1. What is trademark?
Trademark is defined as any sign used to distinguish goods or services of different organizations or individuals.
2. How many types of trademark?
In accordance with the Law on Intellectual Property, trademarks are classified into four groups:
Collective trademark means a mark used to distinguish goods or services of members from those of non-members of an organization which is the owner of such mark.
Certification trademark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods or services bearing the mark.
Integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated.
Well-known mark means a mark widely known by consumers throughout the Vietnamese territory.
3. Some objects ineligible for protection as trademark?
The following signs shall be ineligible for protection as marks:
Signs identical with or confusingly similar to national flags or national emblems.
Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
4. How is a trademark considered to be distinctive?
A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of Article 74 Law on Intellectual Property.
5. Who has a right to registering trademark?
In accordance with Law on Intellectual Property, the entities having the right to register marks include:
– Organizations and individuals shall have the right to register marks to be used for goods such organizations or individuals produce or for services such organizations or individuals provide.
– Any organizations or individuals lawfully engaged in commercial activities shall have the right to register a mark for a product which the latter puts onto the market but which was manufactured by others, provided that the manufacturer does not use such mark for a product and does not object to such registration.
– Lawfully established collective organizations shall have the right to register collective marks to be used by the members of the collective organization pursuant to the regulations of the collective organization on use of collective marks. For signs indicating geographical origins of goods or services, an organization with the right to register means a local collective organization of [other] organizations or individuals engaged in production or trading in the relevant locality.
– Organizations with the function of controlling and certifying quality, properties, origin or other relevant criteria of goods or services shall have the right to register certification marks, provided that such organizations are not engaged in production or trading of such goods or services.
– Two or more organizations or individuals shall have the right to jointly register a mark in order to become its co-owners on the following conditions:
(a) Such mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners;
(b) The use of such mark does not cause confusion to consumers as to the origin of goods or services.
6. What is the “First to file principle” ?
“First to file principle” is applied to cope with cases in which there are more than one protection registration application for the same or similar subject matter of industrial property rights. This principle is prescribed particularly at Article 90 of Law on Intellectual Property to protect the rights and interests of the earlier applicant with the same subject matter of industrial property rights. To be more detailed:
In case many applications are filed for registration of the same patents or similar patents, or for registration of industrial designs identical with or insignificantly different from another, the protection title may only be granted to the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title.
In case there are many applications filed by different persons for registration of identical or confusingly similar marks for identical or similar products or services, or in case there are many applications filed by the same person for registration of identical marks for identical products or services, the protection title may only be granted for the mark in the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title.
In case there are many registration applications specified in Clauses 1 and 2 of this Article and satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, the protection title may only be granted for the object of a single application out of these applications under an agreement of all applicants. Without such agreement, all relevant objects of these applications will be refused for the grant of a protection title.
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.