Well-known trademarks protection under Vietnamese Law

Definition

The “well-known trademark” term was initially stipulated under Vietnamese Law in February 01, 2001 in the amendment of Decree No. 63/CP dated 24.10.1996 of the Government providing detailed regulations on industrial property in order to guide the implementation of regulations on protection of IP rights in Chapter II, Part VI of the Civil Code (1995); “a well-known mark” is any mark which has become widely known by being continuously used for reputable goods or services”.

Before this time, the term “well-known trademark” never ever been existed in the law yet. According to legal interpretation, industrial property rights for the well-known trademark generated on the basis of the decision to recognize of NOIP. The scope of protection of a well-known trademark is broader than that of ordinary trademark. As a general rule, trademarks are only protected against use or registration in respect of goods or services which are identical with or similar to those for which they are registered or used. This principle originated from the objective of trademark protection that is to prevent consumers from deception or confusion as to the origin of the goods or services. Therefore, if the goods or services are completely different, it will be highly unlikely that consumers will be confused about the source of another. However, with regard to well-known trademarks, as a result of long and extensive use, it can create and increase goodwill for the business owning the said trademark in respect to the goods or services. Once goodwill has been established, a positive image clearly remains in the memory of consumers, and the merchandise or services represented by that specific trademark, among any number of competitive options, are likely to be selected or desired again. This reputation brings a power of attraction, in other words, an advertising power, in the trademark itself, independent of the products they affix to. This value of well-known trademarks exposes them to unfair impairment and exploitation beyond the scope of their utilization for identical and similar products. The broader degree of protection is accepted to well-known marks on non-competing goods or services. However, at that time, due to lack of criteria for determination the reputation as well as lack of procedures in recognizing of well-known trademark, none of trademark had been recognized as well-known by National Office of Intellectual Property of Vietnam (NOIP) decision.

In 2005, with the stipulation of the Intellectual Property Law (IP Law), the term “well-known trademark” was defined again. According to Article 4.20 of IP Law, well known mark means a mark widely known by consumers throughout the territory of Vietnam”. This term was defined on the basis of extent of geographic areas in which the trademark has been identified. Based on the wording of this term, in order to be recognized as well-known, trademark must be widely known by consumers throughout the country. This is a very difficult standard to overcome for trademark owners who want their trademarks to be acknowledged as well-known. This also seems go far from the requirement stated in Article 16(2) of TRIPs Agreement which requires “in determining whether a

trademark is well-known, members shall take account of the knowledge of the trademark in the relevant sector of the public”. Is the mark to be well-known among the public at large or only to the trade circle in which the relevant goods or services circulate? The probable interpretation is that it must be shown that the target audience – the relevant trade circle or the relevant class of consumer for which the particular goods or services are destined – has knowledge of the mark. In other words, the specific sector of the public within which the particular goods or services are purchased or used, or where the mark is exposed through advertising, should become the focus of the actual question. The focus will very much depend on the type of goods or the nature of the services involved. The segment of clients for highly technical equipment such as component for airplanes may be appreciably more limited than the relevant sector of purchasers for daily goods such as soap or clothing.

Furthermore, the well-known trademark definition and the criteria for evaluation of whether or not a mark is well known listed in Article 75 are inconsistent. This problem will be discussed in detail later. In practice, this definition does not make any sense in assessment of well-knownese of trademark. Trademarks which satisfy the criteria set in Article 75 will be

considered as well-known regardless how much degree of recognition they have throughout the country. In otherwise, Vietnam is member of Paris Convention and World Trade Organization, hence, Vietnam is obligated to stipulate in domestic law the provisions which comply with the Paris Convention and the TRIPs Agreement. Vietnam expressly declares in Article 5.3 of IP Law that where the provisions of the international treaties to which Vietnam is a party contravene the provisions of Vietnam IP Law, the former shall prevail. In this circumstance, the requirement of being recognized throughout the territory of Vietnam can be got over by invoking the Article 16(2) or TRIPs Agreement.

Once protected, a well-known trademark enjoys greater protection than an ordinary trademark. Unlike an ordinary one, it is not restricted to a fixed registration period or to protection in relation only to goods or services in relation to which it has been registered.

In reality, it is normal that a mark may have a high degree of recognition or use in one area but a lesser degree of recognition or use in a number of areas across the country. In other words, the mark may enjoy local or regional fame and well-known status but not be recognized throughout the whole country. That is the reason why TRIPs Agreement requires the recognition of relevant sectors of consumers is sufficient to be well known.

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