The Burden of Proving Trademark Use in Vietnam – Key Considerations for Trademark Owners

Under the previous regulations, trademark owners enjoyed considerable advantages when required to prove use of their trademarks in response to a third party’s termination request. However, with the changes introduced by Circular No. 10/2026/TT-BKHCN, effective as of 1 April 2026, proving use of a registered trademark has become significantly more challenging for certificate holders. This article highlights the key changes in the law that trademark owners should pay particular attention to when proving use of their registered trademarks in Vietnam.

Obligation to Use a Trademark

Under the Intellectual Property Law, as amended in 2009, 2019, 2022 and 2025 (“IP Law”), a trademark owner has an obligation to continuously use the trademark[1], and this obligation arises immediately upon grant of the trademark registration. This requirement stems from the legal definition of a trademark itself, namely, a sign used to distinguish the goods or services of different organizations or individuals[2], acccordingly, as a subject matter of industrial property rights, a trademark should be encouraged to be used in actual production and business activities. Registering a trademark merely to secure exclusive rights without actually putting it to use creates no economic value; rather, it only gives rise to “zombie trademarks” that prevent other parties with legitimate needs from using the trademark, thereby resulting in a waste of social resources.

This raises the legal questions of when this obligation is considered to have been breached and what sanctions apply to such a breach. In practice, the frequency with which a trademark is used depends greatly on the owner’s business capacity and market conditions: when business is going well, a company may receive huge number of orders and carry out multiple transactions, whereas when business conditions are unfavorable, its use of the trademark may likewise become sporadic.

To address these legal issues, the IP Law provides that a breach of the obligation to use a trademark for a short period does not give rise to legal consequences, however, if the period of breach reaches a threshold of five (5) consecutive years and the owner cannot provide a legitimate reason, the relevant sanction shall be imposed, whereby the trademark can be terminated (cancellation) at the request of any third party.[3]  

Burden of Proof

Burden of providing Proof within the Prescribed Time Limit

When a trademark is subject to a third party’s request for termination on the ground of non-use, is the owner required to rebut the request by providing evidence of use or a legitimate reason for non-use? Although there is no provision under the IP Law expressly addressing this issue, the sub-law regulations, including former Decree No. 65/2023/ND-CP and current Circular No. 10/2026/TT-BKHCN, provide that the procedure for handling a third party’s termination request must include the issuance of a notice to the trademark owner, setting a specified time limit for them to file a response before the Intellectual Property Office of Vietnam (“VNIPO”) renders a decision on accepting or rejecting the termination, in whole or in part, of the validity of the trademark registration. The VNIPO’s decision must be based on “the consideration of the information, evidence, arguments and documents provided by the parties.”[4]

This means that if the owner fails to provide evidence of use or a legitimate reason for non-use, the VNIPO may issue a decision terminating the validity of the trademark in respect of part or all of the registered list of goods or services.

Previously, the time limit for the owner of a national trademark registration to submit its response was two months from the date of the VNIPO’s notice. This period has now been reduced to one (1) month and may be extended once.[5] For trademarks under international registrations, the time limit remains three (3) months and may be extended once. Therefore, trademark owners should pay particular attention to this issue, promptly submit evidence within the prescribed period to avoid an unfavorable decision by the VNIPO.

Acts Constituting Use of a Trademark

The IP Law provides that use of a trademark by a licensee under a trademark license agreement is also deemed to constitute use of the trademark by the trademark owner.[6] However, merely licensing persons to use the trademark does not, in itself, constitute use of the trademark; rather, it serves as the legal basis for determining the legitimacy of the use of the trademark by the authorized user.[7]

At the same time, the IP Law expressly provides that use of a trademark means carrying out the following acts: [8]

• Affixing the protected trademark to goods, packaging of goods, business facilities, service facilities, and transaction documents in business activities;
• Selling, offering for sale, advertising for sale, displaying for sale, storing for sale, or transporting goods bearing the protected trademark;
• Importing goods or services bearing the protected trademark.

Accordingly, the owner should provide evidence demonstrating the above acts of use. 

