Issue
The trademark application of a chain of 9 stores was about to be refused for being similar to a mark registered in 2018. Renaming would have meant replacing all signage and packaging.
What HDS did
Investigated use of the cited trademark and obtained a bailiff's record; compared 3 options; requested termination of the cited mark for 5 consecutive years of non-use; responded to the refusal notice and followed the application until the certificate was issued.
Result
The cited mark was invalidated; the client was granted a certificate for 2 classes and did not have to rename.
Background
The client runs a chain of 9 coffee shops in Hanoi, using the same brand name since 2020. In 11/2023, the company filed its own trademark applications for class 30 (coffee, coffee-based drinks) and class 43 (coffee shop services), without searching beforehand.
In 8/2025, the Intellectual Property Office of Vietnam issued an intended refusal because the client's mark was confusingly similar to another company's mark, registered in 2018 for the same two classes. The company was preparing to open 3 more stores and had already ordered packaging for all five, so it needed to decide on a course of action within a few weeks.
Legal issue
Under Point e, Clause 2, Article 74 of the Law on Intellectual Property, a sign that is identical or confusingly similar to a mark registered under an earlier application, for identical or similar goods or services, is not distinctive. The main wording of the two marks differed by only one syllable and covered the same classes, so arguing only that the marks were not similar had a low chance of success.
The search showed that the cited mark's certificate was still valid, but no products bearing the mark could be found on the market. Point d, Clause 1, Article 95 allows a certificate to be terminated if the mark has not been used for 5 consecutive years before the request without a legitimate reason. A mark terminated on this ground no longer blocks later applications, under the exception in Point h, Clause 2, Article 74.
How HDS handled it
- Comparing options. HDS presented 3 approaches to the board: renaming (the client estimated about VND 1.2 billion to replace signage and packaging); buying the cited mark (requires contacting the owner, with a risk of inflated prices); requesting termination for non-use. The client chose the third and kept the purchase option as a fallback.
- Investigating use. Over 3 weeks, a specialist checked the website, social media pages of the mark owner, e-commerce platforms, local dealer networks and product declaration records. The most recent activity under the mark dated from 2019. A bailiff prepared a record of the state of the websites and business addresses.
- Filing the termination request. In 9/2025, HDS filed the declaration, explanatory statement and evidence with the Intellectual Property Office of Vietnam, requesting termination for all goods and services in classes 30 and 43.
- Responding to the refusal notice. Within the deadline set by the Office, HDS submitted its opinion stating that a termination request was under review and asking the Office to rely on its outcome when concluding on the client's application.
- Following up until the certificate was issued. The Office notified the mark owner of the request; the owner did not respond before the deadline. After the termination decision, HDS supplemented the client's application and paid the certificate issuance fee when notified.
| Timing | Work done |
|---|---|
| 11/2023 | Client files the trademark application on its own |
| 08/2025 | The Office issues an intended refusal; the client contacts HDS |
| 09/2025 | Investigation completed; termination request filed |
| 12/2025 | Deadline passes; the owner of the cited mark does not respond |
| 03/2026 | The Office issues the termination decision |
| 06/2026 | Client receives the trademark registration certificate |
Result
The client received the trademark registration certificate for all 2 classes in 6/2026, keeping its name, signage and the packaging already ordered. Total service fees and government fees were far lower than the estimated cost of renaming.
HDS also advised the company to keep invoices, contracts and signage photos year by year, to prove use if anyone later requests termination of the company's own trademark.
Lessons for businesses
- Search trademarks before filing and before producing signage and packaging. The cost of a search is very small compared with the cost of renaming.
- An intended refusal is not the final result. Check whether the cited mark is still in use before deciding to rename.
- A registered trademark can still lapse if not used for 5 consecutive years, so keep evidence of use.
Legal basis
- Law on Intellectual Property 2005 (amended in 2009, 2019, 2022, 2025): Point e and Point h, Clause 2, Article 74; Point d, Clause 1, Article 95.
The client's name and identifying details have been removed to protect confidentiality. The results above relate to the specific file in this case and are not a promise for any other case.
