Using variations of the mark

After the mark registration period for more than 2 years, some businesses, for various reasons, are no longer interested in the registered mark or because they do not have a clear understanding of the risks when using the mark improperly, they decide to “reform” their mark to tally with the trend or to be in line with the company’s business strategy. This inadvertently causes many risks for businesses in the process of using the mark. The following article is to help readers understand more about the risks of using variations of the marks as well as how to use marks properly. 

1. Risks of using marks improperly:

1. Invalidation of registered marks: Indeed, after successful trademark registration, one of the main reasons why many businesses “lose” their marks is not using the marks or not using them in a proper way (remove or partially change the marks). Specifically, according to the law, after registering a mark, the mark owner is obliged to use his/her mark. If the mark is not put into use for a period of five consecutive years, any third party has the right to request the Intellectual Property Office of Vietnam to terminate the validity of that mark.
2. Inability to handle mark infringement: If a business redesigns its registered mark into another version of the mark without registering that newly-designed mark, it will not be protected by law against other third-party mark infringements.
3. Potential to infringe upon the intellectual property rights of another party: In case a business redesigns its mark that is identical or similar in a confusing way to another party’s registered mark, the business may be deemed to be infringing on that party’s intellectual property rights.

2. What is mark use? What does Vietnamese law stipulate?

Currently, Vietnamese law stipulates the use of marks as follows: Acts of using marks are the following acts:

1. Affixing the protected mark on goods, goods packaging, means of business, means of service, transaction papers in business activities;
2. Selling, offering for sale, advertising for sale, displaying for sale, storing for sale, transporting goods bearing the protected mark;
3. Importing goods and services bearing the protected mark.

Accordingly, Vietnam’s Intellectual Property Law specifies methods to determine whether a mark is used or not. However, the Intellectual Property Law did not mention whether the use of variations of the mark is a form of using a registered mark and gives no guidance regarding how to use mark variants.

Read more: Apple Inc. Warns Unauthorized Vietnamese Retailers: Parallel Importation Or Trademark Infringement

3. Properly using variations of the marks:

As mentioned above, Vietnamese law currently does not have relevant provisions to determine the legal validity of using another variation of a registered mark. Accordingly, we still recommend that mark owners should give priority to using the right marks registered with the Intellectual Property Office of Vietnam to ensure maximum benefits.

In case a business/mark owner needs to change or adjust some details of the registered mark (such as changing color, adding or changing signs, etc.), the business/mark owner needs to ensure the integrity of the distinctiveness contained in the registered mark. Specifically, according to Article 5.C.2 of the Paris Convention on the protection of industrial property to which Vietnam is a contracting party: “Use of a mark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark”.

In other words, in case the mark owner only changes some details of the mark and still retains the inherent distinctiveness of the registered mark, the use of that modified mark is still considered a form of use of a registered mark. Accordingly, the proprietor will avoid the risk of improperly using variations of the marks.

4. Distinctive character in registered marks and mark variants:

Thus, although Vietnamese law has no specific regulations, there are grounds for the mark owner to use variations of the mark while still ensuring the same legal value as the use of the registered mark. However, as mentioned above, the mark owner needs to ensure that the variant retains the distinctive character contained in the registered mark.

In order for our readers to have a better understanding of the distinctiveness of the mark, we would like to take an example of our registered mark “Apolat Legal” with the following information:

Apolat Legal Mark

Application number: 4-2016-09508 Degree holder: Apolat Legal Law Firm

For the above Apolat Legal mark, it can be seen that the word “Apolat” has been prominently displayed (stylized letter A, red color, large size, etc.). Accordingly, the word “Apolat” is considered a highly distinctive sign in the overall mark “Apolat Legal”. Therefore, if a mark owner uses a mark variant that includes only the word “Apolat” (highly distinctive), it can still be considered as using the mark. Conversely, if a mark variant omits the word “Apolat”, the mark owner is not considered to be using the mark and may face the risks mentioned at the beginning of this article.

5. Apolat Legal’s recommendation on using variations of registered marks

In fact, there have been many cases of using mark variants in Vietnam leading to risks for mark owners as mentioned at the beginning of the article. One typical case is the mark infringement dispute between Asano and Asanzo  the period of 2018 – 2019. Accordingly, the mark owner Asanzo (defendant) used a different variant () from the registered mark under the certificate of mark registration and, accordingly, was determined to be infringing the mark with the Asano mark (plaintiff) by the High People’s Court in Ho Chi Minh City (based on the conclusions of the Intellectual Property Office of Vietnam).

Therefore, in order to avoid the risks of improperly using variations of the marks, we have several caveats regarding the use of a mark variant as follows:

1. Registering a mark variant: Currently, the registration of a mark is not too expensive and it can also guarantee the business/mark owner the legitimate rights to the mark in accordance with the law provisions. Hence, in case the mark owner wishes to use the mark variant on a regular basis, we recommend that the proprietor register the mark variant with the Intellectual Property Office of Vietnam to obtain rights as prescribed by law provisions (for example, exclusive right to use mark, right to enforce, right to be protected against infringement, etc.).

Apolat Legal is proud to be a reputable law firm and industrial property representative highly specialized in the field of intellectual property. Apolat Legal can advise and help you register your mark in the most effective and economical way. In case you need to register a mark, please contact us for the best support.

2. Proper use of mark variants: Mark owners should only use variations of the mark when such variants still ensure the integrity of the distinctive elements contained in the registered mark.

Before using a mark variant, the proprietor should consult with a legal team with expertise in intellectual property to ensure that the use of the mark variant does not affect the rights and interests of the proprietor.

At Apolat Legal, we pride ourselves on having a highly specialized legal team in intellectual property that can provide highly accurate and reliable assessments of mark variants. So don’t hesitate to contact us for advice on brand variants.

3. Use of a registered mark: To avoid the risk of losing a registered mark, besides using a mark variant, the mark owner should also use the registered mark for a period of five consecutive years. The continued use of the mark is the basis for helping the proprietor to ensure the continued validity of his registered mark.
4. Note on mark renewal: One of the basic but extremely important obligations of a mark owner is to renew the mark registration every 10 years. However, because the number of marks in each period can rise steadily, it is relatively difficult for the mark owner to control the mark.

Apolat Legal provides free mark management services to customers who have used any of Apolat Legal’s legal services and automatically provides updates for customers on the progress and status of their marks. In case you have multiple marks that need to be managed, do not hesitate to contact Apolat Legal for a free mark management service offer.

The above is basic information regarding the use of variations of mark (mark variant) and the associated legal risks. If you have any questions or need advice on Intellectual Property, please contact Apolat Legal at info@apolatlegal.com for detailed advice.

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