Instruct the application owner on how to resolve when a trademark is refused protection

Article overview

How to resolve when a trademark is refused protection opens up opportunities for businesses to perfect and strengthen the protection of their intellectual property. This process requires legal understanding and appropriate strategy, but brings long-term benefits to the brand. The following article by Long Phan will guide customers on how to effectively deal with trademarks being refused protection to build a solid legal foundation for their trademarks.

Handling when a trademark is refused protection
Handling when a trademark is refused protection

Conditions for trademark protection

Pursuant to Article 72 of the Law on Intellectual Property 2005 (amended in 2022), to be protected, trademarks need to meet the general conditions as prescribed. Specifically as follows:

  • A visible sign in the form of letters, words, drawings, images, three-dimensional images or a combination of such elements, represented by one or more colors or audio signs expressed in the form of graphics;
  • Be able to distinguish the trademark owner’s goods and services from those of other entities.

In addition, not included in the cases where a trademark is considered non-distinguishing (Clause 2, Article 74 of the Law on Intellectual Property 2005 (amended and supplemented in 2022)

 Legal regulations on conditions for trademark protection
Legal regulations on conditions for trademark protection

In what cases is a trademark registration application refused for granting a protection title?

The refusal to grant a protection title for a trademark registration application is specified in Article 117 of the Law on Intellectual Property 2005 (amended in 2022). There are many cases that lead to the refusal to grant a protection certificate for a trademark. Specifically, when falling into the following cases:

  • There are grounds to assert that the subject matter stated in the application does not fully meet the protection conditions;
  • There are grounds to assert that the applicant does not have the right to register industrial property objects or register trademarks with bad intentions;
  • The application meets the conditions for being granted a protection title but is not an application with a priority date or the earliest filing date in the cases specified in Clauses 1 and 2, Article 90 of this Law;
  • The application falls into the case specified in Clause 3, Article 90 of this Law without the consent of all applicants;
  • Amendments and supplements to the application expand the scope of objects disclosed or stated in the application or change the nature of the objects requiring registration stated in the application.

How to resolve when a trademark is refused protection

When a trademark is refused protection, the applicant has many options to handle it. First, if the Intellectual Property Office announces its intention to refuse to accept the application, the application owner needs to review and correct errors in the application if possible.

Corrections may include adding missing information or providing rebuttals to the reasons for the proposed refusal. In case someone else objects to the trademark registration, the application owner can consider amending the trademark sample or narrowing the list of goods and services in the application.

However, it should be noted that the amendment must not change the nature of the mark and must not add goods or services to the list declared in the application. If you do not agree with the decision of the National Office of Intellectual Property, the applicant has the right to appeal.

The complaint process can begin with the Director of the National Office of Intellectual Property. If you still disagree with the results of the first complaint, the applicant can continue to complain to the Minister of Science and Technology or initiate an administrative lawsuit at a competent court.

Solutions when trademark protection is refused
Solutions when trademark protection is refused

Consulting and support services when trademarks are refused protection at Long Phan

Trademark protection is an important part of overall business strategy. With extensive experience in handling complex cases, Long Phan is confident in being able to help you overcome challenges in the trademark protection registration process and is committed to supporting you throughout the process. Resolve the problem and avoid the situation where the trademark is refused protection. Long Phan’s team will:

  • Carefully analyze the reasons why the trademark was refused protection.
  • Propose appropriate solutions for each specific case.
  • Assist in amending trademark applications when necessary.
  • Prepare professional response documents.
  • Representing customers in the process of working with competent authorities.
  • Update information on application processing progress.
  • Providing trademark management and protection services after being granted a protection certificate.

Resolving the problem when a trademark is refused protection is a process that requires specialized knowledge and experience. However, with professional support, you can completely overcome this challenge and successfully protect your intellectual property rights. If you still have questions, please contact Long Phan immediately via hotline 0906735386 for detailed advice and to build an effective trademark protection strategy.