CHANGE TO THE APPEAL PROCEDURE IN VIETNAM

Circular 01/2007/TT-BKHCN dated 14 February 2007 by the Ministry of Science and Technology (“Circular
01) is one of the key legislations for establishing IP rights in Vietnam as it sets forth in details the
requirements, processes and time frames for almost all procedures before the National Office of
Intellectual Property of Vietnam (NOIP) concerning IP rights, from filing, registration, amendment,
assignment, licensing to appeal against rejections. This key legislation has undergone several
amendments over the years, and the most recent change occurred in 2017, taking effects as from 15
January 2018 (“the 2018 Amendment”).

The 2018 Amendment affects most of all aspects of IP prosecution, but the most note-worthy can be
seen in the procedure for settling appeals against trademark rejections before the NOIP. Such a change
was received with continual debates in the IP attorney community and all agree that the NOIP should
soon issue further guidance on the matter, with an aim to the coherence and clarity of the procedure.

In the 2018 Amendment, it is expressly stated that during the appeal procedure, the decision/
notification subject to the appeal and the related application are considered with their circumstances
and status as of the date of issuance of such a decision/ notification. “New circumstances” are
considered not within the scope of the appeal, and thus are not accepted for an appeal settlement.
These “new circumstances” include:

- Any amendments, supplementations to the application that occur after the issuance of the
decision/ notification;

- New circumstances that have not been submitted by the applicant during the prosecution of the
application;

- New circumstance that are not within the responsibility for search or verification by the NOIP
during the prosecution of the application.

With such a regulation, the NOIP seems to make a U-turn on their normal procedure for appeal
settlement. Before the 2018 Amendment, when facing a refusal by the NOIP, the applicant was entitled
to make amendments to its applications (for example, to limit the list of goods/ services, to remove the
refused part of the trademark in case of partial refusal, etc.) or to seek consent letters or assignment
from the cited mark owner in order to overcome the refusals. But now, all these options seem no longer
available, since no amendment occurring after the date of refusal is accepted, and any consent letters or
assignment shall be deemed “new circumstances” in light of the 2018 Amendment. So the question is in
that situation, what procedure is available to the applicants, or they just have to re-file the application
and once again await the NOIP’s decision in 1-2 years or even more?

No clear answer is given to this question to date, even when it was raised in the conference held by the
NOIP in late December 2017 between the NOIP and IP agents in preparation for the implementation of
the 2018 Amendment. However, with the current wordings of the 2018 Amendment, it seems that a new
process has been contemplated for the mentioned situation of “new circumstances”. That is a procedure
called “withdrawing the refusal”, according to which, if the applicant is aware of and then submits a
“new circumstance” that is not considered during the examination of the application yet and can affect
the examination result, the applicant can request the NOIP to consider withdrawing the refusal as issued
and restore the examination process.

However, no further regulation on detailed process of the “request for withdrawing the refusals as
issued”, especially on the statutory limitation for filing such a request, is promulgated, making it vague
and less feasible for both the applicants to make use of it and the IP agents to advise their clients. The IP
attorney community is waiting for the NOIP’s reply to their questions in this regard.

Of note, it is explicitly stated in the 2018 Amendment that in case of no response to the substantive
examination, it is not possible for the applicants to file any arguments or opinions at a later stage,
including filing an appeal against the refusal once it is issued. This is a codification of the practice that
has been adopted by the NOIP so far. Further, under the 2018 Amendment, in case of an appeal
involving several parties and one of them does not submit any response against the others’ arguments,
the appeal shall be settled basing on the contentions of the other parties. Also, the 2018 Amendment
provides for a process for seeking expert opinions from independent experts or a consultancy board.
These are all new comparing to the Circular 01 before this amendment.