Vietnam’s Strict First-to-File Principle Under Article 90

Vietnam’s trade mark system is built on a first-to-file principle that is among the most strictly applied in the world. Under Article 90 of the Intellectual Property Law, when two or more applicants file applications for identical or confusingly similar marks for identical or similar goods or services, only the application with the earliest filing date or priority date may be granted protection. Unlike common-law jurisdictions such as the United States or the United Kingdom, prior commercial use of an unregistered mark in Vietnam offers almost no protection.

How Article 90 Works

Article 90 establishes a clear hierarchy: the earliest valid application prevails. If multiple applications are filed on the same date with the same priority, all applicants are required to reach an agreement to proceed with a single application. If no agreement is reached, all applications are refused. There is no discretionary balancing of equities, no examination of who used the mark first in commerce, and no consideration of who invested more in building brand recognition. The filing date is decisive.

This principle applies equally to national applications filed directly with the Intellectual Property Office of Vietnam (IP Vietnam) and to international registrations designating Vietnam under the Madrid Protocol. A Madrid designation is treated as a national application with a filing date corresponding to the international registration date or the date of subsequent designation.

The Limited Role of Prior Use

In Vietnam, trade mark rights are established by registration, not by use. Article 6.3(a) of the IP Law provides that trade mark rights arise from a decision issued by IP Vietnam granting registration or protection. An unregistered mark that has been used commercially in Vietnam — even for years — does not automatically create exclusive rights.

There are only two narrow exceptions where prior use may be relevant:

1. Widely Used and Recognised Marks (Article 74.2(g))

If an unregistered mark has been widely used and recognised in Vietnam for identical or similar goods or services before the filing date of a competing application, it may serve as a basis for opposing or refusing that application. However, proving “wide use and recognition” requires substantial evidence of commercial activity specifically within the Vietnamese market. International fame alone is insufficient unless it translates into demonstrable consumer awareness in Vietnam.

2. Well-Known Marks (Article 75)

Marks that qualify as well-known under Vietnamese law receive protection without registration. However, the threshold for well-known status is extremely high, requiring evidence that the mark is widely known by the relevant public throughout the territory of Vietnam. This is an exception reserved for globally prominent brands with significant Vietnamese market presence, not a practical alternative to registration for most businesses.

Bad Faith as a Corrective (Article 96)

The 2022 amendments to the IP Law introduced bad faith as an independent legal ground for opposing or invalidating a trade mark registration. Under Article 96.1(a), a protection title may be completely invalidated if the applicant filed the application with malicious intent. This provides a corrective mechanism for cases where a third party knowingly registers another’s mark to exploit its goodwill, block market entry, or extract payment. However, bad faith must be proven with evidence — it is not presumed simply because the mark was used by someone else first.

The Squatting Problem

Vietnam’s strict first-to-file system has made the country a hotspot for trade mark squatting. Because prior use confers almost no rights, opportunistic filers can register marks belonging to foreign brands that have not yet filed in Vietnam, then demand payment for assignment or threaten to block the legitimate owner from the market. Notable cases have involved individuals filing hundreds of applications for well-known foreign brands. The 2022 amendments aim to address this through the bad faith provisions, but prevention through early filing remains the most effective strategy.

Practical Consequences

The first-to-file principle creates several practical realities for businesses entering or operating in Vietnam:

• Registration is non-negotiable: If you plan to sell products or services in Vietnam, file a trade mark application before entering the market — or risk finding your own brand registered by someone else.
• Priority claims are valuable: If you have filed a trade mark application in another Paris Convention member country within the past six months, claim that priority in your Vietnamese filing to secure the earliest possible date.
• Use alone does not protect you: Even years of commercial use without registration leaves you vulnerable. Only registration establishes enforceable rights (with the narrow exceptions noted above).
• Speed matters: In a first-to-file system, delays are costly. Every day between your decision to enter the Vietnamese market and your filing date is a window of vulnerability.

Strategic Recommendations

• File early, file first: Submit your Vietnamese application as early as possible, ideally before you begin any commercial activity or public marketing in Vietnam.
• Use the Madrid Protocol: Vietnam is a Madrid Protocol member. If you already have a home registration or application, designate Vietnam through the Madrid system for efficient filing.
• Monitor the IP Vietnam database: Watch for third-party filings of marks similar to yours. The five-month opposition period after publication is your primary window to challenge conflicting applications.
• Preserve evidence of use: If you are already using a mark in Vietnam without registration, collect and organise all evidence of commercial use. This evidence may support a claim under Article 74.2(g) for widely used marks, or a bad faith challenge under Article 96.

Key Takeaway

In Vietnam, the earliest filing date wins. Prior use, brand reputation, and investment in marketing are largely irrelevant unless the mark qualifies as widely used, well-known, or the competing registration was made in bad faith. For any business operating in or planning to enter the Vietnamese market, prompt trade mark registration is the single most important step in brand protection.