.

[2] Malicious intent: The filing was made with the intention to take advantage of the reputation or goodwill of such a mark for profit; or mainly for the purpose of reselling, licensing, or transferring the registration to the rightful owner; or to block the market entry of the rightful owner and restrict competition; or other acts contrary to honest commercial practices. Both elements must be proven; evidence of only one is insufficient

2. Challenges in Proving “Bad Faith”

[1] Proving knowledge of the earlier mark

• Demonstrating wide use or well‑known status: The IPVN generally recognises a mark as “widely used” or “well‑known” only with substantial evidence of continuous use, advertising, sales figures and consumer recognition. The IPVN applies a rigorous standard for recognising well‑known status and that petitioners must provide extensive proof of reputation. Marks that have not been widely used in Vietnam or are well known abroad only for different goods/services do not fit within the definition. As a result, filing hundreds of trademarks that mirror foreign brands is not sufficient; the legitimate owner must show that its mark was widely used in Vietnam or well‑known elsewhere before the filing date. Under the literal meaning of Article 34.2 of Circular 23/2023/TT-BKHCN, only when an “unregistered” mark has been “widely used in Vietnam” or “well-known” in other countries, the trademark owner may win the case. Another issue is how many countries such an unregistered mark must be well-known or whether the well-knownness of such mark must be recognized by official Decision/rulings? No explicit provisions are available on this matter. Various useful insights can be learnt from our article about “bad faith” trademark regulations in Vietnam at: 恶意 – 证明恶意和收回商标的策略？

• No presumption of knowledge from notoriety alone: Although a squatter’s pattern of filing hundreds of foreign brands suggests awareness, the IPVN typically requires evidence linking the applicant to the legitimate owner (e.g., former distributor, agent or business partner). The bad faith exists only when the applicant knew or had a basis to know that the mark was identical or similar to another person’s mark widely used in Vietnam or abroad. Without evidence of knowledge – such as proof of a prior relationship, negotiations or awareness of the mark in the Vietnamese market – the mere volume of applications is not enough.

• Limited publicly available data. Vietnam lacks a formal list of widely used or well‑known marks, so trademark owners must gather market data, advertising records, media reports and consumer surveys. No detailed guidelines on recognising widely used marks are available. This lack of guidance makes it difficult for applicants to anticipate what evidence will be accepted and for examiners to consistently evaluate claims.

[2] Proving malicious intent

• Intent is subjective and difficult to evidence: Under Article 34.2, the opponent must demonstrate that the applicant registered the mark to exploit the true owner’s reputation, to resell or license the mark to the legitimate owner, to restrict the owner’s market access, or to engage in other unfair practices. Even if the applicant clearly knew of the genuine mark, proving dishonest motive is not simple. Without documentary evidence (e.g., communications showing an attempt to negotiate sale of the mark), the IPVN may regard the filing as a coincidence rather than an intentional exploit.

• Patterns of behaviour are not codified. Evidence of nuisance filings or repeated squatting may indicate intent, but the current framework does not treat such patterns as per se bad‑faith filings. Vietnam’s regulations lack a comprehensive classification of bad‑faith patterns and do not consider applicant behaviour or multiple filings as evidence of dishonest intention. Therefore, a squatter who files hundreds of applications may avoid sanctions unless there is direct proof of intent to exploit a specific mark.

• High burden of proof. The opponent must produce admissible documents (originals or notarised copies) showing both knowledge and motive. They must also demonstrate that the evidence predates the filing date. Collecting such evidence can be resource‑intensive and may require investigations in multiple jurisdictions.

Without such concrete proof of a strong reputation in Vietnam, an opposition or cancellation on the basis of prior use is likely to fail.

3. Typical exemplified cases

Case 1: WEIHAI GUANGWEI GROUP CO., LTD. (GUANGWEI), a leading Chinese manufacturer in the global fishing tackle industry, filed an International Registration (IR No. 1526676 – designating Vietnam. IP Vietnam issued a provisional refusal notice for GUANGWEI’s trademark under IR No. 1526676 on the grounds that GUANGWEI’s trademark was deemed confusingly similar to the trademark “” of Nguyen Thu Huyen (a Vietnamese individual). GUANGWEI filed a request for invalidation, but IP Vietnam rejected it.

