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    HOW TO FILE A RESPONSE TO A PROVISIONAL REFUSAL FOR AN INTERNATIONAL TRADEMARK IN VIETNAM?
    Fri, 10:55 04/09/2021.

    When an international trademark application is rejected by the INTELLECTUAL PROPERTY OFFICE OF VIETNAM (IP Vietnam), the applicant should not be disappointed about the rejection because there is still a possibility to overcome the rejection. However, to do this, the applicant needs to know about the trademark law in Vietnam and/or needs to have a contact of a professional IP representative who can analyze the refusal and find out important points to overcome the provisional refusal. How can we get success to file a response to a provisional refusal for an international trademark in Vietnam?

     

    Firstly, it should be noted that an applicant can file a response within 90 days receipt of the notification of a provisional refusal. There are few types of rejections that each should be dealt with by a specific type of response, particularly:

     

    - Rejection by absolute ground: the applied trademark is rejected because it is descriptive to the goods/services.

     

    - Rejection by relative ground: the applied trademark is rejected by a cited mark which is confusing similar.

     

    One example is shown as below:

     

    International Registration No. 1330740 was rejected because it is considered as confusing similar to an earlier trademark, particularly:

     

    To file a response to a provisional refusal for international trademark No. 1330740 in Vietnam, the applicant can provide arguments to prove that the applied mark “TRUECONF” in Classes 09, 38 is distinctive to the cited mark “TrueConf, device” in Class 09 or the applicant can provide evidence to prove that trademark “TRUECONF” in Classes 09, 38 and trademark “TrueConf, device” in Class 09 are co-existed in other countries. Alternatively, the applicant of the applied trademark can negotiate with the applicants/owners of the cited marks.

    After considering the response, if the provided evidence is acceptable, the IP Vietnam will issue a final decision.

     

    To file a response, IP representative needs a Power of Attorney which is simply signed by the applicant and supporting documents including scanned copies of trademark certificates in the applicant’s home country and in other countries.Our firm, HAIHAN-IP, can assist applicants to overcome the International Refusals for trademarks in Vietnam by analyzing the rejections and filing responses with the most relevant arguments. For the example of the above-mentioned case, because the applied mark is identical to the cited mark, we negotiated and convinced the applicant of the cited mark in Vietnam, namely, HAPRO Information Joint Stock Company, to withdraw the trademark application No. 4-2016-21936. We also provided supporting documents and our arguments to strengthen our response and requested IP Vietnam to accept to grant for International Registration No. 1330740 for trademark “TRUECONF” in Vietnam. Our Response was filed on July 26, 2018 and 19 months later, on February 12, 2020, we received a Decision to grant for the above-mentioned trademark.

    From the above illustration, it can be seen that applicants always have a chance to overcome international refusals in Vietnam although filing a response to a provisional refusal for international trademark in Vietnam is a chanllenging procedure and needs effort from both applicant and the local representive.

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    For more information about FILING A RESPONSE TO A PROVISIONAL REFUSAL FOR AN INTERNATIONAL TRADEMARK IN VIETNAM, please do not hesitate to contact us athoai le tan

    HAIHAN IP LAW FIRM

    12A Floor, Center Building, No. 1 Nguyen Huy Tuong, Thanh Xuan Trung Ward, Thanh Xuan District, Hanoi City, Vietnam.

    Tel:             844-3202 8111 / 844-3202 8222

    Fax:            844-3202 8333

    Hotline:      84-983 788 469

    Email:         hh@haihan.vn

    HAIHAN-IP is a registered IP Firm recorded by Intellectual Property Office of Vietnam (IP Vietnam).

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