Prohibition of registration of a mark identical or similar to well- known/famous trademarks of others
In conformity with the international requirements with respect to well-
known trademark protection set by Paris Convention and TRIPs Agreement, the prohibition of registration of a mark which is in conflict with well-known trademark has been stipulated in IP Law.
According to Article 74(2)(i) of IP Law: “Distinctiveness of the mark:
2.A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
(i) Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark.”
This article contains two different parts.
The former part provides the same prohibition as that applies for registered ordinary trademark. That means a mark which is identical with or confusingly similar to another person’s well-known mark which has been registered for identical or similar goods or identical or similar services affixed by well-known mark will be considered as non-distinctive, hence, will be refused from registration. The ambit of protection in this part is to prevent consumers from confusion over source of goods or services as traditional principle. For a well-known trademark under IP Law, trademark right shall be established on the basis of use process, not subject to any registration procedures, thus, the separately provision for well-known trademark was created differently from that used for registered trademark.
The latter part provides the protection beyond the ambit of confusion to the goods or services which are not identical with or similar to those covered by well-known trademark. As a general rule, trademark is only protected against use or registration in respect of goods or services which are identical or similar to those for which they are registered or used. This principle derived from the objective of protection of public against deception or confusion as to the source of goods or services. It is highly unlikely that consumers will be confused about the origin of products if the goods are completely different. However, with regard to well-known trademark, the issue is totally different. As a result of widely and continuously use as well as others factors such as quality of product or service, frequency advertising… the trademark becomes more familiar with the public. The reputation brings a power of attraction in the trademark itself, independent of the products or services they have been affixed. This value of well-known trademark leads them to be likely to be impaired or exploited beyond the use for identical or similar products or services in bad faith. This requires a broader degree of protection provided to well-known marks on non-competing goods or services, to which their commercial magnetism amounts to an exception to the principle of specialty.29 In reply to this demand, TRIPs Agreement has established a wider rule of special protection granted to well-known trademarks. The confusion is not required as long as the use of an identical or similar mark on a completely different goods or services would indicate a connection with the
owner of the well-known trademark and as long as the uniqueness of well-known trademark would be damaged.
The expansion of well-known trademark protection to dissimilar goods or dissimilar services under the latter part of Article 74(2)(i) of IP Law happens in two situations: the mark for which the registration is sought will be refused if:
- It is identical with or confusingly similar to the well-known trademark used for dissimilar goods or services, and
- The use of that mark may lessen the distinctiveness of the well known trademark or the mark registration was aimed at taking advantage of the reputation of the well known mark.
The contain of the latter part of Article 74(2)(i) with respect to the impairment of the uniqueness of well-known trademark is something resembling a dilution case in which the capacity of a famous mark to identify and distinguish goods or services is weaken regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake, or deception.
It should be noted that Article 16(3) of TRIPs is only applicable to registered well-known trademarks and thus excludes unregistered ones from the extended protection. However, trademark right granted to well-known trademark under IP Law can be automatically established based on its usage regardless it is registered or not, therefore, the latter part of Article 74(2)(i) can be acknowledged as fall under Article 16(3) of TRIPs Agreement.
Since it is very difficult to work in practice with the broad definition of confusing similarity, some rules have been developed which help to define in specific cases whether, in view of the similarity of the two marks, confusion is likely to arise.
In applying the Article 74(2)(i) of IP law, to determine whether or not a trademark is similar to a well-known trademark, the elements of each trademark such as its appearance, pronunciation, concept as well as commercial impression (impression for consumers in the course of trade) must be taken into consideration in a comprehensive manner to determine if there is an apprehension that the two could be confused by a customer. The criteria in judging the similarity resemble those applies for ordinary trademark. However, it is said in Trademark Guidelines31 which has been issued recently that in case of judging the similarity of a well-known trademark it should be noted that:
- Well-known trademarks are often highly distinctive and have wide range of impression therefore the similarity between a sign and a well-known trademark must be taken in to account stricter than that of ordinary trademarks because it is more likely to cause confusion for consumers;
- A sign similar to the well-known trademark may not be protected for both products /services which are not similar to those bearing the well-known mark.
All of the following situations are possible to cause confusion for consumers:
- Identical signs used for identical goods/services
- Identical signs used for similar goods/services
- Similar signs used for identical goods/services
- Similar signs used for similar goods/service
However, if the cited trademark is well-known trademark, it is liable to cause confusion even though the goods or services affixed to the mark in question are definitely different provided that consumers may think it comes from the same source or has relationship with those of well-known trademark.
For example:HONDA is recognized as well-known trademark for cars, motorbikes among consumers. When some ones other than its owner use this trademark for confectionery, the consumers may think the two kinds of products belong to the same owner or the two owners have close relationship.
In the Circular No.1 for guiding the Decree No.103, the sign which is subject of registration application shall be regarded as unregistrable if:
“39.10 Conclusion of the confusing similarity of the sign in the relation with the cited mark
(iv) The sign is identical with or similar to the cited 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“.
In the light of the relevant statutory provisions, it may be concluded that the protection of well-known trademarks in Vietnam not only fulfills the obligations under Article 6bis of the Paris Convention and Article 16(2) and
16(3) of the TRIPS Agreement, but goes beyond their limited scope. In reality, the question is how to implement these advance provisions effectively.