Do you have a right to express opinion to state agency on trademark registration?

Do you have a right to express opinion to state agency on trademark registration?
Posted date: 21/09/2020

Our company registered a trademark, we applied on 10/10/2017 but until now our trademark has not been granted a protection title. When searching for trademarks, I figure out the enterprise has the same business lines as me with the same brand, Although it is not identical but it may be confusingly similar, In this case, Can I prevent NOIP from granting protection titles to both? In this case, what can I do to ensure my benefits? sincerely!

 

FDVN’s opinion:

Thank you for concerning FDVN’s legal services. Regarding your consulting requests, after studying the relevant legal documents, FDVN Law Firm would like to give you the following advice:

 

In Article 112 of the 2005 Law on Intellectual Property, amending and supplementing 2009 stipulates:

From the date an application for registration of industrial property is published in the Official Gazette of Industrial Property up until prior to the date of issuance of a decision on grant of a protection title, any third party shall have the right to express an opinion to the competent State administrative body for industrial property rights on the grant or refusal to grant a protection title for such application. Such opinions must be made in writing and be accompanied by documents or must quote the source of information.”

Opponents of granting protection titles must pay a fee of 550,000 VND for handling of disapproval of applications related to the industrial property (Circular No. 263/2016 / TT-BTC). Third-party written opinions are considered as a source of information for the industrial property registration process

After receiving the written opinion and information verification documents, the processing of the third party’s opinions before the issuance of the decision on the grant of protection certificates in accordance with Clause 6 Article 1 of Circular 16 /. 2016 / TT-BKHCN as follows:

+ From the date on which the application for registration of industrial property is published in the Industrial Property Official Gazette to the date prior to the issuance of a decision on the grant of a protection certificate, any organization or individual may send the NOIP their written opinions on the registration right, priority right, protection conditions and other issues concerning the application for registration of industrial property as prescribed in Article 112 of the Law on Intellectual Property. The person having a dissenting opinion against the issuance of the protection certificate must pay fees for processing of the dissenting opinion. The written opinion of the third party shall be treated as an information source serving the processing of the application for registration of industrial property.

+ If considering the opinion of the third party grounded, the NOIP shall notify the applicant of such opinion and set a time limit of 01 month from the date of notification in order for the applicant to send a written response. After receiving the written response sent by the applicant, when necessary, the NOIP shall send such a written response to the third party and set a time limit of 01 month from the date of notification in order for the third party to send a written response. After the abovementioned time limit, the NOIP shall process the opinion of the applicant and the third party according to the evidence and arguments provided by the parties and documents included in the application. The third-party shall be also informed of the results of the substantive examination of the corresponding application.

+ If considering the opinions of the third party groundless, the NOIP is not required to notify the applicant of those opinions but shall notify the third party of its refusal to consider the opinions, clearly stating the reason thereof.

+ If opinions of the third party are related to the registration right, when finding it impossible to determine whether such opinions are grounded or not, the NOIP shall notify the third party so that the latter can file a lawsuit to a competent court in accordance with regulations of the Civil Procedure Code. Within 01 month from the date on which the NOIP issues the notice, if the third party fails to send the NOIP the copy of the notice of case acceptance of the court, it will be considered that the third party has dropped the lawsuit and continue to process the application without the third party’s opinions. If the NOIP receives such a copy within the abovementioned time limit, the NOIP shall suspend the application processing until the results of the dispute settlement by the court are obtained. After the results of the dispute settlement by the court are obtained, the application processing shall be resumed in accordance with those results.

+ When necessary and at the request of both parties, the NOIP shall organize a face-to-face meeting between the third party and the applicant to further clarify the dissenting opinion.

+ The time limit for response to the third party’s dissenting opinions by the applicant shall not be added to the time limit for completion of relevant procedures by the NOIP to according to regulations.”.

So, according to the above provisions, your partner can make a written opinion with The State administrative body for industrial property rights to grant or not to grant a protection title for this application. Within the time limit of the Law, the NOIP will carry out relevant procedures to deal with the request of the Partner in accordance with the law.

Above is FDVN Law Firm's opinion for your consulting requests based on studying the relevant legal provisions. Hopefully, FDVN's advice would be helpful to you.

FDVN Law Firm


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