ICP successfully defends X-MEN trademark in Vietnam

The trademark X-MEN is now officially property of International Consumer Products Co. Ltd. (ICP) since the time for Marvel Characters Inc. to lodge an appeal against the judgment of the Hanoi City People’s Court has run out.

ICP in June 2003 applied for registration of the trademark X-MEN for its cosmetic products. Two years later, the National Office of Intellectual Property of Vietnam (NOIP) granted the company a trademark registration certificate.

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Well-Known Trademark Protection Reference to the Japanese experience

Study Theme: Well-known trademark protection – Reference to the Japanese experience

Introduction

1. Overview of research theme

In today’s marketplace, well-known trademarks bring huge commercial value for trademark owners. Therefore the demands for effective protection, as well as the risk of being copied for such trademarks are increasing. Trademarks are “signs” which distinguish the goods and services of one enterprise from another. Well-known trademarks play a more important role here. They act as a marketing tool, and as a symbol of reputation and prestige in many companies. Moreover, from the point of view of the consumer, trademarks act as a measure by which to identify in which “class” consumers are. By virtue of the intensive and extensive degree to which they have been promoted and developed by owners, trademarks have become widely known, and have been placed in the minds of consumers such that they can produce a self-attraction effect, which contributes much to increased sales of products bearing the mark.1Because of such exceptional power, protection of well-known trademarks requires expansion of legal principles beyond the traditional scope of trademark law. Trademark rights, as with other intellectual property rights, have a scope of protection limited by the very function they are meant to serve. In order clearly to identify an origin, protection has to go only as far as to prevent confusion. Therefore, it is not necessary to prevent the use of an identical or confusingly similar trademark in a context that would not lead to confusion such as for different goods or services.2In this situation, it is unlikely that the consumer is mistaken by the same trademark for unrelated goods, for example soaps and motorbikes. Protection of trademark is therefore limited to the scope of similarity of marks for identical or similar goods or services. The traditional principle for trademark protection is also limited to the geographical territory where the protection has been obtained. Yet today, consumers move more freely across borders and information has been exploited over the Internet thanks to the rapid development of technology. As a result, consumers may know the products bearing well-known trademark even in the case that such products do not existed in their marketplace. However, even though some trademarks have become globally well-known, such as “COCA-COLA”, “MICROSOFT”, “IBM”, etc. (The Top 100 Globally Well-Known Brands 2010 of Business Week), it cannot be said that their goods or services are actually supplied to the market in every country, and in addition, this also does not mean that these trademarks are registered in every country throughout the world. Therefore, in the case such a trademark is imitated or pirated in a country in which it is not registered or used yet it may have not been protected under trademark traditional principles. So the appropriate protection of well-known trademarks has become an essential issue not only domestically, but also in trade relations between nations.

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Advantage and Disadvantage of the Madrid System

1. Advantages

International registration of trademark under Madrid system has advantages for both the trademark owners and trademark offices. The main advantages for trademark owners consist of the simplicity of the international registration system and the financial savings made when obtaining and maintaining the protection of their trademark abroad. The trademark owner need only file a single application in one language and pay fees in one currency to one office, and the registration may be renewed every ten years in a single transaction, recordal of change may be dealt with in a single transaction. It may allow businesses to remain competitive in the international market place without having to spend much time and money filing and following up separate trademark applications in different countries. The filing fees, translation expenses, renewal fees, recordal and changes, assignment and local legal fees, therefore, may be reduced and/or omitted. Besides, the holder of an international registration does not have to wait indefinitely to find out if its mark will be registered in the Contracting Parties it designated, but knows that if there is no refusal or notification of refusal within the applicable time limit (within 12 or 18 months), the mark is protected, saying: “NO NEWS IS GOOD NEWS”.

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