Vietnam must introduce further regulations to tackle bad-faith filings and support rights holders, argue Rouse lawyers, in this week’s Opinion column. 

In recent years, Vietnam’s IP landscape has undergone significant reforms aimed at addressing the growing issue of bad-faith trademark filings. However, these are not enough as the mechanisms fall short of addressing other bad-faith patterns and place a heavy burden on legitimate rights holders. 

This article explores the current legal framework, ongoing challenges, and strategic recommendations for trademark owners navigating the complexities of bad-faith filings in Vietnam.

Recent reforms explicitly target bad-faith filings

Vietnam’s IP framework operates on a first-to-file system, which, while efficient, is also susceptible to bad-faith filings. This vulnerability has led to significant legal reforms aimed at curbing such practices. For instance, the amended IP Law, effective 1 January 2023, explicitly includes bad-faith filing as an independent ground for invalidation (Article 96.1.a) and refusal (Article 117.1.b).

Articles 34.2 and 34.3 of Circular 23 elaborate on this issue. They explicitly state that bad-faith filings are grounds for the invalidation, opposition or refusal of trademark registrations or applications. To successfully oppose a bad-faith filing, the brand owner must:

• demonstrate the bad-faith applicant’s awareness of the brand owner’s mark (which should be widely used in Vietnam or recognised as well known in other jurisdictions for identical or similar goods or services); and
• provide evidence of improper or dishonest intent behind the filing.

These provisions address free-riding and bad-faith applications by mandating evidence of the applicant’s awareness and dishonest intent to unfairly benefit from a registered trademark. This ensures fair competition and protects consumer goodwill by preventing opportunistic registrations that exploit established brand reputations.

However, IP Vietnam has not provided specific guidance on the application of new bad-faith provisions and no trademark cases based on the new provisions have been finalised. The amendments are relatively new, with the circular effective from 30 November 2023. Opposition and invalidation proceedings in Vietnam also require lengthy periods – up to three and five years, respectively. 

Brand owners are, then, advised to demonstrate:

• the well-known status and widespread use of their trademark prior to the applicant’s filing date; and
• a pattern of the applicant’s bad-faith behaviour, such as:
  • the applicant’s pursuit of multiple trademark registrations within the same or various industries that are legitimately owned by different entities, particularly when there is no evidence of the applicant’s genuine intention to use said marks;
  • the applicant's attempts to negotiate buyouts from legitimate trademark owners; and/or
  • the applicant sending cease-and-desist letters to exploit the value of its registered marks. 

Adopting this approach to trademark disputes remains relevant both before and after the amendments to the IP Law.

Authorities have a firm stance against bad faith

Under Article 96 of the previous IP Law, bad faith was primarily a factor for extending timelines to initiate invalidation proceedings. Bad faith was not a direct ground for trademark invalidation, opposition or refusal. 

Consequently, decisions in which IP Vietnam and local courts have dealt with bad-faith filings under the previous IP law do not clearly cite grounds of bad faith. Still, since these cases align with the recently implemented bad-faith provisions and address free riding and bad faith, they offer an indication of how the authorities are tackling bad-faith filings in Vietnam.

We identified two instances of bad-faith filings addressed by IP Vietnam and the courts. These bad-faith applications involved the SNAPCHAT and HYUNDAI marks. They concluded in 2018 and 2016, respectively, before the bad-faith filing stipulations introduced by the amended IP Law.

In the case of SNAPCHAT, IP Vietnam invalidated the defendant’s SNAPCHAT trademark across all services, citing confusing similarity to Snap Inc’s well-known mark and the potential for consumer confusion. While IP Vietnam’s decision did not explicitly cite bad faith, applying for a mark that is confusingly similar to a well-known mark can be interpreted as free riding.

In the case of HYUNDAI, defendant Vietnam Hyundai Electronics Co Ltd had used Hyundai Motor Company’s registered trademark to distribute electric bicycles, a product that Hyundai Motor had never manufactured or distributed. Vietnam Hyundai Electronics also incorporated the HYUNDAI trademark into its:

• trade name;
• business practices; and
• domain name (‘hyundai-ebikes.vn’).

This was found to create consumer confusion and falsely implied an affiliation. The court upheld Hyundai Motor’s claims of trademark infringement and unfair competition, imposed administrative sanctions and ordered the cessation of infringing activities.

Although the court’s ruling did not explicitly cite bad-faith filing, the defendant’s acts of unfair competition demonstrated characteristics of bad faith – specifically, freeriding. To establish this interpretation, the plaintiff would need to provide evidence of its trademark’s well-known status and demonstrate the likelihood of consumer confusion, thereby proving the defendant’s intent to capitalise on its established reputation. 

