Obligation to prove the trademark being well-known in Vietnam

Although the new Law does not mention the obligation of the well-known trademark owner in respect of the burden of proof, the recently issued governmental decree on IPR enforcement (Decree 105) and the draft instructions to be issued by the Ministry of Science and Technology clarify the obligation of a well-known trademark owner in providing the sufficient evidence to prove his trademark being well-known, basically relying the criteria provided in the new Law. The draft instructions state:

“1.4 The rights to a well-known trademark are established on the basis of the widely practical use of the mark that makes the trademark became well- known and need not conform to the registration procedures at the National Office of Intellectual Property as applicable to the other trademarks. When performing the conferred rights and initiating the proceedings of a trademark dispute, the well-known trademark owner shall have obligation to prove their rights by the appropriate evidence as stipulated in Article 75 of the Normal 0 false false false MicrosoftInternetExplorer4 Law on Intellectual Property .” “42. Recognition of the well-known trademarks

42.1 Bases and proceedings for recognition of the well-known trademarks

a)    The trademark having been recognized being well-known in Vietnam shall be protected pursuant to Article 75 of the Law on Intellectual Property and in consistence to Article 6bis of the Paris Convention on protection of industrial property;

b)    Rights to the well-known trademark belong to the owner of that trademark without any requirement of registration procedures. When performing the rights conferred to the well-known trademark (in making the opposition to the granting of a trademark registration in the process of establishment of trademark rights; in handling the disputes or taking action against the infringement in respect of the well-known trademark), the trademark owner shall prove that the ownership of the trademark belongs to him and that his trademark meets the conditions to be regarded well-known;

c)    The proofs evidencing the well-known of a trademark may include the information on the scope, scale, continuity of the trademark use, in which the detailed statements about the origin, history development, the period of continuing use of the trademark; number of countries where the trademark has been registered or recognized as a well-known trademark; the list of goods and services bearing the trademark; the scope of territory where the trademark is circulated; turnover and volume of the goods and services produced or provided under the trademark; asset value of the trademark; investment and expenses for advertising, marketing the trademark; number of the consumers knowing about the trademark; awards granted to the trademark in the national and international exhibitions etc;

d)    In the case of the well-known trademark having been recognized by a decision of the competent court or by a decision of the National Office of Intellectual Property, that trademark shall be published in the Gazette of Industrial Property and put into the list of well-known trademark made by the National Office of Intellectual Property.”

At the present, there is unavailable a list of recognized well-known trademarks in the National Office of Intellectual Property. That is perceived as an inherent difficulty for the trademark examiners in the course of performance of their duties in examining the well-known trademark related applications. After the issuance of the instructions, it is expected that the list will be established to be an important source of information for the trademark examiners to refer to in the course of substantive examination of trademark applications.

Pham Hong Quat

Deputy Chieft Inspector

Read more:

The development of the national law on protection of well-known trademarks in Vietnam

  1. The development of the legal framework on protection of well-known trademarks
  2. Rights onferred to the well-known trademark owners
  3. Obligation to prove the trademark being well-known
  4. The practice of well-known trademark protection

 

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