Currently, for many different reasons, a number of protection titles are invalidated by law. So, in what cases protection titles are invalidated?
INVALIDATION OF PROTECTION TITLES
Registration of protection of intellectual property rights to trademarks is the right of individuals and business organizations. The National Office of Intellectual Property is the agency receiving and processing mark registration dossiers. A mark protection title is granted by the National Office of Intellectual Property when it satisfies the conditions prescribed by law. Basically, general conditions for marks eligible for protection include:
- Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colors;
- Being capable of distinguishing goods or services of the mark owner from those of other subjects.
However, in practice, many marks are granted protection titles because of the lack of honesty of the applicant; or the trademark does not meet the protection requirements at the time of issue of the title. The law provides for the right of the registration applicant or a third party to request for the invalidation of the mark protection title.
CIRCUMSTANCES IN WHICH MARK PROTECTION TITLES ARE INVALIDATED
According to Clause 1, Article 96 of the Intellectual Property Law 2005, a protection title shall be entirely invalidated in the following cases:
- The registration applicant has neither had nor been assigned the right to register an invention, industrial design, layout-design or mark;
- The subject matter of industrial property fails to satisfy the protection conditions at the time the protection title is granted.
A protection title shall be partly invalidated when that part fails to satisfy the protection conditions. In addition, organizations and individuals may request the state management agency in charge of industrial property rights to invalidate protection titles if they feel that the protection titles violate the above-mentioned conditions, provided that they pay fees and charges.
The statute of limitations for exercising the right to request invalidation of a protection title shall be its whole term of protection. For marks, such statute of limitations shall be 5 years from the grant date, except where the protection title has been granted due to the applicant’s dishonesty. Based on the result of the examination of request for invalidation of a protection title and involved parties’ opinions, the National Office of Intellectual Property shall issue a decision on entire or partial invalidation of the protection title or notify the refusal to invalidate it.
APPLICATION FOR INVALIDATION OF PROTECTION TITLES
(1) A written declaration requesting the invalidation of the protection title (02 copies made according to a set form); (2) Evidence related to the request for invalidation of the protection title; (3) An authorization letter (through representative); (4) Written explanations of the reasons for the request (clearly stating the number of the protection title, reasons, legal grounds, proposed contents, invalidation of part or whole of validity of the protection title) and other related documents.
THE PROCESS OF HANDLING REQUEST FOR INVALIDATION OF A PROTECTION TITLE BY A THIRD PARTY
In case a third party requests for the invalidation of a mark protection title, the National Office of Industrial Property shall notify in writing the third party’s opinion to the protection title holder. The protection title holder shall have 2 months to give opinions. In addition, the National Office of Intellectual Property may organize direct consultations between the third party and the owner of the relevant protection title.
Then, on the basis of reviewing the opinions of the parties, the National Office of Intellectual Property will issue a decision on entire or partial invalidation of the protection title or notify the refusal to invalidate it in accordance with Clause 4, Article 96 of the Intellectual Property Law. If disagreeing with the National Office of Intellectual Property’s decision on the handling the request for invalidation of the mark protection title, the requesting party and involved parties may appeal against the decision.
FEE FOR REQUESTING FOR INVALIDATION OF A PROTECTION TITLE
The fee for requesting for invalidation of a protection title is VND 420,000. The National Office of Intellectual Property only handles the request of the petitioner after he/ she pays the fee.
DURATION FOR HANDLING THE REQUEST FOR INVALIDATION OF A PROTECTION TITLE
- Duration of 02 months for the owner of the mark protection title to give opinions on the third party’s request for the invalidation of the trademark protection title.
- This time period may be extended by 3 months if the owner of the mark protection title has different opinions with the petitioner.
- Then, if the owner of the mark protection title has no opinion or after receiving opinions of the owner of the mark protection title, the National Office of Intellectual Property must issue a decision within three months.
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