Trademark registration in Vietnam follows the goods-and-services specification: the certificate covers only what was registered. For well-known marks, however, the law creates a protective ring that reaches beyond that specification. This article explains how cross-class protection for well-known marks works, where its practical limits lie, and why it does not replace a supplementary filing strategy.
Cross-class protection under Article 129.1(d)
For ordinary marks, infringement under Article 129.1 centres on goods and services that are identical, similar or related to the registered specification. Point (d) is reserved for well-known marks: using a sign identical or similar to a well-known mark — including a translation or transliteration of it — for any goods or services is treated as infringement, even where those goods or services are neither identical, similar nor related to those bearing the well-known mark.
Cross-class protection is not, however, an unconditional monopoly over every field. The owner must still prove two layers: that the mark is well-known in Vietnam under the Article 75 criteria, and that the other party’s use is likely to cause confusion as to origin or to create a false impression of a connection with the well-known mark’s owner. If a sign is used in a wholly remote field with no association to the owner, enforcement becomes considerably harder.
Stopping a rival filing in another class
At the application stage, a sign identical or similar to a well-known mark may still be refused for other goods or services under the refusal grounds in Article 74 of the IP Law where registration would be likely to cause confusion or take advantage of the well-known mark’s reputation. Owners have two early-intervention routes: third-party observations under Article 112 during examination, or an opposition under Article 112a within the statutory window from publication — a window that Law No. 131/2025 shortened to three months for trademark applications from 1 April 2026, making gazette monitoring essential.
If the rival has already obtained a registration, the owner can seek cancellation under Article 96 on the grounds that the applicant had no right to register or that the mark did not meet the protection conditions when granted. In all three scenarios, an evidence file proving fame at the relevant date is decisive; preparing it early keeps the company from being caught off guard when a conflicting filing surfaces.
Practical limits and the role of supplementary filings
Cross-class protection is a conflict-resolution mechanism, not proactive market coverage: fame and the false-impression element must be proved afresh in each case, which takes time and money. A supplementary registration, by contrast, gives a clear, examined right that is easier to use with e-commerce platforms, customs and distribution partners. For classes the group genuinely plans to enter within three to five years, direct filing is almost always cheaper than a dispute.
A balanced strategy usually combines: proactive filings for core and adjacent classes with real use plans; an up-to-date fame evidence file to deploy Article 129.1(d) for remote classes; and industrial property gazette monitoring to oppose in time. Note that a supplementary registration left unused for five consecutive years can still be terminated under Article 95.1(d), so purely defensive filings should be weighed against genuine use plans.
Frequently Asked Questions
Is a well-known mark protected beyond its registered classes?
Yes. Under Article 129.1(d) of the IP Law, using a sign identical or similar to a well-known mark for any goods or services — even ones neither identical, similar nor related to the well-known mark’s specification — is infringement if it is likely to cause confusion as to origin or a false impression of connection with the well-known mark’s owner. The owner must prove fame in Vietnam under Article 75.
Can a rival’s similar mark in another class be stopped?
Three routes exist: third-party observations under Article 112 or an opposition under Article 112a during examination (the trademark opposition window is now three months from publication under Law No. 131/2025); cancellation of a granted registration under Article 96 where the mark never met the protection conditions; and enforcement against actual use as infringement under Article 129.1(d) once your mark is recognised as well-known.
How far does the extended scope of protection reach?
In principle the extension reaches all goods and services, but in practice it depends on proving that consumers could be confused as to origin or misled into assuming a connection with the well-known mark’s owner. The closer the field is to the well-known mark’s sector, the easier the association is to prove; the more remote the field, the heavier the evidence burden on fame and false impression. It is not an absolute monopoly over every field in every case.
Is additional class filing needed to protect a well-known mark?
File additionally for classes with genuine business plans or adjacent to your core sector, because a registration gives clear, easily enforced rights, whereas fame must be proved case by case. For remote classes with no use plans, cross-class protection of the well-known mark is the fallback layer. Remember that a mark unused for five consecutive years may be terminated under Article 95.1(d).
FLAT Law Firm advises on the real scope of well-known mark protection and designs supplementary filing portfolios aligned with your Vietnam business plan. Contact us for a review of your group’s current trademark portfolio.
This article has been quality-reviewed by the FLAW AI Legal Council