Temporary suspension of trademark application examination is a new regulation in the Law on Intellectual Property 2022. This regulation allows the application content examination process to be temporarily suspended in some specific cases. The purpose is to ensure comprehensive appraisal results and accurate assessment of the object requiring protection. The following article by Long Phan will analyze in detail the regulations on temporary suspension of trademark application examination in Vietnam.

Regulations on the appraisal of trademark registration applications

Examining a trademark application is an important stage in the trademark registration process. This stage determines whether the application meets legal and regulatory requirements for trademarks. Pursuant to Article 109 and Article 114 of the Law on Intellectual Property 2005, the evaluation of a trademark application includes:

• Appraise the form of the trademark application to assess the validity of the application;
• Appraise the content of the trademark registration application to evaluate the possibility of granting a protection title and determine the scope of protection.

This process is to ensure that the registered trademark complies with legal regulations. The appraisal results are the basis for granting or refusing to grant a Trademark Registration Certificate.

Cases requiring temporary suspension of trademark application examination

Article 117 of the Law on Intellectual Property 2005 (amended in 2022) adds new regulations on procedures for requesting temporary suspension of trademark application examination and stipulates that there are 02 cases leading to temporary suspension of trademark application examination, including:

1. Case 01: Temporarily suspend the application examination process in case the applicant submits a request to temporarily suspend the application examination and request to terminate or revoke the validity of the Trademark Registration Certificate according to exclusion cases. prescribed in Points e and h, Clause 2, Article 74 of this Law. Based on the results of resolving the request to terminate or invalidate the Trademark Registration Certificate, the state management agency on industrial property rights continues the application appraisal process.

In particular, points e and h, Clause 2, Article 74 of the Law on Intellectual Property 2005, a trademark is considered indistinguishable when:

• The sign is identical or similar enough to cause confusion with the nest’s brand
  Other organizations and individuals are protected for identical or similar goods or services on the basis of an application with an earlier filing date or priority date in case the application enjoys priority rights, including registration applications. Trademark registration is filed under international treaties to which the Socialist Republic of Vietnam is a member, except in cases where such trademark registration is terminated according to the provisions of Point d, Clause 1, Article 95 or is canceled. invalidate according to the provisions of Article 96 according to the procedures specified in Point b, Clause 3, Article 117 of the Law on Intellectual Property 2005;
• Signs that are identical or confusingly similar to trademarks of other organizations or individuals that have been protected for identical or similar goods or services whose trademark registration has expired for less than three years. , except in the case that the trademark registration is terminated according to the provisions of Point d, Clause 1, Article 95 according to the procedures specified in Point b, Clause 3, Article 117 of the Law on Intellectual Property 2005.

1. Case 02: Temporarily suspend the process of evaluating the trademark application in case of receiving a copy of the notice of acceptance of the case from the competent Court about a third party filing a lawsuit related to the right to register the subject matter. industrial property or trademark is registered in bad faith. Based on the results of the Court’s resolution, the state management agency on industrial property rights continues the application appraisal process.

Thus, if a trademark registration application falls into the above cases, the subsequent applicant can request that the National Office of Intellectual Property temporarily suspend the processing of the application to pursue procedures for terminating or invalidating the trademark reference brand. If successful, the National Office of Intellectual Property will issue a decision to terminate or cancel the validity of the reference mark and will withdraw this mark from the reference document and continue to examine the applicant’s trademark application. The following application (issuance of protection title). The time taken to process the procedure to terminate the validity of the control mark will not be counted in the time limit for processing the application of the following applicant.

Procedures for requesting a temporary suspension of trademark application examination

Currently, the Law on Intellectual Property 2022 does not have detailed instructions on procedures for suspending the evaluation of trademark applications. Competent agencies are in the process of drafting guidance documents.

It is expected that this procedure will include submitting a request for suspension with supporting documents. The National Office of Intellectual Property will consider the request and make a decision to suspend the appraisal if eligible.

Some issues to consider before requesting to suspend the examination of a trademark application

Before requesting a suspension of appraisal, the applicant needs to carefully consider a number of issues. This helps evaluate the effectiveness and feasibility of the suspension request.

• First, it is necessary to consider the legal basis for the request for suspension. Make sure the case complies with the provisions of Article 117 of the Law on Intellectual Property 2022. If this case does not fall, the request to suspend will not be accepted.
• Second, evaluate the possibility of success in terminating or invalidating the control mark. There needs to be a solid basis to carry out this procedure. Otherwise, a pause may prolong application processing time without producing the desired results.
• Third, at the time of receiving the appraisal results of the trademark application with the intended refusal due to Point e or h, Clause 2, Article 74 of the Law on Intellectual Property, the applicant can also consider resubmitting the application in 2005. register a new mark similar to the existing mark intending to request a suspension of examination because the outcome of suspending the request for examination at the current stage is uncertain.

Consulting services on temporary suspension of trademark application examination

Consulting services on temporary suspension of trademark application examination are increasingly interested by many organizations and individuals. Customers can choose a reputable consulting unit to receive advice on new regulations and evaluate the possibility of suspension. With professionalism, Long Phan can advise you most accurately and appropriately on regulations related to temporary suspension of trademark application examination. Long Phan’s services include:

• Advise on the possibility of suspending a trademark application.
• Support in preparing documents to request suspension. Consultants help collect and complete necessary documents according to regulations. Ensure documents meet the requirements of competent authorities.
• Representing customers to submit applications and work with state agencies.
• Monitor processing progress and return results to customers.

Temporary suspension of trademark application examination is a new regulation that provides opportunities for applicants. To apply effectively, it is necessary to clearly understand the regulations and consider carefully before implementing. Customers still have questions about this issue. Please contact Long Phan via hotline 0906735386 for the most detailed support. Long Phan is ready to provide appropriate solutions to help you protect your rights during the process of temporary suspension of trademark application examination.