The Five-Year Non-Use Termination Risk and the Revival Exception Under Article 95

Registering a trade mark in Vietnam is only the beginning of the protection journey. Under Article 95 of the IP Law, a registered mark can be terminated if it has not been used by its owner or a licensee for five consecutive years without justifiable reason. This non-use termination mechanism serves to prevent the register from being cluttered with dormant marks that block legitimate applicants — but it also creates a real maintenance risk for brand owners who register marks defensively or delay their commercial launch in Vietnam.

The Non-Use Rule

Article 95.1(d) provides that the validity of a protection title shall be terminated in whole or in part if the mark “has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity.”

The key elements are:

• Five consecutive years: The non-use must be continuous and uninterrupted for a full five-year period. Any genuine use within the period resets the clock.
• By the owner or a licensee: Use by an authorised licensee counts as use by the owner. If the mark is licensed and the licensee is using it commercially in Vietnam, the registration is safe.
• Without justifiable reason: If the owner can demonstrate a legitimate reason for non-use — such as import restrictions, regulatory delays, or force majeure — the termination may be avoided. However, purely commercial reasons (choosing not to enter the market, product development delays) are unlikely to qualify.
• Prior to a request: The five-year period is measured backwards from the date a third party files a termination request with IP Vietnam. This is important for calculating the relevant period.

The Revival Exception: The Three-Month Rule

Article 95 contains a critically important proviso that many practitioners overlook: the mark cannot be terminated if the owner commences or resumes genuine use of the mark at least three months before a third party files the termination request. This is the revival exception.

In practice, this means:

• If your mark has been unused for four years and eleven months, and you resume genuine commercial use in Vietnam, you are protected against a termination request filed after that resumption — provided at least three months pass between your resumption of use and the third party’s request.
• If you resume use only two months before the termination request is filed, the three-month threshold is not met, and the revival exception does not apply.
• The use must be genuine commercial use — not token or symbolic activity designed solely to maintain the registration. It must involve real sales, distribution, or provision of services under the mark in Vietnam.

This three-month window creates a narrow but valuable opportunity for brand owners who become aware that a third party is preparing a termination action. If the owner acts quickly to resume genuine use, the mark can be saved — but only if the resumption predates the termination request by at least three months.

What Constitutes Genuine Use

Vietnamese law and practice do not provide a detailed statutory definition of “genuine use.” However, based on established practice and the Paris Convention standard (Article 5.C.2), evidence of genuine use should demonstrate:

• Location: Use within the territory of Vietnam.
• Time: Use during the relevant five-year period (or after resumption).
• Scope: Sufficient volume and frequency of commercial activity to demonstrate real market presence, not merely token transactions.
• Nature: Use of the mark as a trade mark — as a source identifier on or in connection with the registered goods or services, not merely as a decorative or descriptive element.

Evidence of use should include invoices, distribution records, product photographs, advertising materials, customs records, and any other documentation showing the mark in active commercial use in Vietnam.

Form of Use

The mark should be used in the form in which it was registered, or in a form that does not alter its distinctive character. Minor variations (such as small typographic adjustments) are generally acceptable, consistent with the Paris Convention principle that use in a form differing in elements that do not alter the mark’s distinctive character shall not invalidate the registration. However, significant alterations to the mark’s appearance may not qualify as genuine use of the registered mark.

Termination Procedure

A third party seeking termination of a registration for non-use files a request with IP Vietnam, supported by evidence or arguments demonstrating that the mark has not been used for five consecutive years. IP Vietnam then notifies the mark owner, who has the opportunity to respond with evidence of use or justifiable reasons for non-use. If the owner cannot demonstrate use, IP Vietnam may issue a decision terminating the registration in whole or in part (for specific goods or services).

Strategic Recommendations

• Use your marks in Vietnam: The best protection against termination is genuine commercial use. If you register a mark in Vietnam, ensure that commercial activity begins within the five-year grace period.
• Maintain use records: Keep organised evidence of your mark’s use in Vietnam — invoices, advertisements, product photographs, and distribution records. You may need to produce this evidence on short notice.
• Monitor for threats: If you become aware that a third party may be preparing a termination request, consider resuming genuine use immediately to take advantage of the three-month revival window.
• License strategically: If you cannot use the mark directly, license it to a Vietnamese distributor or partner whose use counts as owner use.
• Audit dormant marks: Periodically review your Vietnamese portfolio for marks that are not in active use. Decide whether to maintain, license, or voluntarily cancel them before they become targets for third-party termination actions.

Key Takeaway

Article 95 imposes a clear obligation: use it or risk losing it. A trade mark that sits unused on the Vietnamese register for five consecutive years is vulnerable to termination by any interested third party. However, the three-month revival exception provides a narrow but real lifeline for owners who resume genuine use before a termination request is filed. Proactive use, careful record-keeping, and strategic licensing are the best defences against non-use termination in Vietnam.