Case 2: Shenzhen Yingfei Ke Electronics Co., Ltd. (the client’s old name was Inphic Electronics Co., Ltd.) is the holder/applicant of the “INPHIC” trademark in class 09 in many countries such as US, UK, EU, China, Singapore, Indonesia, Brazil, Argentina, Laos, Pakistan, Russia, Nigeria, Egypt, South Africa and Mexico. Yingfei Ke/ Inphic filed an opposition against the mark “INPHIC” based on wide-use, well-known and bad-faith claim. However, finally, in November 2024, IP Vietnam issue a rejection of the opposition.

Case 3: Lantronix, Inc., a U.S. technology company established in 1989 and the rightful owner of the “Lantronix” trademark, filed an opposition against the trademark “” (“Lantronix + device”), which was applied for by Suravit Kongmebhol (Thailand) – a client represented by KENFOX IP & Law Office. Lantronix, Inc. (US) requested that IP Vietnam refuse to grant protection for our client’s trademark, arguing that the “Lantronix” mark had been widely used in 110 countries worldwide, with nearly USD 5 million spent on global brand advertising between 2015 and 2018. However, their sales revenue in Vietnam amounted to only USD 6,122. Additionally, Lantronix, Inc. (US) claimed that “Lantronix” was their trade name, and under trade name protection regulations, rights arise from use without the need for registration. Nevertheless, we rebutted Lantronix, Inc.’s arguments, and after careful consideration, IP Vietnam rejected their opposition and proceeded to grant trademark protection to our client’s mark.

XIII. Fees and Costs

Vietnamese trademark fees are moderate compared with many jurisdictions. The official fees are determined by the Ministry of Finance and are payable in Vietnamese dong (VND). However, for easy review, please see the fees in USD equivalent to the official fees in VND below.

Key official fees for trademark applications:

XIV. Trademark Application Strategies and Common Pitfalls

Successfully registering trademarks in Vietnam requires not just going through the motions, but also strategic planning. Below are practical tips and common pitfalls – particularly tailored for foreign enterprises – to help you address Vietnam’s trademark system effectively:

• File Early – First-to-File Priority: A critical strategy is to file your trademark applications as early as possible in Vietnam. Being a first-to-file jurisdiction, Vietnam will grant rights to whoever files first for a given mark. Foreign companies have sometimes found that local individuals or distributors pre-emptively registered their brand (a form of trademark squatting). To avoid this, secure your key brand names in Vietnam well before product launches or market entry. Early filing also means your application will beat any potential copycats and you can later oppose others based on your pending rights. Use the 6-month priority window if you’ve filed in China (for example) – this can backdate your Vietnam filing to your Chinese application date.

• Conduct a Thorough Search: Skipping the preliminary trademark search is a common pitfall that can lead to refusals. Always do a clearance search in Vietnam’s trademark database for similar marks in your classes. This helps identify any conflicts or if someone has already filed a similar mark. If you discover an existing mark that is very close to yours, you may reconsider your branding or prepare to differentiate your mark. It’s much cheaper and easier to adjust your mark before filing than to fight a refusal or legal battle later. Also search for translations or transliterations – a mark that is totally different in Chinese/Japanese/Korean might have a coincidentally similar sound or meaning in Vietnamese. Local IP firms or search providers can assist with comprehensive searches (including device mark similarity, which can be hard to assess on your own).

• Ensure Complete and Correct Documentation: Incomplete applications are a frequent cause of delay or rejection. Double-check that you have all required documents: the application form correctly filled, the POA signed (for foreign filers), clear mark images (especially for device or 3D marks, make sure the image quality is high and shows all needed views), and a properly classified goods/services list. Misclassification or overly broad specification is a pitfall – Vietnam allows broad terms but each item counts toward the fee limit of 6 per class.

• Leverage Multiclass Filings Strategically: Vietnam permits multiclass filings, which can simplify management when you have a brand used across various goods/services. Foreign companies entering diverse sectors might file one application covering multiple classes. This is efficient, but consider the pros/cons: a refusal in one class (due to a conflict) can hold up the whole application’s registration. You might sometimes file separate applications per class if certain classes have higher risk. Vietnam doesn’t require separate filings per class, so multiclass is often beneficial – just plan around any particular class that might need separate handling. Note that official fees will increase with each additional class, so budget accordingly.

