In the light of the provisions of Article 6bis of the Paris Convention and Article 16 of the TRIPS Agreement, the new Law on Itellectual Property of Vietnam provides the rights conferred to the well-known trademark owners in both the trade mark registration procedures and the trademark right enforcement proceedings. Article 74.2 of the new Law states as follows:
“Article 74. Distinctiveness of trademarks
2. A mark shall not be considered as distinctive if it is signs falling under one of the following cases:
i) Signs identical with or confusingly similar to another registered person’s trademark recognized as well-known in respect of the goods or services that are identical with or similar to those bearing the well-known trademark; or in respect of dissimilar goods and services if the use of such trademarks may prejudice the distinctiveness of the well-known trademark or the registration of such signs is aimed at taking advantage of goodwill of the well-known trademark.”
According to the above-mentioned provision, when a trademark is recognized as well- known, the scope of protection given to the well-known trademark is extended much beyond that given to the normal trademark. Not only the use of any sign identical or confusingly similar to the well-known trademark but also the use of that sign for the dissimilar goods and services shall be rejected if it is assumed that the use of that sign would adversely affect the distinctiveness of the well-known trademark. Besides the argument relying on the dilution of the well-known trademark reputation, the well- known trademark owner may oppose the registration of any trademark which is regarded as an act of unfair competition practice. If the well-known trademark owner may indicate the proof for the argument that the act of trademark registration is aimed at riding on the advantages coming from the reputation of the well-known trademark, the application for registration of the related trademark shall be rejected or, in the case of a registration having been granted to the related trademark, the registration shall be revoked or invalidated under the provisions of the new Law.
In the draft of instructions on implementation of the new Law (a Circular to be issued by the Ministry of Science and Technology for guiding the governmental Decree No.103) the detailed guidelines for application of the above-mentioned provisions are intended to cover the following contents:
“39.8 Assessment of the similarity of the sign to be registered as a trademark to such an extent that may cause the confusion with the compatible mark
c) The sign shall be regarded as confusingly similar to the compatible mark if:
(i) The sign is only the form of translation or transliteration or transcription of the compatible mark if the compatible mark is a well-known trademark;”
“39.10 Conclusion of the confusing similarity of the sign in the relation with the compatible mark
(iv) The sign is identical with or similar to the compatible mark being a well- known trademark and even though goods and services bearing that mark is neither identical nor similar to the well-known trademark, the use of that sign functioning as a trademark may mislead the consumers about the relationship between the goods and services bearing that sign and the well-known trademark owner which induces the actual likelihood of diluting the distinctiveness of the well-known trademark or being detrimental to the reputation of the well-known trademark.”
The particular provisions of the new Law and the detailed instructions mentioned above constitute the legal grounds based on which the trademark examiners may refuse the registration of any mark that falls into the spectrum of the unfair competition practice against the well-known trademarks.
With respect to the right of enforcement conferred to the well-known trademark owner, Article 129 of the new Law states:
“Article 129. Acts of infringing the rights to trademarks, trade names and geographical indications
1. The following acts if performed without permission of the trademark owner shall be considered as infringement of the rights to the trademark:
d. Using any sign identical with or similar to a well-known trademark, or any sign in the form of translation or transliteration of a well-known trademark, for any goods and services, including those dissimilar or unrelated to the goods or service having the well-known trademark, if such use is likely to cause confusion as to the origin of the goods or services or wrong impression as to the relationship between the user of such signs and the well-known trademark owner.”
Under the above provisions, the well-known trademark owner may take action against the use of any sign going around his mark and even that sign is used for the goods and services dissimilar or unrelated to those bearing the well-known trademark. Article 98 of the new Law allows the trademark owners to apply different measures to protect their rights with respect to his trademark. The enforcement measures available to the well-known trademark owner, among others, include the right to request organizations, individuals committing the acts of infringement to terminate their infringing acts, apologize, publicly rectify or compensate damages; the right to request the competent state agencies to handle the acts of infringement in accordance with provisions of the Law on Intellectual Property and other related laws and regulations; and the right to initiate a lawsuit at a competent court or an arbitrator to protect their legitimate rights and interests.
Pham Hong Quat
Deputy Chieft Inspector
The development of the national law on protection of well-known trademarks in Vietnam