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New point of the Intellectual Property Law 2022 on trademark registration

Regarding trademark registration, the revised Law on Intellectual Property in 2022 has amended and supplemented a number of articles of the Law on Intellectual Property 2005 (amended and supplemented in 2009, 2019). Viet An Law will present in the article below some new point of the Intellectual Property Law 2022 on trademark registration to note in the process of commercializing trademarks of enterprises in Vietnam.

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    Legal basis

    • Law on Intellectual Property 2005.
    • Law amending and supplementing a number of articles of the Intellectual Property Law in 2022.

    New regulations on sound trademark registration

    According to the provisions of Article 105.2 of the Intellectual Property Law 2022, the applicant must submit:

    • Magnetic recording of the mark on a medium allowing easy playback. Currently, the most popular media are CDs, DVDs and MP3 records; and
    • Graphical representation of that sound mark (i.e. a sound mark in Vietnam must be represented in graphic form) to check the distinctiveness and usability of that sound for purposes of register.

    In addition, in order to ensure that there is a strict protection mechanism for sound marks and to avoid overlapping sound trademark rights with copyright, Article 73.7 (signs not protected as trademarks) is added to the Intellectual Property Law 2022 to provide one more case as a basis for rejecting a sound mark as “a sign containing a copy of a work, unless otherwise permitted by the owner of that work”. This is a fairly open rule and can be used in many trademark cases other than those involving sound marks. For example, a long piece of musical notation, such as an orchestra or piano piece, is unlikely to meet the sound trademarkability requirements.

    No longer registered as an affiliate trademark

    The provisions on protection of associated marks in Article 4.19 and Article 74.2(c) are annulled, i.e. applicants may not register multiple identical or similar trademarks for products or services of the same or similar type or related to each other. Instead, these marks must still meet the ability to distinguish.

    Therefore, at present, the associated trademark will not be registered in Vietnam. The previous trademarks will continue to exist until the expiration of the protection title and be renewed as a regular trademark.

    Additional provisions on the distinctiveness of trademarks

    • According to Article 74.2 on the distinctiveness of trademarks, the commonly recognized signs are specified clearly before the filing date to avoid the case that the mark is put on the market and becomes popular later. filing date but prior to the assessment date.
    • In addition, in order to minimize cases where newly registered trademarks are obstructed by being identical or confusingly similar to previously registered trademarks for groups of goods and services that are identical or similar but cannot be used. For consecutive years, a new trademark owner can apply for an annulment request for these discontinued trademarks to protect his/her trademark legally. Or in cases where the control mark has expired for more than 3 years (down from 5 years compared to the provisions in the old law), the new mark that wants to be registered can still achieve distinctiveness under Article 74.
    • However, the new Law also adds signs that are not protected in the name of trademarks if they are identical or confusingly similar to other types of intellectual property (overlapping intellectual property) such as plant varieties, copyright (name, character image, character image). At the same time, agreeing with Article 72.1 on protection of sound marks, subjects are also not entitled to trademark protection with signs identical or confusingly similar to the national anthem or international anthem already existing in the world.
    • In addition, the Intellectual Property Law also adds a sign that is not considered to be distinguishable as “the usual shape of the goods or part of the goods, the usual shape of the packaging or the container”. chemical” is used “regularly and generally” widely “before the filing date”. This is a new content associated with the practice of 3-way trademark registration, which is a basis for refusal of registration in order to avoid consumer confusion and ensure the distinguishing function of the mark.

    New regulations on trademark registration

    • The Intellectual Property Law also adds new provisions on opposition to trademark registration applications in Article 112a and suspends application examination in Article 117.
    • The regulation on “bad faith” (bad intentions, dishonesty) when carrying out trademark registration procedures is a legal term that has been used in countries around the world such as the UK and the US and has just been added to Articles 96 and 117 aim to overcome the situation of “trademark speculation” based on the principle of “first – to – file” in Vietnam. Accordingly, the protection title will be refused to grant or after grant may be invalidated on the basis that the applicant registers the mark with bad faith.
    • This is an important legal basis to challenge the validity of a trademark to regain your trademark rights under the trademark objection or cancellation procedure. In the process of dealing with infringements of “speculative” subjects, having a basis for bad faith also facilitates the enforcement agency in the process of handling third-party applications.

    Some proposals to implement new points of the Intellectual Property Law 2022 related to trademarks

    Sound Trademark Regulations

    The Law on Intellectual Property amended and supplemented in 2022 stipulates that sound marks are “represented in graphic form” behind “sound marks” which is something that needs further discussion. This regulation can be understood that “sound marks” will be of two types: “sound marks that can be represented in graphic form” and “sound marks that cannot be represented in graphic form”. However, the Intellectual Property Law only recognizes “sound marks that can be represented in graphic form” that can be considered as a type of sign for registration as a sound mark.

    As can be seen, stipulating that “can be represented in graphic form” followed by “sound marks” should only be an option of the applicant’s choice and not a mandatory requirement. Because, “sound marks” is a sign that cannot be perceived visually, so the key factor is to put in place regulations on the form to represent that sound mark (similar to a trademark template for a visually recognizable mark).

    In Europe, it is required by law that registrants of a sound mark can choose to represent it by submitting a sound file or an exact representation of the sound in a musical notation (such as a staff), and only one of the two facilities is kept in the registration record. In the United States, to describe the sound mark, the applicant also does not need to submit drawings or graphics of the sound mark, but only needs to submit the audio file in the form of a CD / digital video disc / audio video tape or submit via the electronic system attaching electronic files in .wav, .mp3, .mpg, .avi formats and not exceeding 5MB.

    Based on the recommendations of the World Intellectual Property Organization (WIPO) or the International Trademark Association (INTA) and the experience of countries with a long history of non-traditional trademark registration, in our opinion, representations of “sound marks” should be provided which may be in the form of graphics of the sound constituting the mark, a written description of the sound, an audio file (such as electronic audio file in the form of an MP3 or, WMA, WAV file) or any combination of the foregoing to ensure the true nature of the registration of a sound mark as a trademark as the applicant desire. In addition, the online application form for a sound mark should also be noted for its convenience in digital data transmission, and should be further developed to facilitate the accurate examination of the trademark registration agency.

    Currently, the Government has not yet issued a document guiding the implementation of new provisions of the Intellectual Property Law in the field of industrial property, especially trademarks. Therefore, when these documents are released, they will be the basis of more specific regulations to guide current problems in order to be consistent with the general regulations in the world and the actual needs of trademark protection of applicant.

    Above are some new point of the Intellectual Property Law 2022 on trademark registration. Some other prominent new points related to trademarks have been presented in the article New points of the Vietnam Intellectual Property Law 2022 related to trademarks of Law Viet An.

    If you have any inquiries about trademark registration or need to register a trademark in accordance with current regulations, please contact Viet An Law Firm for the fastest and most effective advice.

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