Further to the numerous changes introduced via Decree 65 on 23 August 2023 (https://www.mirandah.com/vietnam-updates-in-trade-mark-law/), the Vietnamese Government has on 30^th November 2023 issued Circular No.23/2023/TT-BKHCN (hereinafter “Circular 23”) making more amendments to the Vietnam Intellectual Property (“IP”) laws, aimed at providing guidance for implementation, and aligning IP practice as a result of changes to the IP laws.

The salient trademark amendments of Circular 23 are as follows:

1. Replacement of agent

Current regulations mandate that authorization of agents must be in writing, as well as the conditions for replacement of agents.  Circular 23 further provides that:

• the authorised organisation or individual must meet the requirement as the representative of the applicant and/or the complainant, and
• the replacement may only be filed after the previous authorisation is recorded by the Vietnam IP Office.

2. Excluded marks during formality examination stage

Circular 23 sets out the exclusion of marks that are contrary to social ethics, public order, harmful to national defence, security from formality acceptance.  It also sets out the scope for formality examination of collective / certification marks.

3. Publication of Collective and Certification Trademarks

For collective and certification marks, the publication details will include “Usage Regulations”, in addition to other information such as Class, goods and/or services.

4. Opposition Timelines

The timeline for responding to a Notice of Opposition is increased from one month to two months. Similarly, when the Vietnam IP Office directs an opponent to refer trademark opposition proceedings with the court, the timeline to submit a copy of the Court’s Acceptance for handling the case to the Vietnam IP Office is increased to two months instead of one month under the earlier provisions.

In addition, Circular 23 also sets out special circumstances where the Vietnam IP Office will continue handling trademark opposition proceedings without the need for the opposing party to initiate legal proceedings, if it has strong basis provided under the IP laws.

5. Language of Documents used in Opposition Proceedings

While customarily filed in the Vietnamese language, Circular 23 prescribes and makes clear that Vietnamese is the official language to be used in opposition proceedings.  While the supporting documents may be filed in other languages, they must be translated into Vietnamese when requested by the Vietnam IP Office.

6. Geographical Names

Circular 23 sets out the criteria for determining geographical names as well as locality symbols, including that these may be considered as indicating the geographical origin if they are used for services associated with the specific characteristics of the locality.

7. Bad faith during examination  

A non-exhaustive qualitative list of scenarios that may be considered as bad faith is set out in Circular 23. As well, examiners will also be considering the element of bad faith during examination stage of trademark applications.

Circular 23 provides much-needed guidance and procedural changes for the implementation of the various changes introduced to the IP laws in the past 2 years, although it remains lacking in certain areas, such as the criteria for the examination of sound marks.  As such, it can be expected that further amendments will be introduced to seamlessly integrate practice guidelines with the amended IP laws.