During the process of examining the trademark registration applications, the NOIP has in many cases rejected the request of the applicants for registration of their trademarks for the reason of the similarity of their trademarks in comparison with the assumed well-known trademarks.
However, due to the fact that there is neither the list of the well-known trademarks stored in the National Office of Industrial Property nor the decisions on recognition of the well-known trademarks issued by the competent authorities, the trademark examiners could not invoke the provisions on protection of well-known trademarks as a direct reason for their refusal of trademark registration. Rather, they refer to other provisions regarding protection of the widely used and recognized trademarks available in the law and regulations. Under the old regulations (Article 6.1.e of Decree 63 issued in 1996), an application for registration of trademark may be rejected if the trademark described in the application is regarded identical or confusingly similar to any other person’s trademark which has been widely used and recognized. This provision was codified in Article 74.2.dd of the new Law. Accordingly, a sign having been widely used and recognized as a trademark may be protected without the registration procedures. Otherwise, a trademark application shall be rejected if the trademark included therein is regarded identical or confusingly similar to the trademark having been widely used and recognized.
The following are the examples of the trademark applications have been rejected for the reason of being identical or confusingly similar to the widely used and recognized trademarks.
Apart from the refusal of registration for the trademark applications which contain the signs identical or similar to the well-known or widely used trademarks, the National Office of Intellectual Property of Vietnam also rendered a series of conclusions and statements on the infringement of well-known and widely used trademarks upon the request of the parties to the trademark disputes and the enforcement authorities. In practice, the enforcement authorities have conducted various actions against the trademark counterfeit goods, especially the infringement acts aiming at the reputation of well-known and widely used trademarks. As to the sanction applicable to the IPR infringement, the new Law on Intellectual Property increases the maximum of the monetary fine from the amount equivalent to 70,000 USD under the old regulations to the amount equivalent to five times of the value of the infringing goods under Article 214 of the new Law. This change of the law expresses the strong determination of the government to repress the counterfeit disease and establish the fair competition environment for the domestic and foreign enterprises.
For the purpose of the trademark value promotion both in the domestic production and in exportation of products, in 2003 the Government approved the National Trademark Program. By this program, the Ministry of Trade initiates the various campaigns to build up and foster the trademark reputation of the domestic products. Currently, the National Trademark Program is going on in Vietnam. The program encourages and supports the enterprises to formulate and realize the long-term strategy of trademark development and protection.
In summary, the new law on intellectual property introduces the significant
Pham Hong Quat
Deputy Chieft Inspector
The development of the national law on protection of well-known trademarks in Vietnam