No precedent of bad faith as a decisive factor 

More recently, petitioners cited bad faith as a contributing factor in two trademark invalidation cases involving DERMATICS and ILLY, which had been filed before the amended IP Law explicitly recognised bad faith as an independent ground for invalidation. These cases were recently settled by IP Vietnam, with the decisions published in the National Gazette in February and March 2025.

The case of DERMATICS concluded in December 2024 with a decision favourable to the petitioner, Dermatics International Pte Ltd. Dermatics had sought to invalidate the MD DERMATICS mark, claiming that the defendant did not have the right to register the mark due to prior use and its role as a distributor. While the defendant’s bad faith was cited under Article 96 of the previous IP Law to justify extending the invalidation’s time limit, it was not the decisive ground for the decision. IP Vietnam invalidated the trademark solely because the defendant was deemed to lack the right to registration.

In ILLY v LILY, IP Vietnam rejected Illycaffè SPA’s invalidation request. Illycaffè SPA had argued that the LILY mark was similar to its global ILLY coffee mark and there were grounds for partial invalidation, but IP Vietnam rejected the request due to late filing and lack of evidence for dishonest registration. IP Vietnam also found insufficient evidence of ILLY’s prior well-known status and observed differences in the marks’ meaning, pronunciation and visual appearance.

Two key takeaways emerge from these trademark decisions. First, while bad faith may be a factor considered in the context of some issues (eg, the statute of limitations for invalidation requests), it has not yet been the decisive factor for trademark refusal or invalidation. 

Second, these decisions suggest that IP Vietnam applies a rigorous standard when assessing claims of well-known trademark status, demanding substantial proof before granting such recognition. Consequently, brand owners seeking to protect their trademarks in disputes must be prepared to provide extensive evidence of their mark’s reputation and should not rely solely on arguments of bad faith without robust supporting documentation.

Unlike decisions on invalidation, which are publicly accessible, IP Vietnam does not publish notices of opposition settlement in the National Gazette. A search of publicly accessible court records also yielded no additional bad-faith cases.

Different types of bad-faith filings and enforcement issues

Despite the new regulations, challenges remain in effectively addressing trademark squatting, particularly in cases where the mark in question:

• has not been widely used in Vietnam;
• is not recognised as well known in any jurisdiction; or
• is well known in other jurisdictions but for different goods or services.

The regulatory framework also does not provide mechanisms that address other bad-faith patterns, including:

• nuisance filings intended to disrupt legitimate trademark owners; and
• registrations that exploit prior relationships (eg, between distributors and brand owners).

It is also important to note that defensive filings or re-filings, aimed at circumventing use requirements or vulnerabilities related to non-use cancellation, are not classified as bad-faith filings in Vietnam, unlike in other jurisdictions (eg, the European Union or China).

In addition, the enforcement of regulations against bad-faith filings is hampered by:

• a lack of detailed guidelines regarding:
  • the recognition of widely used marks or well-known status;
  • the assessment of dishonest intentions (currently, factors such as patterns in the applicant’s behaviour or exorbitant claims for infringement damages are not considered); and
  • a comprehensive classification of bad-faith filings that encompasses various types observed in practice; and
• the burden of proof lying heavily on the trademark owner (which, coupled with a lengthy examination process, can be both costly and discouraging for legitimate trademark owners).

Recommendations for rights holders

Several strategies are recommended to effectively navigate the complexities surrounding bad-faith filings.

Prioritise certain jurisdictions

Trademark owners should strategically choose the jurisdictions in which to register trademarks, while considering markets, manufacturing countries, shipping routes and potential future consumers. Defensive filings can also serve as a protective measure.

Timely monitoring

Regular monitoring of the National Gazette is crucial for the early detection of potential bad-faith filings, allowing for prompt action.

Supporting measures

To bolster defences against bad-faith filings, trademark owners should:

• maintain proper documentation evidencing widespread use or fame to substantiate claims of reputation;
  • consult with reputable local agents to develop effective strategies tailored to the Vietnamese market; and
  • engage with IP Vietnam through these agents to request the issuance of proper guidelines that reference regulations from other jurisdictions.

Navigating the landscape of bad-faith filings in Vietnam poses unique challenges, but with the right knowledge and strategies, trademark owners can protect their intellectual property from malicious actors. By understanding the legal framework, recognising the difficulties involved, and implementing proactive measures, trademark owners can significantly enhance their chances of success in this dynamic environment.

This article was first published on WTR in May 2025.