Similar signs leading to confused trademarks in Vietnam

In today’s increasingly competitive commercial environment, protecting intellectual property rights, especially trademarks, is more important than ever. One of the common legal issues related to trademarks is determining whether a sign is similar to a previously registered trademark. Through the article below, Viet An Law will provide you with regulations about similar signs leading to confused trademarks in Vietnam.

Signs considered identical or similar in Vietnam

The sign is not an identical or confusingly similar associated trademark

A sign that is not an associated trademark that is identical or confusingly similar to a registered trademark for identical or similar goods or services based on an application with an earlier filing date or priority date in the case where the application enjoys priority, including a trademark application filed under an international treaty to which the Socialist Republic of Vietnam is a member.

Identical or confusingly similar signs

Pursuant to Articles 73, 74, 78, 90, 163, 213 of the Law on Intellectual Property 2005, as amended and supplemented in 2022, signs identical or confusingly similar to another person’s trademark have been widely used and recognized for identical or similar goods and services:

• Before the filing date or priority date in case the application enjoys priority;
• Using such a sign may affect the distinctiveness of a famous trademark or the trademark registration is intended to take advantage of the reputation of a famous trademark;
• The trademark registration has expired no more than three (03) years ago, except in cases where the validity is terminated due to the trademark not being used as prescribed in Point d, Clause 1, Article 95 of the Law on Intellectual Property 2005, as amended and supplemented in 2022;
• May confuse consumers about the origin of goods and services;
• May mislead consumers about the geographical origin of goods;
• Signs that are identical to geographical indications or contain geographical indications or are translated or transcribed from geographical indications that are protected for wines and spirits if the signs are registered for use on wines and spirits that do not originate from the geographical area bearing that geographical indication;
• A sign that is identical to or not significantly different from another person’s industrial design is protected based on an industrial design application with a filing date or priority date earlier than the filing date or priority date of the trademark application.

Common signs are not able to distinguish

Signs considered identical or similar are one of the cases under Article 74 – signs that are not capable of being distinguished when registering a trademark, specifically as follows:

• Simple geometric shapes and figures, numbers, letters, and words in uncommon languages, except where such signs have been widely used and recognized as a trademark;
• Conventional signs, symbols, drawings, or common names of goods and services in any language that have been widely used, regularly used, and known to many people;
• Signs indicating the time, place, method of production, type, quantity, quality, properties, ingredients, uses, value, or other characteristics descriptive of goods or services, except where such signs have acquired distinctiveness through use before the filing of the trademark application;
• Signs describing the legal form and business field of the business entity;
• Signs indicating the geographical origin of goods and services, except where such signs have been widely used and recognized as a trademark or registered as collective trademarks or certification trademarks as prescribed by law.
• Opposite trademark: A sign that is identical or confusingly similar to the trademark of another organization or individual that is protected/has filed an application / is a famous trademark / has expired for no more than 03 years / is another IP object (industrial design, trade name, geographical indication,…).

Thus, if a newly registered trademark does not have the above signs, there is a high possibility that protection will be refused or the application will have to be separated and the protected signs in the application will have to be amended.

Examples of cases of similar signs leading to confused trademarks in Vietnam

The trademark “Hao Hao” is protected under the Certificate of Trademark Registration No. 62360 issued on April 29, 2005. The trademark “Hao Hang” is protected under the Certificate of Trademark Registration No. 119302 issued on February 11, 2009. These two trademarks have signs that can easily confuse consumers and make it impossible to distinguish, specifically as follows:

Regarding content

Both trademarks represent the same type of goods, instant noodles (same group 30). “Hao Hang” has 8 characters, of which 5 are duplicated, and the pronunciation is also similar, the first sound is “Hao” so it is easy to confuse with the trademark “Hao Hao”.

Regarding form

The trademark “Hao Hang” has a similar font (red, tilted to the right), the image of a bowl of noodles, noodles, shrimp, lemon, chili, herbs, etc. with the main color (pink-red) of the packaging design, creating a similar whole, causing confusion for consumers, making it impossible to distinguish.

In addition, the trademark “Hao Hao” was granted a protection certificate before. Thus, the original trademark is “Hao Hao” and of course, the infringing trademark is “Hao Hang”. Asia Food Company has infringed on Vina Acecook’s trademark and must be subject to administrative sanctions and compensate Vina Acecook for damages.

Mechanism for handling counterfeit trademarks

Case 1: A trademark has been granted a certificate of protection, but then it is discovered that an organization is counterfeiting or imitating products bearing that trademark.

Trademark owners can choose from a variety of measures to protect their intellectual property rights, such as:

• Apply technological measures to prevent intellectual property infringement.
• Require organizations and individuals who infringe intellectual property rights to stop the infringement, apologize, publicly correct, and compensate for damages.
• Request competent state agencies to handle acts of intellectual property infringement by administrative handling depending on the level of trademark infringement as well as the damage caused by the infringing party to the owner.
• File a lawsuit in court or arbitration to protect your legitimate rights and interests. In cases where the level of infringement constitutes a crime, criminal liability may be prosecuted.

Case 2: The trademark is not registered or is waiting for a protection certificate, and it is discovered that an organization is counterfeiting or imitating that trademark.

The current intellectual property law does not have specific mechanisms to protect industrial property rights (trademarks) in this case, because it is an intangible asset and is easily infringed by other entities. The only way to protect your trademark from infringement is to quickly register for trademark protection at the competent state agency (Intellectual Property Office).

In case of registration for protection but not yet granted a certificate, during this time, the owner needs to collect relevant information such as evidence proving that the trademark belongs to him/her (time of creation, time of putting into operation, many people know that trademark, etc.); collect evidence proving that his/her trademark has been infringed;… After being granted a certificate of protection, the owner quickly files a lawsuit in Court to protect his/her rights.

Note: When the owner does not have a trademark protection certificate, the infringer has obtained a trademark protection certificate. In this case, the owner must accept that his trademark has been infringed without a mechanism to handle it properly because according to the current Intellectual Property Law, trademarks are protected according to the first-to-file principle: “A certificate of protection can only be granted to a valid application with the earliest priority date or filing date among the applications that meet the conditions for being granted a certificate of protection”.

Above is the advice of Viet An Law on similar signs leading to confused trademarks in Vietnam. If there are any other legal problems related to intellectual property rights, please contact Viet An Law for more specific and detailed advice. Sincerely thank you!