Conditions for well-known trademark registration in Vietnam

Trademark is a sign used to distinguish goods or services of different organizations or individuals, can be seen, a visible sign in the form of letters, words, drawings, or images including holograms, or a combination thereof, represented in one or more colors. Goods’ trademarks seem to be valuable intellectual assets that have an important role in the business operation and development of the company in the market. In current years, has plenty of companies in the market spend a lot of power to construct, develop trademarks, own brands and turn their trademark/brands into well-known trademarks/brands. As Stipulated in Clause 20, Article 4, The Law on Intellectual Property: “Well-known Trademark means a mark widely known by consumers throughout the territory of Vietnam.”

Therefore, with the concept mentioned above, the Vietnamese law has given the well-known scope of a trademark to be throughout the territory of Vietnamese. However, there is a question that arises: in the case that if a trademark is well-known in many countries or around the world, but if it is not or has not been widely known by Vietnamese consumers throughout the territory of Vietnam, is that Trademark considered a well-know trademark under the Vietnamese Law? We together take a look at the well-known trademark evaluation criteria as follows:

Criteria for evaluating well-known trademarks in Vietnam

In international legal documents such as the Paris Convention, the TRIPS agreement only stipulated the issue of protection of well-known Trademarks without specifying criteria to determine how a Trademark will be considered well-known. Vietnam is a member of the 2 documents above, so it is necessary to establish a clear and specific legal form to put the provisions of the convention and agreement into practice.

As Stipulated in Clause 20 Article 4, Clause 75 The Law on Intellectual Property 2005 edited, amended 2009;  Clause 20 Article 4: “Well-known Trademark means a mark widely known by consumers throughout the territory of Vietnam”. As Clause 75 The Law on Intellectual Property and Article 42.3 Circulars No. 01/2007/TT- BKHCN has given some criteria to evaluate:

1. The number of the customer have known about the trademark through the trade, the use of goods or services tagged the Trademark or through the advertisement;
2. The territory that goods, services tagged the Trademark are allowed to trade;
3. The sales from sale goods or provide services tagged the Trademark or the number of goods was sold, the number of services was provided;
4. How long is the Trademark used continuously;
5. The prestige of the goods, services tagged the Trademark;
6. The number of countries that protects the Trademark;
7. The number of countries that recognizes the Trademark is well-known;
8. Price of the transfer, price of the licensing, the value of the capital investment of the Trademark.

Therefore, we can easily see that most of the criteria are not complete. It is general but not specific. Firstly, to recognize the well-known trademark, what is the number of Clients use it? How many sales? Is the reputation widely known? Is it used continuously? Or the number of the country recognize? etc …

And when the competent state agency considers whether a trademark is well-known, organizations and individuals need to provide documents to prove that the statistics are sufficient. In addition, we can see that there is a contradiction between the provisions on the criteria for evaluating famous trademarks under the provisions of the Intellectual Property Law, if in the definition in Clause 20, Article 4, the concept of a well-known mark is only required to be widely known by consumers throughout the territory of Vietnam. then in Clause 6, Clause 7, Article 75 on the re-evaluation criteria, there is an additional requirement on the number of countries protecting the Trademark. Many countries recognizing well-known trademarks. So, for example, a trademark has reached a sufficient number of people throughout the national territory, but it does not meet the criteria for the number of countries to recognize and protect it. And how will a well-known trademark be recognized if these criteria conflict with each other? For example, depending on the type of product, some products bring in very high sales, but there are also products of small value, what if the total sales are not large? Overcoming these shortcomings, the “well-known trademark” regulation in Vietnam’s Intellectual Property Law is the implementation of Article 6 bis of the Paris Convention 1883 to which Vietnam is a contracting party. Contents of Article 6 stipulate: “It is the responsibility of the Member States to refuse or cancel the registration or to prohibit the use of a mark which is likely to confuse with a mark which has been considered by the competent authority of the country of registration or use as a famous trademark in that country”. In the General Recommendations of WIPO, it is stated as follows: “A Member State may decide that a mark is well-known, even if the mark is not well-known or, if the Member State applies to paragraph (c) above, knowing full well that the mark is not well-known in any a reasonable amount of the public in your country”. From here, it can be seen that to evaluate the popularity of a trademark, it is not necessary to evaluate all of the above criteria, but on a case-by-case basis. However, through the above analysis, it is clear that the regulations on the criteria for evaluating famous trademarks need to be reviewed and clarified.

