In IP Law 2005, the criteria for determining well-known trademark were first stipulated in legal document. Although the protection of well-known trademark was admitted since 2001 on the basis of registration through the recognition decision of NOIP, but, in practice, none of well-known trademarks had been granted by this way. One of the main reasons of this situation is lack of statutory standards for recognizing well-known trademark. In reply the need to fulfill the requirements as the member of WTO, a lot of Vietnamese Law had been modified or established and IP Law 2005 is one of them.
These criteria were built on the basis reference to the WIPO Joint Recommendations concerning provisions on Protection of Well-known marks and experience of other countries in the world.
Article 75 of IP Law provides the following relevant factors to be considered in determining whether a mark is well-known:
“To be considered well-known as a well-known mark, the following criteria shall be taken into account:
- The number of involved consumers who have been aware of the mark through purchase or use of goods or services bearing the mark or through advertising;
- Territorial area in which goods or services bearing the mark are circulated;
- Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;
- Duration of continuous use of the mark;
- Wide reputation of goods or services bearing the mark;
- Number of countries protecting the mark;
- Number of countries recognizing the mark as a well-known mark;
- Assignment price, licensing price, or investment capital contribution value of the mark.
As stated before, there is a contrary direction between well-known trademark protection in Article 4(20) and the first criterion indicated in Article 75 related to the number of consumers involved in trademark. “Well-known trademark” was defined in Article 4(20) requires the reputation over consumers throughout the territory of Vietnam but this requirement does not appear in any items of Article 75. However, in practices, rarely has well-known trademark received the acknowledgement of consumers nation-wide. Therefore, the requirement set forth in Article 4(20) seems be ignored in determining well- known trademark. Moreover, the consumers in this manner is not strictly limited to end-consumers of goods or services to which the mark applies, but included the persons involved in channels of distribution of, or business circles for goods or services to which the mark applies. The expression “consumers” is to be understood in the wide sense of the term, and covers all part of the consuming public. The business circles are in general constituted by importers, wholesalers, licensees or franchisees interested and prepared to deal in the goods or services to which the mark applies. As stated in Article 16(3) of TRIPs Agreement, the words of this article can be read as it is sufficient that the mark is well known in at least one relevant sector of the public, and it is not permitted to require that the mark be well known by the public at large. This approach is considered to be fair, because goods or services are usually directed only to certain sectors of public, in accordance with their diversified tastes, interests, income, or creational activities, to name a few criteria. This means that only those who are interested in the goods may have reasons to know about the mark. And the cases in Vietnam are not an exception. In so many cases related to well-known trademark, the reputation within relevant sectors is sufficient to be proved the well-known-ness. With respect to the degree of recognition in the country of protection, as refer in list of criteria, the number of involved consumers is taken in consideration.
Apart from the criterion related to the number of consumers who is aware of well-known trademark, the territory where the trademark has been used is also considered. In line with the definition of well-known mark in IP Law, it raises the question whether well-known trademark that is widely recognized by consumers outside the territory of Vietnam that is not used in Vietnam is protected as well-known trademark. It is undoubted that none of factors stated in Article 75 expressly requires that the well-known mark must be used in Vietnam. It should be noted that one of many purposes of the protection of well-known trademark is to protect the public from confusion, thus actual use or non-use a well-known foreign trademark in country where it claims for protection of is not decisive. In some countries, it is indeed rational not to require use of a well known trademark in the country of protection, because nowadays physical locality is no longer considered one of the most important factors for establishing goodwill in a country, since consumers are more interested in the quality of the goods, symbolized by internationally well known or famous marks, rather than the actual presence of the goods or services themselves. Furthermore, consumers in many cases know about a trademark through spill-over advertisements in international publications or media, and thus local use is not determinative in establishing the knowledge of consumers with regard to the trademark.
In practices, more than one foreign trademark which has not yet been used or registered in Vietnam has been protected although this principle cannot be found in any statutory document. In 1992, NOIP denied the application for registration of trademark “McDonald’s” of an Australian company for fast food, food providing services and other classes. At that time, NOIP had sufficient information to confirm “McDonald’s” is famous trademark in the world for fast food and food supplier under McDonald’s Corporation (United States) even though this company has not registered and used this mark in Vietnam and the act of Australian company in this situation deemed as taking unfair advantage of “McDonald’s” reputation. It can be presumed that McDonald’s fame reaches Vietnamese consumers through travelers, mass of media such as internet, newspaper… Thus the registration of Australian company for trademark would make consumers confuse about the origin of service or mislead about the relationship between the two companies. The application of Australian company was refused on the basis of well-known trademark protection. In 1993, “Pizza Hut” had been granted for OPHIX GROUP (Australia Company). After that, The Pizza Hut International Company lodged its invalidation, arguing the “Pizza Hut” mark be registered under its own name, as it had been in many other countries even though it had not been used in Vietnam. They also provided the evidence to prove trademark’s reputation in the world. Based on trademark owner’s materials, NOIP decided to invalidate the trademark registration granted to Australia Company.
Others criteria stipulated in Article 75 is similar to those of WIPO Joint Recommendations and others countries criteria. In general, all of these factors are interdependent, in fact, whether or not a trademark is well-known should be judged comprehensively on the case-by-case basis, which means that even if one of the factors is weak in a particular case; this can be compensated for by the strength of another of the factors.
Because the industrial property right over well-known trademark is established based on the usage without registration procedure so in order to enjoy a protection as well-known trademark, trademark owners must show the evidence to demonstrate their ownership and trademark’s celebrity.
Many types of evidence have been specified in provision 42(3) of Circular No.1/2007 TT BKHCN of February 14, 200737 evidencing the ownership and reputation of a mark as follows:
- Materials on the scope, scale, level and continuity of the use of the mark, including an explanation of origin, history and time of continuous use of the mark;
- Material showing the number of nations in which the mark has been registered or recognized as a well-known mark;
- List of goods and services bearing the mark;
- Materials showing the territorial area in which the mark is circulated;
- Materials showing the turnover from products sold or services provided;
- Materials showing the quantity of goods and services bearing the mark manufactured or sold;
- Materials showing the property value of the mark such as price of assignment or licensing of the mark and value of investment capital contributed in the form of the mark;
- Materials showing the amount of investment and expenses for advertising and marketing of the mark, including those for participation in national and international exhibitions;
- Materials showing the success in infringements, disputes and decisions or rulings of the court or competent agencies;
- Surveyed number of consumers knowing the mark through sale, purchase, use, advertisement and marketing;
- Rating and evaluation of reputation of the mark by national or international organizations or the mass media;
- Prizes and medals awarded on the mark;
- Results of examinations held by intellectual property examination organizations…
Other than above-mentioned evidences, trademark owners are free to submit anything to support their demand in recognition of well-known trademark.