Procedures for invalidation of Trademark Registration Certificate

Trademark registration certificates can be terminated for many different reasons, possibly because the owner relinquishes ownership of the trademark. To terminate the validity of a legal trademark registration certificate, organizations and individuals must understand certain requirements and procedures. The article below will explain this issue to help you do it quickly, easily and economically.

Cases of invalidation of Trademark Registration Certificate

The validity of the Trademark Registration Certificate may be terminated in the following cases:

• The owner of the protection title does not pay fees or charges to maintain its validity or extend its validity according to regulations.
• The owner declares a waiver of ownership of the trademark.
• The owner of the protection title no longer exists or the owner of the Trademark Registration Certificate is no longer doing business without a legal successor.
• The trademark must not be used by the owner or the person authorized by the owner for a period of five consecutive years before the date of the request for termination without just cause, except where the use has been commenced or restarted at least three months before the date of the request for termination.
• The owner of the Trademark Registration Certificate for a collective mark does not control or ineffectively controls the implementation of regulations on the use of collective marks.
• The owner of the Certificate of Trademark Registration for a certification mark violates regulations on the use of certification marks or fails to control or ineffectively controls the implementation of regulations on use of certification marks.
• The use of a protected mark for goods or services by the mark owner or a person authorized by the mark owner causes consumers to misunderstand the nature, quality or geographical origin of the product.
• A protected trademark becomes the common name of the goods or services registered for that trademark.

Procedures for invalidation of Trademark Registration Certificate

Profile components

To request invalidation of the Trademark Registration Certificate, the documents include:

• Declaration of termination or invalidation of industrial property protection certificate according to Form No. 08 in Appendix II of Decree No. 65/2023/ND-CP.
• Evidence (if any): If any, documents proving the trademark is not used or other grounds.
• Authorization document (in case the request is submitted through a representative).
• Explanation of the reason for the request (clearly stating the number of protection titles, reason, legal basis, the content of the request to partially or completely terminate the validity of the protection title) and related documents.
• Copy of fee payment voucher (in case of payment of fees via postal service or direct payment to the National Office of Intellectual Property account).

Execution order

Step 1: Receive application

Organizations and individuals submit 01 set of dossiers requesting termination of the validity of industrial property protection titles to the National Office of Intellectual Property through one of the following forms:

• Submit online via the Administrative Procedures Information System of the Ministry of Science and Technology.
• Directly or via postal service to the headquarters of the National Office of Intellectual Property in Hanoi or 2 representative offices of the Department in the city. Ho Chi Minh and Da Nang.

Step 2: Processing the application

In case the title owner himself requests to terminate the validity of the protection title:

• Check the application in terms of form and draw conclusions about the validity of the application;
• Check the validity of the protection certificate requesting termination;
• Issue a decision to terminate the validity of the protection title at the request of the applicant.

In case the request to terminate the validity of the protection title is made by a third person:

• Check the application in terms of formality (evidence, reason for termination request) and draw conclusions about the validity of the application;
• The National Office of Intellectual Property issues a notice to the title holder of the third person’s opinion, so that the title holder can have an opinion. The National Office of Intellectual Property can organize a direct exchange of opinions between a third person and the certificate holder;
• Based on consideration of the opinions of the parties, the National Office of Intellectual Property issues a decision to partially/entirely terminate the validity of the protection title or notify refusal to terminate the validity of the protection title;
• The decision to terminate the validity of the protection title is recorded in the National Register of Industrial Property and published in the Industrial Property Official Gazette within 60 days from the date of the decision.

Resolution deadline

The time limit for resolving the validity termination of the Trademark Registration Certificate is determined as follows:

In case the owner of the protection title requests termination: 15 working days from the date of receipt of the request.

In case the third party requests termination:

• 03 months from the end of the 02-month period when the National Office of Intellectual Property notifies in writing the third party’s opinion to the protection title holder without any response or from the date of receipt of the opinion of the owner of the protection certificate;
• This period can be extended by a maximum of 03 months if the owner of the protection title has a different opinion than the owner of the request to terminate the validity of the protection title.
• The time to carry out other related procedures necessary to resolve the request to terminate the validity of the protection certificate is not included in the above time limit.

Consulting services on procedures for invalidating trademark registration certificates in Long Phan

Long Phan provides consulting services and supports procedures for invalidating trademark registration certificates. We have a professional team with rich experience in the field of intellectual property, who will ensure you complete the procedure quickly, accurately and effectively. Long Phan’s services include:

• Consulting on cases of termination of validity of trademark registration certificates;
• Consulting and support in preparing complete termination documents;
• Instructions on the order and procedures for invalidating trademark registration certificates;
• Authorized representative carries out procedures to quickly terminate the validity of the trademark registration certificate;
• Advise on how to handle issues that arise during the termination process;
• Consulting on other issues related to trademark registration.

With experience and professionalism, Long Phan will bring optimal solutions to businesses in the process of protecting intellectual property rights. Terminating the validity of a Trademark Registration Certificate requires businesses to fully comply with the process and follow the correct procedures. For detailed consulting support, please contact the hotline 0906735386 of Long Phan for the best guidance and support.