How to respond to a refusal of international trademark application which designated Vietnam?
Question: How to respond to a refusal of international trademark application which designated Vietnam?
Answer:
The long-awaited Circular No. 16/2016/TT-BKHCN amending and supplementing Circular No. 01/2007/TT-BKHCN (Circular 01), a critical guidance document for the implementation of Vietnam’s Intellectual Property Law, was recently published in the Official Gazette.
The amendments will take effect on January 15, 2018.
According to Circular No.16/2016/TT-BKHCN amending and supplementing Circular No. 01/2007/TT-BKHCN (Circular 01), which effected from January 15, 2018
a refusal to international trademark application will be considered as to the refusal of national application, which brings many advantages to the applicant
1. Procedure for handling
Prior to this Circular No. 16/2016/TT-BKHCN, any response to the refusal for international trademark registration in Vietnam will be lodged according to appeal procedure. In practice, the appealing stage takes until 12-18 months for the applicant to receive the final decision.
However, according to this Circular No. 16/2016/TT-BKHCN, response to the NOIP refusal will be examined as to substance which only takes about 6-8 months. It also more convenient for applicant to make arguments, discussion to the examiner in charge to protect the mark in Vietnam.
After considering the arguments in the response, the NOIP will take the procedures as follow
- In case of the response are reasonable and accepted, NOIP will:
+ Issue a decision for protection in the scope of qualified goods/services respectively.
+ Recording the information into National Register Data of international trademark
+ Notify to WIPO the result (acceptance - Form 5).
+ Publish the granting decision on National Industrial Property Gazette within 2 months from the signing date of decision.
- In case of the applicant file no response or the arguments are not accepted, the NOIP will
+ Issue a decision of refusal for protection to the refused classes/all classes
+ Notify to WIPO the result (refusal - Form 6)
2. Deadline
Deadline for applicant to file a response against refusal of international trademark registration will be 3 months from the signing date of notice.
Previously, the response will be handled as an appeal application, so the expiry time cannot be extended.
However, the Circular 16 has amended this regulation which more benefits to applicant. Accordingly, the deadline for filing response can be extended 3 further months with prescribed fees, which helps applicant has more time to prepare and collect the evidences for carefully arguments.
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