• Beware of Purely Chinese/Korean/Japanese Character Marks: One pitfall specific to Chinese/Korean/Japanese brand owners is using marks that are only in Chinese/ Korean/Japanese characters. Tip: Consider registering a Latin-script version of your trademark – this could be an English word mark you use internationally or the transliteration of the Chinese Korean/Japanese name. Many foreign companies translate or adapt their marks for overseas markets; having a Vietnamese-friendly brand name can aid marketing and legal protection. If you use a Chinese/Korean/Japanese character logo, think about filing a composite mark that includes a Latin word or stylized letter alongside the characters. This way, the mark has an element that Vietnamese examiners and consumers can read, bolstering its distinctiveness. For example, if your Chinese brand is “凤凰” (phoenix), you might file the logo with the word “Phoenix” or a unique design. This is not a legal requirement, but a strategic recommendation to avoid the pitfall of a hard-to-defend mark. 

• Plan for Non-Traditional Marks if Relevant: If your branding includes unique elements like a specific 3D shape (e.g. a distinctive bottle or product configuration) or a sound jingle associated with your company, Vietnam now provides avenues to protect these. 3D marks can be registered, but remember to provide multiple view drawings and a written description in the application. Ensure the shape isn’t merely functional or common, or it will be refused. Sound marks are new – if you have a signature tune (for example, Intel’s five-note chime or a brand theme song), you can file it with a graphical sound wave or musical score plus an audio file. The pitfall to avoid here is not meeting the formal requirements: without a proper graphic representation, a sound mark won’t be accepted. Also, consider the commercial value – non-traditional marks are best filed if they are central to your brand identity. Otherwise, focus on the core word/logo marks first.

• Trademark Scope and Strategy: Tailor your trademark filings to your business strategy in Vietnam. For example, decide whether to register your logo and word mark separately. A combined mark (logo + word) protects that exact combination, but registering the word mark alone gives broader protection for the name itself in any style. Similarly, registering the logo alone protects the design regardless of words. Many firms do multiple filings: one for the brand name, one for the logo, etc. Consider also registering a Vietnamese translation or transliteration of your mark if it’s likely to be created by the public. While Vietnamese consumers often use the original brand name, sometimes nicknames or translations catch on – owning the rights to those can preempt others. For instance, if your Chinese/Korean/Japanese brand name has a known meaning, you might secure the Vietnamese word with that meaning as a defensive mark, if it’s distinctive. Also, check for domain names – securing the “.vn” domain of your brand is wise, though that falls outside trademark law, it’s part of a holistic IP strategy to prevent cybersquatting.

• Madrid vs. National – Strategic Choice: Decide on the filing route that fits your expansion plan. If Vietnam is one of many countries you’re targeting, a Madrid filing can save cost and effort by managing one international registration. But a pitfall to avoid is ignoring the “central attack” risk – ensure your Chinese base registration remains valid for 5+ years so the international registration stays safe. If your home application is still in process or you foresee any issues with it, you might do a national filing in Vietnam to be safe. Sometimes, national filing can be a bit faster in issuance of a filing number and dealing with issues locally. Also, through Madrid, communication about refusals adds a slight delay (going through WIPO). In either case, once you have a registration, enforcement is the same. Foreign companies often use Madrid for convenience, but be prepared to act locally if a refusal comes – a common mistake is not realizing you need a local lawyer to handle a Madrid provisional refusal, leading to missed response deadlines.

• Avoid Common Refusal Triggers: Be mindful of elements that often trigger objections in Vietnam. For example, overly broad specifications like claiming all goods in one certain class might raise conflicts; it can be strategic to file narrower and later expand usage. Descriptive terms or geographical names in the mark (like “BEST QUALITY” or “Shanghai Nails”) will face trouble. Either avoid them in your brand or be ready to disclaim. If your brand includes a sensitive geographic indication (like “Champagne”), it will be refused. Keeping your mark unique and not too similar to well-known marks is also key – Vietnam will reject marks that cause confusion with famous marks or trade names. For instance, a mark that looks or sounds like a famous international brand might be refused even if that brand isn’t registered in Vietnam, under the well-known mark protection and bad-faith provisions.

• Use It or Lose It: After securing registration, use your trademark in Vietnam. Non-use cancellation is a real risk – after 5 years of registration, if you haven’t used the mark at all, a third party can petition to cancel it. Plan to either start commercial use in Vietnam or, if plans change, at least license it to someone or keep some minimal use (even importing a small batch of goods under the mark). Keep evidence like invoices, catalogs, marketing materials dated over the years. This not only protects against cancellation but also strengthens your brand’s distinctiveness (in case you ever need to show acquired distinctiveness or enforce against an infringer).

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