New regulations on protection of famous trademarks in Vietnam

The amended Law on Intellectual Property of Vietnam in 2022 has amended the provisions of Articles 4 and 75 related to the protection of famous trademarks. Under this new regulation, the Law on Intellectual Property has aimed to limit the scope of consumers and the scope of using criteria to recognize famous trademarks. Specifically, the new regulations on protection of famous trademarks are specified as follows:

New regulations on protection of famous trademarks in Vietnam

A well-known trademark is a trademark that is widely known by the relevant public in the territory of Vietnam.According to the old regulations, a trademark can only be recognized and protected a famous trademark if it meets 2 criteria:

• The mark must be widely known to consumers;
• Recognition of this trademark must take place throughout the territory of Vietnam.

The concept of “consumer” is understood to mean the general public (the general public), rather than “relevant part of the public” as stipulated in the amended and supplemented Intellectual Property Law 2022. Therefore, in order for a trademark to be protected by a well-known trademark, it must be widely known to the general public (mass public) throughout the territory of Vietnam.

This is extremely hindering for owners with famous trademarks in each specific field, which only the public and consumers in related fields can know and access, it is difficult to claim protection of famous trademarks in Vietnam. In fact, in the past, many famous trademark owners lost their trademarks in the Vietnamese market because of dishonest entities and unfair competitive behavior.

Criteria for evaluating famous trademarks in Vietnam

To prove that a trademark is well-known, the trademark owner must provide supporting documents according to 8 criteria defined in Article 75 of the Law on Intellectual Property of Vietnam. Concrete:

– The number of relevant consumers who have become aware of the trademark through the purchase, sale and use of goods or services bearing the trademark or through advertising;

– The territory in which goods and/or services bearing the trademark have been circulated;

– Sales from the sale of goods or the provision of services bearing the trademark or the quantity of goods sold, the quantity of services provided;

– Continuous use of the trademark;

– Wide prestige of branded goods and services;

– Number of countries protecting trademarks;

– The number of countries that recognize the trademark as well-known;

– Transfer price, transfer price, investment capital contribution value of the trademark.

The requirement of this old regulation creates an undue and impossible burden for most trademark owners to prove that their trademark meets the well-known trademark regulations in Vietnam. This provision is considered to place unreasonably high requirements (compared to the Trips Agreement), which makes a mark can be considered famous in many countries and widely used in trade in Vietnam, but by failing to prove that the mark is widely known throughout the territory of Vietnam by the public speaking chung (mass public), so it cannot be recognized as famous in Vietnam.

Accordingly, for the new regulation on protection of famous trademarks in Vietnam, Article 75 of the Law on Intellectual Property has been amended so that competent authorities, depending on the subjects of products and services bearing the trademark as well as relevant consumers, may consider evaluating a trademark as famous based on some or all criteria stipulated in Article 75 of the Law on Intellectual Property without having to require all 8 criteria mentioned above.

Regulations on when a trademark is considered famous in Vietnam

– The new regulation is amended at Point i, Clause 2, Article 74 of the amended Law on Intellectual Property of Vietnam in 2022 as follows: “The time when a trademark is considered famous when considered as a counterpoint mark, that is, the counterpoint mark begins to be famous before the date of filing of the trademark for registration”.

– This provision is of great significance to the owner of a famous trademark exercising the right to oppose or cancel a trademark based on the right to a famous trademark. Accordingly, if the owner of a famous trademark proves the criteria:

– Provide evidence that a well-known trademark must have been (established) prior to the filing date of the party claiming infringement. Accordingly, documents/evidence available after the date of filing of the claiming party is infringing are not valid for proof and are not admissible.

It can be seen that the new regulation on protection of famous trademarks amended in the Law on Intellectual Property in 2022 has created a clear, specific, easily applied and more favorable legal basis to protect the legitimate rights and interests of famous trademark owners. Accordingly, when a well-known trademark owner discovers that a third party files an application for registration of a trademark that is confusingly identical to a well-known trademark, or uses a sign similar/identical to a well-known trademark in commercial activities in Vietnam that has a clear legal basis to exercise and protect rights, their legitimate interests and at the same time have grounds to request recognition and protection of famous trademarks in Vietnam.

The new regulation on the protection of famous trademarks has overcome restrictions for a long time that have hindered the protection of famous trademarks by true rights holders, true owners.

Viet An Law Firm is an Intellectual Property Representative in Vietnam with full legal status, experience and high professional qualifications, we believe that it will be a reliable address for famous trademark owners abroad and Vietnam to exercise their trademark protection rights in Vietnam and abroad. Please contact us for the fastest, most professional support!