Monotonous colors shall not be registered for trademark protection in Vietnam

Trademark protection supports enterprises in restricting counterfeiting, protecting their reputation, and enhancing their competitiveness in the market. However, not all enterprises grasp the provisions regarding which cases are eligible for trademark protection and which are not. Through the Article, Viet An Law will clarify that monotonous colors shall not be registered for trademark protection in Vietnam.

Monotonous colors shall not be registered for trademark protection in Vietnam

A trademark is a sign that distinguishes the goods and services of different individuals and organizations. Trademark protection registration is a foundation for individuals and organizations to protect and enhance their brand of goods and services. Marks are eligible for protection if they meet the following conditions:

• Being a visible sign in the form of letters, words, drawings, images, holograms, or a combination thereof, represented in one or more colors or sounds represented in graphics
• Being capable of distinguishing goods and services of the trademark owners from those of other subjects.

Pursuant to Article 74 of the 2005 Law on Intellectual Property (amended and supplemented in 2022):

“A trademark is considered indistinguishable if it is a sign in one of the following cases:

[…] a) Simple shapes and geometric figures, numerals, letters, or scripts of uncommon languages, except where such sign has been widely used and recognized in the name of a trademark before the filing date; […]”

Thus, according to this regulation, monotonous colors can be considered simple shapes, indistinguishable, and difficult to register for protection. Therefore, simplistic colors shall not be registered for protection. If you would like to register for a trademark in the form of colors, you shall combine the colors with letters or images or represent the colors in the form of letters or images. Accordingly, you will probably grant the c. Due to the long waiting time for a Trademark Protection Title (around 01 year), you should not use the trademark with a monotonous color. Instead, you had better combine the color with letters and images or represent the colors in letters or images to attract the consumer’s attention and differentiate your goods and services from those of other subjects.

For instance, the logo of Viet An Law combines colors with letters, and the colors are represented in curved lines, which are capable of distinguishing its specialty when registered for trademark protection:

Why is it difficult for monotonous colors to be registered for trademark protection?

• Lack of distinctiveness: Monotonous colors are extremely generic, and it is difficult to create a difference from other goods and services. This makes consumers hardly identify the origin of the goods.
• Creativity restriction: If a monotonous color is granted exclusive protection, this will limit the freedom of other enterprises to use that color for their products.
• Difficulty in determining the scope of protection: It is challenging to define the scope of protection for a monotonous color, as that color can possess various shades, and it is tough to distinguish the boundaries among such small differences.

Which other cases shall not be protected as trademarks?

In addition to monotone colors, a trademark shall not be protected or be rejected to be protected if it meets the following signs:

Invisible signs: such as sound, smell

Example:

• The ringtone sound when turning on a Nokia phone;
• Chanel perfume scent

Signs contrary to social ethics and public order or which harm national defence and security

Example: BIN LADEN (terrorist’s name)

Signs identical with or confusingly similar to national flags or national emblems

Example: Vietnam’s national flag.

Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names, or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio-politico-professional organizations, social organizations, or socio-professional organizations, or with international organizations, unless permitted by such bodies or organizations

Example: UNICEF’s symbols.

Signs identical with or confusingly similar to real names, aliases, pseudonyms, or images of leaders, national heroes, or famous personalities of Vietnam or foreign countries

Example: HO CHI MINH.

Signs identical with or confusingly similar to certification seals, check seals, or warranty seals

Example: ISO.

Signs which cause misunderstanding or confusion, or which deceive consumers as to the origin, properties, use, quality, value, or other characteristics of goods or service

Example: MADE IN VIETNAM (for products made in Vietnam).

Notes for registering trademark protection

Search trademarks thoroughly

• Why it is important: Before the registration, it is vital to check whether your trademark is identical to or confusingly similar to any previously registered trademarks. This avoids unnecessary legal disputes in the future.
• How to implement: You can search for yourself on the e-portal of the National Intellectual Property Office of Vietnam (IP Vietnam) or hire a reputable law firm specializing in IP to search.

Choose a reputable law firm

• Law firm’s role: The law firm specializing in IP will assist in drafting and submitting the documents, following the progress, and resolving any matters arising from the registration.
• Criteria for choosing a law firm: You had better select experienced, reputable agencies with a team of highly qualified lawyers, such as Viet An Law – IP Firm.

Complete the registration dossier

• Complete dossier: The registration profile includes the registration form, trademark sample, list of goods and services, and other relevant documents.
• Accurate information: All the information shall be accurate and complete to avoid rejection of the profile or delays in the approval process.

Choose the type of trademark

• Personal trademark: a mark used to distinguish the goods and/or services of one individual from those of other individuals.
• Collective trademark: a mark used to distinguish goods and/or services of members from those of non-members of an organization that is the owner of such trademark
• Certification trademark: a mark used to certify the quality, origin, materials, mode of manufacture, or other characteristics of goods and/or services

Determine the scope of protection

• List of goods and/or services: It is necessary to identify the types of goods and/or services registered for trademark protection.

• Nice Classification: Goods and services will be classified according to the international Nice Classification to determine the scope of protection.

Follow the approval process

• Processing time: The trademark examination process may last from 6 to 12 months.
• Result notification: The IP authority will announce the examination result in writing.

Renew the trademark

• Protection period: The Trademark Protection Title is valid for 10 years.
• Renewal: To continue protection, the renewal procedure shall be completed before the expiration date.

Above is the legal advice from Viet An Law that monotonous colors shall not be registered for trademark protection in Vietnam. If you have any further legal issues related to intellectual property registration, please contact Viet An Law for more specific and detailed consultation.