Procedures for requesting cancellation of protection title and termination of validity

1. Right to make suggestions

All organizations and individuals with directly related rights and interests who find that the granted trademark, industrial design, utility solution, or invention affects the rights of their protection certificate have the right to Recommend requesting the authorities to invalidate the granted protection certificate.

2. Legal basis

The legal basis for requesting cancellation is as follows:

“According to the provisions of Article 96 of the Intellectual Property Law: Cancel the validity of the protection certificate

1. The protection title is completely invalidated in the following cases:

a) The applicant applies for trademark registration with bad intentions;

b) The invention registration application is filed contrary to the regulations on security control for inventions specified in Article 89a of this Law. Intellectual Property Law;

c) Patent registration application for an invention that is directly created based on genetic resources or traditional knowledge about genetic resources but does not disclose or incorrectly discloses the origin of genetic resources or traditional knowledge about genetic resources. Genetic resources are included in that application.

2. The protection title will be invalidated in whole or in part if all or part of that protection title does not meet the provisions of the Law. Intellectual Property Law on registration rights, protection conditions, amendments and supplements to applications, disclosure of inventions, first filing principles in the following cases:

a) The applicant for registration does not have the right to register and the person with the right to register must not transfer the right to register for inventions, industrial designs, layout designs, or trademarks;

b) Industrial property objects do not meet the protection conditions specified in Article 8 and Chapter VII of Intellectual Property Law;

c) Amending or supplementing an industrial property registration application expands the scope of objects disclosed or stated in the application or changes the nature of the object requested for registration stated in the application;

d) The invention is not fully and clearly disclosed to the extent that a person with average knowledge of the relevant technical field can implement the invention;

d) The invention granted a protection certificate exceeds the scope disclosed in the initial description of the patent application;

e) The invention does not meet the first-to-file principle specified in Article 90 of Intellectual Property Law.

3. If a protection title is fully or partially invalidated, the entire or partially canceled protection title will not take effect from the time of granting the title.

4. Organizations and individuals have the right to request the state management agency in charge of industrial property rights to annul the validity of the protection title on the condition that fees and charges must be paid. 

The statute of limitations for exercising the right to request invalidation of a protection title is throughout the term of protection, except in the case of requesting the invalidation of a protection title for a trademark, then the statute of limitations is five years from the date of grant of the title. protection certificate or from the effective date of international trademark registration in Vietnam.

 5. Based on the results of reviewing the request to invalidate the protection title and opinions of relevant parties, the state management agency on industrial property rights decides to invalidate the protection title. or notice of refusal to invalidate the protection title.

6. This regulation also applies to the invalidation of international registration of trademarks and industrial designs.”

3. Submit application

Dossier to request termination and revocation of trademark protection certificate includes:

- Declaration requesting termination or invalidation of protection certificate according to Form No. 08 in Appendix II of Decree 65;

- Evidence related to the request to terminate/cancel the Protection Title,

- Authorization document (in case the request is submitted through a representative);

- Explanation of the reason for the request (clearly stating the certificate number, reason, legal basis, content of request to terminate or cancel part or all of the validity of the protection certificate) and related documents ;

- Copy of fee payment voucher (in case of payment of fees and charges via postal service or direct payment to the account of the state management agency on industrial property rights).

4. Resolve the application

The procedure for handling requests for termination of validity and requests for revocation of protection titles is as follows:

In case a third party requests to terminate or invalidate a protection title, within 01 month from the date of receiving the request, the National Office of Intellectual Property shall notify in writing the third party's opinion. The protection title owner sets a time limit of 02 months from the date of notification for the protection title owner to give their opinion. The National Office of Intellectual Property can organize a direct exchange of opinions between a third person and the relevant protection title holder;

Based on the consideration of the opinions of the parties, the state management agency on industrial property rights shall issue a decision to terminate/cancel part or all of the validity of the protection title or notify the refusal to terminate/cancel all or part of the protection certificate. Cancel part or all of the validity of the protection title according to the provisions of Clause 5, Article 95 and Clause 5, Article 96 of the Intellectual Property Law;

4.5. Complaint resolution decision

If you do not agree with the content of the decision or notice of handling the request to terminate or invalidate the protection title of the National Office of Intellectual Property, the requester or related party has the right to appeal the decision or notice. according to the provisions of law on complaints related to industrial property procedures.

4.6. Announcement

The decision to terminate or invalidate the protection title is published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within 60 days from the date of signing the decision.

[Article 96, Article 99 of Intellectual Property Law; Article 32 of Decree 65/2023/ND-CP; Article 34 Circular 23/2023/TT-BKHCN]