No specific article or provision related to the ways to obtain well-known trademark recognition can be found in any statutory document. According to Decree No.103/2006/ND-CP of September 22, 2006, it is stated the base and procedure for establishment of industrial property right as follows:
“2. Industrial property rights to well-known marks are established on the basis of widespread use of those marks according to the provisions of Article 75of the Law on Intellectual Property, not requiring the completion of registration procedures.” and in provision 42(4) of Circular No.1/2007 TT BKHCN of February 14, 2007, two routes of acknowledgement of well-known-ness has been pointed:
“If a well-known mark is recognized according to civil procedures or under a recognition decision of the NOIP, that well-known mark shall be recorded in the list of well-known marks kept at the NOIP“
There seems a disagreement between the two above-mentioned provisions. The registration of well-known trademark is not necessary in one but the well-known-ness is recognized through NOIP’s decision in other.
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 NOIP 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 IP Law. Up to now, there is no type of decision has been rendered by the NOIP or the court.
In practice, the recognition of well-known trademark has been made case- by-case indirectly. NOIP has issued a series of decision to refuse the registration of signs which are identical or confusingly similar to well-known trademark under Article 74(2)(i) of IP Law. In these cases, it deems that the well-known status of trademark has been indirectly admitted by the NOIP decision on related trademarks.
Nevertheless, in Decree No.105/2006/ND-CP of September 22, 2006, it is required that if the well-known trademark owners want to enforce their right in infringement cases, they should submit the evidence proving their trademarks’ well-known-ness. The problem will happen if an enforcement authority is not capable of recognizing a trademark as well-known, in this case, they certainly needs to have an expert opinion with respect to the well-known status of trademark in question given by competent authority. The Decree No.105 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. The NOIP is no longer existent as an agency of industrial property right assessment for the purpose of enforcement. Instead, Vietnam Intellectual Property Research Institute (VIPRI) is appointed to function as the industrial property right assessment service providers at the request of the enforcement authorities and the parties to the industrial property right infringement cases. However, the Decree No.105 does not state clearly the legal validity of the conclusion on a well-known trademark made by VIPRI in respect of the trademark registration proceedings conducted at the National Office of Intellectual Property. This decision is not also stated in provision 42(4) of Circular No.1/2007 TT BKHCN. For that reason, the NOIP may accept or reject the binding effect of the conclusion of well-known trademark issued by VIPRI. Similarly, the enforcement authorities, including the administrative authorities and the courts, may use the conclusion of VIPRI as a source of evidence to identify whether the trademark in the case is admitted as well- known or not. However, VIPRI’s decision is not a well-known trademark recognition decision.
In fact, the need of acknowledgement of well-known trademark takes part in all stages of trademark protection from establishing intellectual property right, examining the registrability of trademark to taking trademark enforcement actions therefore many competent authorities get in touch in this action such as intellectual property inspectorate, economic police, custom authority, market management authority… However, the capacity in judging the well-known-ness status of trademark is not sufficient among competence authorities. Apart from the NOIP, which is responsible for establishment of industrial property rights as well as cooperation with other competence authorizes to take measures to protect legitimate rights; other entities appear unready to be in the position of making a decision on recognition of well-known trademark due to the limitations of the professional expertise. This fact raises suspicions about the efficacy of well-known trademark protection. The question is that how the enforcement authorities 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.