A Chinese company files a trademark application in Vietnam — and receives a refusal notice from the IP Office — what avenues exist to save the mark? Refusals are common: the mark is deemed identical or confusingly similar to a prior mark, descriptive of the goods, or lacking distinctiveness. This article maps the full response ladder: answering the refusal notice, administrative complaints, court litigation — and how to prevent refusals upfront instead of firefighting.
Three levels of response to a trademark refusal
Level 1: Answer the intended-refusal notice — the best opportunity
Before a formal refusal, the IP Office typically issues a notice of intended refusal stating the grounds. This is the golden window: the applicant may file written arguments within the prescribed time limit — explaining why the mark is distinctive and not confusingly similar to the cited mark (analysing each factor: pronunciation, appearance, meaning, different goods classes). In practice: many applications are accepted at this stage with strong arguments and use evidence. Don’t skip it — the cheapest and most effective step.
Level 2: Complain against the refusal decision
Once a formal refusal decision issues, the applicant may complain to the Director of the IP Office (first complaint). The complaint must dissect the refusal, present legal arguments and new evidence (if any): proof of extensive use, consumer surveys, expert opinions. If the first complaint fails, a second complaint goes to the Minister of Science and Technology.
Level 3: Sue in the administrative court
When administrative complaints fail, the applicant may challenge the refusal decision in the administrative court. This is long and costly — reserved for marks of major commercial value. The court reviews the legality of the refusal; a win forces the IP Office to annul the refusal and re-examine the grant.
Prevention: don’t get to firefighting
(1) Search before filing: check similar registered/pending marks in Vietnam — avoid filing marks certain to be refused. (2) File early: Vietnam follows first-to-file — first filer wins, prior use doesn’t count (except well-known marks). Chinese companies must file as soon as Vietnam plans exist, not after the factory is built — or face squatting. (3) Register the Chinese-character version: alongside the Latin mark, register the Chinese-character brand form — used in parallel by ethnic-Chinese consumers and the company itself. (4) Monitor the application: engage an IP agent to track examination and answer every Office notice on time.
Why Chinese applicants face refusals more often — and how to adapt
Certain filing patterns common among Chinese applicants draw refusals at higher rates. Transliteration traps: a Latin transliteration of a Chinese brand name often collides with existing Latin marks in ways the Chinese characters never would — search the transliteration, not just the characters. Descriptive Chinese terms: brand names that are distinctive in Chinese (evocative characters, classical allusions) may translate into descriptive or generic English/Vietnamese terms that the examiner rejects for lack of distinctiveness — file the figurative/stylised version alongside the word mark. Multi-class overreach: filing across too many Nice classes to “cover everything” multiplies citation risks and examination delays; prioritise the classes matching actual business lines, then expand. Squatter intelligence: before filing, check whether identical or near-identical marks were recently filed by unrelated Vietnamese entities — the signature of professional squatters who monitor Chinese brands entering Vietnam. Finding a squatter filing early lets you prepare non-use cancellation or opposition strategy in parallel with your own application rather than discovering it after investing in the brand. Prevention adapted to these patterns costs a fraction of a refusal fight. Calendar the watch deadlines now — most cancellations succeed simply because the other side forgot to respond in time.
Trademark strategy for Chinese investors — never register “for show”
Register the trademark “family”
Never register just one mark — register the “family”: the main mark (Latin) + Chinese-character version + logo/device + slogan + related domain names. Why: squatters who can’t grab the main mark grab variants (your Chinese characters, your logo) — then ransom them one by one. Cost: a few extra filings cost far less than one dispute.
Register along the product roadmap
File for current products + 3-year pipeline products (related goods/services classes). Reality: a battery company registers for “batteries” — 2 years later launches charging stations the mark doesn’t cover (different class) — re-filing then may find it squatted. Fix: file broader than current needs (within reason, avoiding non-use cancellation).
Monitor and enforce — marks don’t defend themselves
Registration isn’t the finish line: monitor (watch services) others’ similar filings → oppose promptly; and enforce (fake goods, infringements). Vietnamese reality: counterfeit Chinese-brand goods flood wholesale markets and e-commerce — unenforced marks lose value (and risk non-use cancellation if others use them unchecked).
Licensing the mark to distributors — control the chain
When distributors use your mark (signage, advertising, e-commerce listings), govern it by a trademark licence — not informal permission. The licence should define approved uses (what signage, which platforms), quality standards (misuse dilutes the mark), and termination consequences (stop all use on distributorship end). Uncontrolled distributor use creates two risks: naked licensing (rights weakened by uncontrolled use) and distributor squatting (the distributor registering your mark — see the anti-squatting topic). Every distributor agreement needs a trademark clause; every trademark clause needs an expiry date tied to the distributorship.
The trademark “family” — defensive registration
Never register just one mark — register the “family”: the main mark (Latin) + Chinese-character version + logo + slogan + domains. Why: squatters who can’t grab the main mark take variants — then ransom them one by one. Extra filings cost far less than one dispute. Also: file for future products (3-year pipeline) — never discover at launch that the mark doesn’t cover the new product.
Opposition watching — catching squatters early
Registration alone doesn’t protect — watch new filings: (1) subscribe to watch services (alerts on similar marks within days); (2) oppose quickly (opposition windows are short — miss it and you’re in cancellation proceedings, 10× costlier); (3) document use (invoices, ads, photos — proof of genuine use defeats non-use attacks). Enforce against fakes (market raids, e-commerce takedowns) — unenforced marks lose value and invite more infringement. Reality: trademark protection is 20% registration, 80% watching and enforcement — the certificate is the start, not the finish.
Trademark refusal checklist
On intended-refusal notice: (1) read the grounds carefully (which cited mark, which legal basis); (2) prepare written arguments: distinctiveness analysis, use evidence; (3) file within the deadline (late = rights lost). On formal refusal: (4) assess the mark’s commercial value — worth complaining/litigating?; (5) first complaint to the IP Office Director; (6) second complaint to the Minister of Science and Technology (if needed); (7) administrative litigation (major-value marks only). Prevention: (8) search before filing; (9) file early under first-to-file; (10) register the Chinese-character version; (11) engage an IP agent to monitor. Principle: firefighting costs ten times prevention — one pre-filing search beats any complaint.
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FLAT Law Firm advises Chinese investors in Vietnam across the full lifecycle: investment structuring, IRC/ERC procedures, tax, labour, intellectual property and dispute resolution. Contact us for advice tailored to your case.
This article has been quality-reviewed by the FLAW AI Legal Council