Grounds for the establishment of well-known trademark rights in Vietnam

The issue of establishing rights to well-known trademarks is specified at Point a, Clause 3, Article 6 of the consolidated document No. 07/VBHN-VPQH in 2019 consolidating the Intellectual Property Law as follows: Industrial property rights to well-known Trademark are established based on use, regardless of registration procedures”. In Clause 2, Article 6 of Decree 103/2006/ND-CP guiding the implementation of several articles of The Law on Intellectual Property: “Industrial property rights to the Trademark are established based on the practice of widely using such mark as prescribed in Article 75 of the Intellectual Property Law without having to carry out registration procedures”. Circular No. 01/2007/TT-BKHCN also stipulates: “Industrial property rights to well-know Trademark: marks shall be established based on the actual public use that has made them well known and for those marks, the registration with the Intellectual Property Office is not required. While exercising the rights to an upon the settlement of a dispute over a well-known mark, its proprietor shall evidence his/her its rights with appropriate proofs specified in Article 75 of the Intellectual Property Law.”

According to the above provisions of law, As can be seen, well-known trademarks are not required to be registered, Accordingly, two agencies review and recognize a trademark as well-known, That is the Court and the Intellectual Property Office only at the request of organizations and individuals on a case-by-case basis. Intellectual Property Office will not accept applications as well as applications for recognition of well-known trademarks. Well-known trademark review requests may take place under the following circumstances:

• When an organization or individual submits an application for registration but is rejected because the mark falls under the exclusionary factors or is rejected for confusingly similar to another’s marked. Organizations and individuals will establish rights for this mark through proving the well-known mark.
• When organizations and individuals request the invalidation of a protection title or object to the granting of a registration certificate for a trademark based on a confusingly similar mark to a well-known Trademark.
• When there are organizations and individuals requesting handling of industrial property rights violations related to well-known trademarks.
• When organizations and individuals request handling of unfair competition practices related to well-known trademarks.

The above regulation on establishing rights is consistent with international practice on well-known trademarks. By the laws of the United States as well as the laws of most countries that Well-known trademarks do not need to establish rights by registration procedures, but will be established based on actual use. Criteria for practical use is the most important criterion for a mark to be recognized as a well-known trademark. It is through continuous use that the trademark is known to consumers. For well-known Trademarks in Vietnam, in fact, the number of marks recognized as well-known in Vietnam is still quite small. This fact is due to many reasons. There are reasons for unclear regulations as mentioned above. The second reason is that the National Office of Intellectual Property (“NOIP”) is now quite strict in the procedures for recognizing well-known trademarks. Because there is no specific quantitative standard to evaluate the status of a well-known mark, The NOIP seems to be increasingly strict in recognizing well-known trademarks. In fact, when assessing whether a trademark is considered famous or not. NOIP often requires proof of continued use of the mark, especially in Vietnam. Therefore, if there is no evidence of use in Vietnam, a well-known trademark all over the world can hardly be recognized as famous in Vietnam. On the other hand, the ambiguity in the definition and criteria of a well-known Trademark sometimes leads to emotional decisions of the competent authority in the recognition or non-recognition of a well-known Trademark. Currently, there is no official procedure for the recognition of a well-known trademark in Vietnam. In fact, NOIP usually recognizes a mark as well-known in a single procedure during due diligence, objections, or cancellations concerning a particular case. As a result, the recognition of a well-known trademark is only recognized in that single case and not systematically administered as a public reference. According to the provisions of law, well-known trademarks must be recorded in the List of Well-known Trademarks kept at the NOIP (Article 42.4, Circular No. 01/2007/TT-BKHCN). However, in reality, the making, keeping, and publishing of this list have not yet been done.

Scope of well-known trademark protection

Currently, the law on the intellectual property of Vietnam and the world for famous trademarks with a very high level of protection, in particular, for well-known Trademarks, the scope of protection of a well-known Trademark is wider than that of an ordinary mark and covers all products and services that are not identical or similar. Therefore, all acts of using signs identical or similar to well-known trademarks for any goods or services including goods and services that are not of the same type, are not similar and are not related to goods and services on the list of goods and services bearing famous trademarks. If it is likely to cause confusion as to the origin of the goods or to give a false impression of the relationship between the user of that sign and the owner of the well-known mark, is considered to be infringing upon the industrial property rights of well-known trademarks. So what are the protection criteria for these famous trademarks?

The term of protection for famous trademarks

The Intellectual Property law also gives these trademarks a special privilege: Industrial property rights to well-known marks are protected indefinitely from the date the mark is recognized as a well-known trademark stated in the decision on recognition of the well-known mark. However, we also do not rule out the case that a well-known trademark is not protected anymore. That’s when the trademark is no longer well-known, In other means, when the criteria for making a well-known trademark no longer exist or Trademark has become the common name of a certain type of product or service (This is also known as trademark opacity).

The above are the current provisions of Vietnamese law on well-known trademarks and the conditions for the protection of well-known trademarks. New provisions of the current Vietnam Intellectual Property Law to protect the well-known trademarks in Vietnam and guiding documents are in line with international regulations, specifically Article 6 bis of the Paris Convention, and in line with the practice of international law.