Proving Acquired Distinctiveness in Vietnam: How to Save a Descriptive Mark

When IP Vietnam refuses a trade mark application on the ground that the sign is descriptive or otherwise lacks inherent distinctiveness, there is a statutory escape route: the applicant may demonstrate that the mark has acquired distinctiveness through use before the filing date. This doctrine, sometimes referred to as secondary meaning, is embedded in the proviso language of Article 74(2) of the IP Law, which states that certain non-distinctive signs may still be protected if they have been “widely used and recognised as a mark before the filing date.”

The Legal Standard

The threshold for acquired distinctiveness in Vietnam is demanding. The applicant must prove that, prior to the filing date of the application, the relevant Vietnamese consuming public had come to perceive the descriptive sign not as a description of the product but as an identifier of a specific commercial source. International recognition alone is insufficient — the evidence must demonstrate recognition within Vietnam.

This “before the filing date” requirement is strictly enforced. Evidence of use, advertising, or consumer recognition that postdates the application cannot be used to establish acquired distinctiveness. All evidence must relate to the period up to and including the filing date.

Categories of Evidence IP Vietnam Requires

IP Vietnam does not prescribe a fixed list of evidence, but in practice the following categories are expected in a comprehensive submission:

1. Sales Volume and Revenue

Annual sales figures for goods or services sold under the mark in the Vietnamese market, presented year by year. Invoices, distribution agreements, customs import records, and accounting statements demonstrating consistent commercial activity in Vietnam. The data should show sustained volume over a meaningful period, not isolated or sporadic transactions.

2. Advertising and Promotional Expenditure

Detailed records of advertising spend in Vietnam, broken down by year and by medium (television, online, print, outdoor, social media). Copies of actual advertisements that ran in Vietnamese media, media buying contracts, and promotional campaign materials. Evidence that the advertising reached a substantial Vietnamese audience is more persuasive than evidence of international campaigns that merely included Vietnam as one of many markets.

3. Duration and Continuity of Use

Evidence showing the length of time the mark has been in continuous commercial use in Vietnam. The longer and more consistent the use, the stronger the claim. Product packaging, labels, catalogues, brochures, and point-of-sale materials bearing the mark and dated to the relevant period should be submitted.

4. Geographic Reach Within Vietnam

Evidence that the mark is used and recognised across multiple regions of Vietnam, not confined to a single city or province. Distribution records showing delivery to retailers or customers in Hanoi, Ho Chi Minh City, Da Nang, and other major markets strengthen the claim that the mark has achieved national recognition.

5. Market Surveys and Consumer Recognition

Where available, consumer surveys conducted among Vietnamese consumers showing recognition of the mark as a source identifier rather than a descriptive term. The survey must be methodologically sound, target the relevant consumer demographic, and measure recognition specifically in Vietnam. While not mandatory, a well-conducted survey is among the most persuasive evidence available.

6. Media Coverage and Third-Party References

Press articles, editorial mentions, industry awards, and trade publication references in Vietnamese media that treat the mark as a brand rather than a descriptive term. Third-party evidence is valuable because it demonstrates that the mark’s recognition extends beyond the applicant’s own promotional activities.

7. Online Presence

Website traffic data from Vietnamese users, social media follower counts among Vietnamese audiences, e-commerce listings on Vietnamese platforms (Shopee, Lazada, Tiki), and evidence of Vietnamese-language online engagement. Digital evidence is increasingly relevant as a measure of brand recognition in Vietnam’s rapidly growing e-commerce market.

Timing and Procedural Considerations

The acquired distinctiveness claim is typically raised in response to a substantive refusal issued by IP Vietnam during examination. The applicant has three months (extendable by three months) to file the response and supporting evidence. The evidence must all relate to the period before the filing date.

If IP Vietnam upholds its refusal after reviewing the evidence, the applicant may appeal to the Board of Appeal within 90 days or initiate an administrative lawsuit. At the appeal stage, additional evidence may be submitted, but it must still relate to the pre-filing-date period.

Common Pitfalls

• Relying on international evidence: Global brand recognition does not substitute for Vietnamese market evidence. IP Vietnam assesses distinctiveness in the context of Vietnamese consumers.
• Insufficient volume: Sporadic sales or minimal advertising spend will not meet the threshold. The evidence must show sustained, substantial commercial activity.
• Post-filing evidence: Evidence generated after the application filing date is inadmissible for establishing acquired distinctiveness. Timing is critical.
• Missing the response deadline: Failure to respond to IP Vietnam’s refusal within the prescribed period results in the refusal becoming final.

Strategic Recommendations

• Begin collecting evidence before filing: If you plan to file a descriptive mark in Vietnam, organise sales data, advertising records, and media coverage before submitting the application.
• Focus on Vietnamese market evidence: Prioritise evidence that is specific to Vietnam: Vietnamese-language advertisements, sales figures from Vietnamese distributors, and recognition among Vietnamese consumers.
• File an inherently distinctive mark in parallel: While building evidence for a descriptive mark, file an inherently distinctive alternative to secure immediate protection.
• Commission a consumer survey if possible: A professionally conducted survey among Vietnamese consumers can be the most compelling evidence, particularly when other categories of evidence are modest.

Key Takeaway

Acquired distinctiveness is the statutory safety valve for descriptive marks in Vietnam, but it demands rigorous, Vietnam-specific evidence gathered before the filing date. International reputation alone will not suffice. Applicants must demonstrate that Vietnamese consumers recognise the mark as a source identifier through sustained sales, advertising, and commercial presence within the Vietnamese market.