Short answer: An agent or representative of a trademark owner is prohibited from registering that mark in their own name — Article 87(7) of the Intellectual Property Law (Consolidated Document 67/VBHN-VPQH), implementing Article 6septies of the Paris Convention, on condition that the mark is “protected in a member country”. When a former agent has registered your mark, you have two routes to invalidate the certificate: (1) bad faith — Art. 96(1)(a), available throughout the protection term but hard to prove; (2) lack of registration right — Art. 96(2)(a), easier to prove but subject to a 05-year limit from the grant date. The critical point: after 05 years, only the bad-faith route remains.
1. The typical scenario
A foreign or domestic company authorizes an agent or distributor to sell goods bearing its trademark in Vietnam. Later, after the cooperation ends, the company discovers the former agent has secretly filed and obtained a registration certificate for that very mark in its own name — then uses the certificate to exert pressure, demand a “transfer” fee, or block the true owner’s goods. This is a classic trademark hijacking scenario the law anticipates.
2. Legal basis: Article 87(7)
Article 87(7) provides that an agent or representative of a trademark owner may not register the mark in their own name — the domestic implementation of Article 6septies of the Paris Convention for the Protection of Industrial Property. Note the condition: the owner’s mark must be “protected in a member country” of the Paris Convention. In other words, this protection is tied to the mark being protected in at least one member country — owners should verify their mark’s protection status before relying on it.
3. Two reclaim routes and their time limits
- Route 1 — Invalidation for bad faith (Art. 96(1)(a)): request invalidation on the ground that the registrant acted in bad faith. Advantage: available throughout the protection term — no 05-year cap. Disadvantage: proving “bad faith” in practice is often difficult (medium confidence), requiring evidence that the registrant knew the mark belonged to the owner yet deliberately hijacked it. No outcome should be promised in advance.
- Route 2 — Invalidation for lack of registration right (Art. 96(2)(a)): request invalidation because the certificate holder had no right to register (violating Art. 87(7)). Advantage: easier to prove — the agency/representation relationship and the unlawful filing suffice. Disadvantage: a 05-year limit from the certificate’s grant date.
The critical point: once 05 years have passed since grant, the Art. 96(2)(a) route closes — only bad faith remains. So upon discovery, calculate the time limit immediately and prioritize the fitting route.
Special case: if the owner has not registered the mark anywhere, the Art. 96(2)(a) route is still available — but evidence of actual use (invoices, contracts, advertising, packaging…) must be prepared to prove true ownership of the hijacked mark.
4. Evidence to prepare
- Agency/representation relationship: agency contracts, distribution agreements, authorization documents, work emails — proving the registrant was once your agent/representative;
- Rights in the mark: registration certificates in Vietnam or a Paris Convention member country (for the “protected in a member country” condition); if registered nowhere — evidence of actual use;
- Hijacking conduct: the application, the certificate granted to the former agent, demand letters or pressure tactics (if any) — for bad-faith proof;
- Timeline: the grant date of the former agent’s certificate — to calculate the 05-year limit for the Art. 96(2)(a) route.
5. Prevention: avoid having to “reclaim”
- Register your trademark in Vietnam early, as soon as business plans exist — don’t wait for the agent to “register on your behalf”;
- Contract clauses: expressly prohibit the agent from registering your marks and require assignment of any filed applications/certificates;
- Monitor the Industrial Property Gazette periodically to detect identical/similar filings early.
FAQs
My former agent registered my trademark — can I get it back?
Two routes exist: invalidation for bad faith (Art. 96(1)(a), available throughout the term) or for lack of registration right (Art. 96(2)(a), 05-year limit from grant). Assess evidence and time limits immediately.
What if more than 05 years have passed since grant?
The “lack of registration right” route is time-barred — only the harder bad-faith route remains.
My mark isn’t registered anywhere — can I still reclaim it?
Yes via Art. 96(2)(a), but you must prepare evidence of actual use to prove true ownership.
When does Art. 87(7) apply?
When the owner’s mark is “protected in a member country” of the Paris Convention and the registrant is the owner’s agent/representative.
Legal sources
- Intellectual Property Law — Consolidated Document 67/VBHN-VPQH: Art. 87(7); Art. 96(1)(a), 96(2)(a).
- Paris Convention for the Protection of Industrial Property — Art. 6septies.
Your company discovered a former agent or distributor registered your trademark in Vietnam and you need to assess the reclaim routes, time limits or evidence? Reach us via the Contact page of FLAT Law Firm.
The legal content of this article is reviewed by FLAT’s AI Legal Council and submitted to the owner for approval; it is not an opinion of a licensed lawyer and does not replace legal advice for specific cases.
For reference only, not legal advice.
