New points of the Vietnam Intellectual Property Law 2022 related to trademarks

After 3 revisions in 2009, 2019 and 2022, the 2005 Intellectual Property Law has increasingly improved and met the practical needs of Vietnam’s international commitments on intellectual property as well as practical needs of the commercial intellectual property market. Regarding trademarks, Viet An Law presents some new points of the Vietnam Intellectual Property Law 2022 related to trademarks should be noted in the process of commercializing trademarks of enterprises in Vietnam.

Legal basis

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

Amending and supplementing some trademark concepts

New addition of sound trademark regulations

Stemming from the institutionalization of international commitments on the protection of non-traditional trademarks in the CPTPP, the sound mark shown in graphic form is one of the new conditions to be protected in the form of a trademark under Article 72 of the Law on Intellectual Property.

Unlike the regulations of other countries, Vietnam’s intellectual property law stipulates that a sound sign can only be protected as a trademark if it is presented in graphic form. However, this content has not been specifically guided as bar graphs, lyrics, or sound wave diagrams.

In addition, in order to avoid overlapping sound trademark rights with copyright, the applicant may not register an sound mark that “contains a copy of the work, except with the permission of the owner of that work”.

Modifying the concept of well-known trademark

• The assessment of well-known marks becomes really impossible to protect this group of marks before the revised Intellectual Property Law 2022 comes into existence. Therefore, the regulations on conditions for protection of well-known trademarks have narrowed the scope and object of consideration when evaluating well-known trademarks from “consumers” in general to “relevant public segments” to specialize in consumer perception in this case .
• Regarding the scope to assess the popularity, the regulation “in the whole territory of Vietnam” has been limited to “in the territory of Vietnam” to ensure the feasibility of assessing the popularity in practice.
• In the consideration and assessment of a trademark infringement, the determination of that mark as well-known is very important because there are many infringing factors that are extended to the case of well-known trademarks. The objective is to examine whether the use 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 the sign and the owner of the well-known mark.
• For example, infringement may constitute the use of a sign that is identical or simply similar to a well-known mark, or using such sign in the form of translation or transliteration in naming goods or services, even if they are not the same or related to the goods or services on the list of well-known marks.
• The determination of some criteria to evaluate a trademark as well-known has also been simplified. Instead of having to consider and evaluate all the criteria specified in Article 75 as before, it is only necessary to consider some or even only a certain criterion, facilitating the owner of a well-known mark. in protecting its trademark against infringement.

Eliminate the concept of affiliate trademarks

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.

Regulations on the distinctiveness of trademarks

According to Article 74.2 on the distinctiveness of marks, the commonly recognized signs are clearly defined as “before the filing date” to avoid the case that the mark is put on the market and becomes popular. variable after the date of application but before the date of examination.

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 of these discontinued trademarks to protect his or her trademark.

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 such as names of varieties, copyrights, national anthems, international anthem has existed 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” 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.

Regulations on handling of trademark-related violations

• Previously, the regulation of criminal liability applied only to individuals, now there are regulations for the subject being a commercial legal entity.
• The acts considered as using the mark in Article 124 are also extended to sale, display for sale and transportation of goods bearing the protected mark. The fact that this regulation clarifies the term “circulation” has been controversial in the past.
• The concept of counterfeit goods on intellectual property as a basis for criminal prosecution has been revised and separated into two separate concepts, namely “counterfeit mark goods” and “counterfeit geographical indications”. The connotation of each case was also adjusted, specifically expanding the scope of elements constituting the act of producing and trading in counterfeit trademark goods. Specifically, for the act of affixing “stamps and labels containing signs that are identical or difficult to distinguish from the protected mark used for the same item without the permission of the trademark owner” on the goods, the packaging of the goods is also considered to be counterfeit trademark.

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

Sound Trademark Regulations

As can be seen, stipulating that “graphic representation” followed by “acoustic signs” should only be an option of the applicant’s choice, not a mandatory requirement. Because, “sound mark” 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.

Based on the recommendations of WIPO, INTA and the experience of countries with a long history of non-traditional trademark registration, in our opinion, the forms of expression of “sound trademarks” should be regulated in the form of a graphic of the sound constituting a mark, a written description of the sound, an audio file (such as an electronic audio file as an MP3 or, WMA, WAV file) or any any combination of the forms mentioned above to ensure the true nature of the registration of a sound mark is the mark as desired by the applicant. In addition, the online application form for an 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.

Well-Known Trademark Regulations

Although the new amendments and supplements have brought more advantages to well-known trademark owners in protecting their rights, they are creating a balance that is not really balanced with the society benefits. The designation of “segment of the public” may be too narrow a subject to consider the popularity of that mark, and may affect the interests of the holder of the mark against which the mark is claimed considered famous is referring. Therefore, there should be more specific criteria for assessing what is a “public segment”, such as based on consumption demand, the consumption area must be large enough, the number of people in that segment must be large enough, etc. These are important criteria that need to be guided by the Government to make it more feasible for implementation.

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 applicants.

Above are some new points of the Vietnam Intellectual Property Law 2022 related to trademarks. Some new points on trademark registration will be presented more clearly in the article New point of the Intellectual Property Law 2022 on trademark registration of Law Viet An.

If you have any questions 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.