While doing business, any entity has to use signs and information related to services to guide and help customers identify their goods or services – those signs and information are collectively referred to as commercial indications. In particular, the three main commercial indications of a company are commercial name/ brand name, the business symbol (logo), and the trademark, in which the trademark is the most concerned and used indication.
Trademark means any sign used to distinguish goods or services of different organizations or individuals. Depending on its form, a trademark can be classified into Words, Symbols, or a combined trademark; if depends on its distinctiveness, a trademark can be classified into fanciful/arbitrary mark, suggestive mark, descriptive mark, generic mark… However, in addition to the classification methods through the form or the ability to distinctiveness of the mark as mentioned above, the trademark can also be classified according to its popularity, with this criterion, the trademark can be classified into normal distinction trademark and well-known trademarks, depending on the popularity degree of the trademark, the trademark can even be protected with the highest and widest scope of protection without registering with the office of intellectual property.
This article mentions to the popularity of the trademark and the legal issues around it, and also presents some problems in the recognizing mechanism of well-known trademarks in Vietnam for your reference as well as giving your own assessments. Hopefully, the content mentioned below is appropriate and useful, not only for commercial entities, but also for those who are eager to develop their own brands.
The current valid Law on intellectual property of Vietnam states that the industrial property rights of trademarks are established on the basis of a decision issued by a competent state agency, in Vietnam, is the National Office of Intellectual Property, when the right holder performs their registration rights. The meaning of trademark registration, in addition to establishing the rights to signs which are used to distinguish goods or services of each commercial entities and to avoid misleading use to consumers; also serves the purpose of protecting the values that the company using such mark, and its products have achieved and is expressed by consumers’ trust in using the products bearing such trademarks.
However, the aforementioned registration mechanism does not apply to well-known trademarks. Industrial property rights of well-known trademarks are automatically established on the basis of widespread use, making such trademarks become famous without having to apply for registration at the National Office of Intellectual Property.
According to the statutory regulations of the Law on Intellectual Property of Vietnam, a well-known trademark is defined as a trademark widely known to consumers throughout Vietnam. Well-known trademarks are protected under Vietnamese law in accordance with Article 75 of the Law on Intellectual Property and in accordance with Article 6bis of the Paris Convention for the Protection of Industrial Property. Accordingly, to assess the popularity of a trademark, the Intellectual Property Law also stipulates 08 (eight) criteria to be considered, including:
- The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.
- The territorial area in which goods or services bearing the mark are circulated.
- Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.
- Duration of continuous use of the mark.
- Wide reputation of goods or services bearing the mark.
- Number of countries protecting the mark.
- Number of countries recognizing the mark as a well-known mark.
- Assignment price, licensing price, or investment capital contribution value of the mark.
Accordingly, without the registration procedure, the trademark owner can use documents proving his ownership of the mark and prove that the mark satisfies the conditions to be considered as well-known. However, the statutory regulations don’t have any further specific instructions or administrative procedures that have been made public, so that those trademark owners can actively request for recognizing their well-known trademark.
Compared with the relevant legal regulations, we just find only some procedures related to the use of rights and the settlement of disputes procedure, through which, a trademark can be indirectly recognized as a well-known trademark, including:
- Through civil proceedings: means, through a dispute settlement decision or judgment of the Court, which has the content to recognize the mark as a well-known trademark; or
- Through the recognition procedure of the National Office of Intellectual Property while dealing with infringement of rights or substantive examination to protect trademarks. A trademark recognized as well-known in this manner is usually through the objection of the trademark owner to the application of other entities, accordingly, the well-known trademark owner will have to provide documents proving their ownership of the trademark and proving such mark is well-known.
In addition to the formal procedures mentioned above, logically, any entity will have the right to ask the National Office of Intellectual Property to recognize their mark as well-known if they find that their mark is eligible for recognition. However, as mentioned above, there is currently no legal framework for this procedure, so the assessment or the obligation to review the request are all belongs to the unilateral will of the state agency.
Above all the difficulties in the recognition process as mentioned above, the storage method and searching well-known trademarks is also an inadequate problem. Under the provisions of Circular 01/2007 / TT-BKHCN, when a trademark is recognized as a well-known trademark through legal proceedings or is recognized by the National Office of Intellectual Property to make a decision to handle infringement of others to such well-known trademark or leading to the decision of not protecting another trademark, such well-known mark shall be recorded in the list of well-known trademarks kept at the National Office of Intellectual Property as the reference source serving the establishment and protection of intellectual property rights. In fact, the above-mentioned list of well-known trademarks is only internally used by the National Office of Intellectual Property without being published as for ordinary trademarks.
There is no specific recognition procedure; the List of well-known trademarks is only stored internally are the top challenges in the recognition mechanism of well-known trademarks in Vietnam. At the same time, these problems also cause difficulty for the registration of protection for other trademarks, because others can not find out the suitable mark which can be used to refuse the mark when the information is not made public. To overcome this difficulty, beside waiting for the adjustment, clarifying of the statutory regulation on how to evaluate the well-known criteria and publishing of a specific recognition procedure, the owners of the marks that may be considered as well-known should soon register with the National Office of Intellectual Property and continue collecting and storing documents which can be used to prove the popularity and continuity of use as well as the value of their trademark as a basis for proving and also request for recognition of their rights to a well-known trademark at the intellectual property office or other competent authority if a dispute arises.
If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.
This article is for general information only and is not a substitute for legal advice.