Vietnam became the party to the Paris Convention on Protection of Industrial Property (the Paris Convention) since 1949, and after the unification of the country, the declaration on the continued application of this convention was confirmed in 1981. The government of Vietnam issued the first ordinance on protection of trademarks in 1982 which contained the general principles on protection of trademarks in the light of the provisions of the Paris Convention.
The significant movement of IPR protection was made in the end of the 1980s and early 1990s by promulgation of the law-decree and regulations on protection of industrial property rights, which detailed the provisions on protection on trademarks and other subject matters of industrial property rights. This movement had been along with the transformation of the centrally planned into the market-oriented economy following the open-door economic policy of Vietnam.
In 1995, the Civil Code introduced the term “intellectual property rights” (IPR) and the IPR protection regime towards the standards provided in the TRIPS Agreement. Consequently, the government enacted series of regulations for implementing the Civil Code’s IPR related provisions in the following year. During this period Vietnam applied for the accession to the World Trade Organization (WTO) and spent great efforts to revise its national law for the purpose of compliance with the requirements of the WTO/TRIPS. A decade later, such efforts were remarked by the enactment of the Revised Civil Code and the Law on Intellectual Property in 2005, which was a significant contribution to the success of Vietnam in the negotiation for the accession to the WTO.
As for the protection of well-known trademarks, both the Civil Code 1995 and the Civil Code 2005 do not cover any provisions referring to the protection of well-known trademarks. However, the prevailing effect of the international treaties is firmly recognized in these codes. Both codes consist of the provision saying that where an international treaty contains a provision different from that covered by the codes, the provision of the international treaty shall be applicable. To this point, the provisions of the Paris Convention on protection of well-known trademarks could be applicable in Vietnam, even if there was no particular provision on this matter set down in the national legislation.
Although the Civil Code 1995 did not include any particular provision on the protection of well-known trademarks, the regulation on the implementation of this code issued by the government in 2001 (Decree No.06) introduced the procedural requirements on the recognition of well-known trademarks in Vietnam. Accordingly, a well-known trademark might only be protected when it was registered in the National Office of Industrial Property. The owner of an assumed well-known trademark had to file a request and the relevant proof with the National Office of Industrial Property for the recognition and registration of his trademark as a well-known trademark. The owner of the trademark might enjoy his rights only after he obtained the decision on the recognition of well-known trademark issued by the National Office of Industrial Property. Such decision should also be published in the Gazette of Industrial property by the National Office of Industrial Property. In despite of the issuance of that regulation, there was neither request of the applicant nor decision of the National Office of Industrial Property concerning the recognition of well-known trademark during the effective period of the regulation, from 2001 to 2006.
The mentioned-above regulation was no longer effective by the enactment of the new law on Intellectual Property in 2005 which went into effect as from 1 July of this year. Under the new law, there is no requirement on the registration procedures applicable to well-known trademarks. Instead, the Law provides a set of criteria for the assessment of a trademark to be regarded well-known. Under Article 75 of the Law, there exist eight criteria needed to take into account when assessing an assumed well- known trademark. The contents of such criteria focus on the reputation of the trademark derived from the practice of using the trademark and the territorial scope where the trademark is protected. In particular, the criteria for the assessment of a trademark to be regarded well-known are the following:
1 Number of the related consumers who are aware of the trademark through purchase or use of the goods or services bearing the trademark or through advertising;
2.Territorial scope of circulation of the goods and services bearing the trademark;
3.Turn-over of the sale the goods or the supply of services bearing the trademark or the volume of the goods sold or the services supplied;
4.The period of continuous use of the trademark;
5. Widespread goodwill of the goods and services bearing the trademark;
6.Number of the countries granting protection to the trademark;
7.Number of the countries recognizing the mark as well known;
8.Value of assignment, licensing price, or the value of investment capital contribution in respect of the trademark.
It is noted that though the new Law sets out the particular criteria for recognition of a well-known trademark, it does not specify which agency to be empowered to issue the decision on recognition of a well-known trademark. Whether a court or an administrative body has the power to recognize a well-known trademark for the purpose of enforcing the trademark rights? Whether the National Office of Intellectual Property has the authority to recognize a well-known trademark for the purpose of ensuring its proper decision on granting or refusing a trademark registration? These questions are laid open in the new Law.
In the process of drafting the instructions on the implementation of the new Law, though it is still going on at the discussion among the policy makers, the dominant view seeming to be acceptable is that the courts and the National Office of Intellectual Property should be vested the power to make the decision on recognition of a well- known trademark for the purposes of establishment and enforcement of trademark rights. For the limitations to the professional expertise, the administrative enforcement bodies appear unready to be in the position of making a decision on recognition of a well-known trademark. The question is that how the administrative enforcement bodies can accept or refuse the evidence of a well-known trademark provided by the trademark owner. Similarly, in which way the trademark owner may prove his rights derived from the assumed well-known trademark.
In a governmental decree issued recently (Decree No. 105), it is required that the trademark owner should submit to the enforcement bodies the evidence proving his trademark is well-known if he wants to enforce his rights under the term of a well- known trademark. If an enforcement authority does not have the competence to recognize a trademark to be well-known, the enforcement authority certainly needs the decision on recognition of well-known trademark issued by some other authority prior to decide the appropriate measure applicable to the infringement case. The governmental decree does not specify which agency shall have the authority to issue that kind of decision, either at the request of the trademark owner or upon the requirement of the enforcement authority. Under the governmental decree, the National Office of Intellectual Property is no longer existent as an agency of IPR assessment for the purpose of enforcement. Instead, the independent bodies functioning as the IPR assessment service providers will be established to provide the IP assessment services at the request of the enforcement authorities and the parties to the IPR infringement cases. However, the governmental decree does not stipulate clearly the legal validity of the conclusion on a well-known trademark made by an IPR assessment service provider in respect of the trademark registration proceedings conducted at the National Office of Intellectual Property. For that reason, the National Office of Intellectual Property may accept or reject the binding effect of the conclusion of well-known trademark issued by an IP assessment service provider. Similarly, the enforcement authorities, including the administrative authorities and the courts, may use the conclusion of an IPR assessment service provider as a source of evidence to identify whether the trademark in the case is admitted as well-known or not.
Pham Hong Quat
The development of the national law on protection of well-known trademarks in Vietnam