Evidence of Genuine Use of a Trademark

To give effect to Vietnam’s commitments under the EU-Vietnam Free Trade Agreement (EVFTA), Circular No. 10/2026/TT-BKHCN has, for the first time, provided that a trademark shall not be considered to have been used where the use is merely formal and does not reflect actual commercial exploitation of the goods or services bearing the trademark. Several typical cases of non-genuine use have been expressly identified:[9]

• Use of the trademark solely for business preparation, research, or testing activities relating to the goods or services bearing the trademark, where no commercial transaction has arisen or there is no clear evidence of actual implementation aimed at putting such goods or services on the market;
• Use of the trademark solely within the internal activities within the organization of the registrant, without the purpose of providing the goods or services bearing the trademark to the market;
• Use of the trademark solely on documents, reports, designs, websites, advertising media, or other information media without being associated with the goods or services intended to bear the trademark and a plan to put such goods or services on the market, or where such goods or services have already been put on the market.

Previously, in the absence of specific regulations governing evidence, the VNIPO faced considerable difficulties in determining what types of evidence should be appropriate. Accordingly, the VNIPO often had to issue notices to the parties back an forth on multiple occasions to solicit their comments, arguments, and counterarguments before making a final decision on whether to accept the evidence of the actual use of the challenged mark as submitted. As a result, the proceedings were frequently prolonged, with many cases taking up to 10 years or more to reach a final resolution.

Under the new, more stringent and clear regulations, the IP Office can now proactively assess the evidence and make decisions much more quickly. However, for trademark owners, providing evidence that satisfies the new requirements above to substantiate genuine use of their trademarks may be considerably more challenging if they are not familiar with the applicable regulations and fail to have sufficient preparations.

In other words, when preparing evidence, priority should be given to quality rather than quantity. The evidence should clearly show basic information concerning the relevant party, time and place, and, in particular, clearly show the trademark and the goods or services corresponding to those registered. Under the regulations, where the trademark actually used differs from the one as registered, such use will only be considered use of the registerd trademark if the differences are insignificant and do not alter the distinctiveness of the trademark.[10]

Another important point is that the evidence must establish the use during the five-year period ending no later than three months before the date of the cancellation request. For example, if a termination request is filed on 1 October 2026, the owner must prove that the trademark was used during the period from 1 October 2021 to 30 June 2026. Evidence generated on or after 1 July 2026 will not be valid.

Statutory and Practical Exceptions

Statutory Exceptions

As stipulated by law, if the owner provides a legitimate reason for non-use of the trademark, the validity of the trademark will remain in force. Although the IP legislation does not contain a specific provision defining the “legitimate reasons” that may be accepted, in our view, in principle, the provisions of the Civil Code and Decree No. 65/2023/NĐ-CP (as amended and supplemented) concerning force majeure events and objective obstacles can be construed and applied as legitimate reasons justifying the trademark owner’s inability to use the trademark during the relevant period. The assessment will, of course, depend primarily on the persuasiveness of the evidence and the position of the competent authority in each particular case.

Practical Exceptions

In addition to the statutory exception based on a legitimate reason, there are cases where, even though the trademark owner does not submit any counterarguments or evidence of use, the VNIPO nevertheless rejects the third party’s termination request.

Based on our observations, such cases generally arise because the requesting party has failed to submit search results that the VNIPO considers to be “sufficiently reliable” to establish prima facie evidence showing that the trademark has not been used in the market. In practice, the VNIPO will generally accept search results from certain public entities, such as the “Vietnam Industry and Trade Information Center (VITIC)” of the Ministry of Industry and Trade, and the “Price and Market Magazine” of the Ministry of Finance, whereas self-conducted Internet search results are not accepted. In such circumstances, the trademark owner, although having no legitimate reason for non-use, may nevertheless benefit from the VNIPO’s decision to maintain the validity of the trademark.

This issue has given rise to considerable controversy because the requirement concerning the initial evidence to be provided by the requesting party, or the form of such evidence, has never been prescribed in any legal instrument or official examination guide.

Conclusion

Termination of a trademark on the ground of non-use is a distinctive aspect of trademark law. Trademark owners should consult with local counsel, proactively collect and retain evidence of trademark use so that they are well positioned to defend against a third party’s termination request when necessary.

Dang Hong Son, Director of Trademark & Design Department

[1] Article 136.2 of IP Law

[2] Article 4.16 of IP Law

[3] Article 95.1.d of IP Law

[4] Article 111.5.d of Circular 10/2026/TT-BKHCN

[5] Article 111.5.b of Circular 10/2026/TT-BKHCN

[6] Article 136.2 of IP Law

[7] Article 141 of IP Law

[8] Article 124.5 of IP Law

[9] Article 111.2 of Circular 10/2026/TT-BKHCN

[10] Article 40.2 of Decree 65/2023/NĐ-CP