1. Introduction
The design of a trademark, though usually be underestimated, has profound impacts for the owner’s future business activities. Trademark owners should not only focus on securing trademark protection but also need to pay attention to the ability of intellectual property rights enforcement (abbreviated as “IPR enforcement”) in the future.
2. From many famous trademarks in the world
Many of the world’s most famous trademarks have also found themselves in a dilemma regarding intellectual property rights enforcement when their trademark designs are relatively simple. In 2024, the high-end brand Thom Browne won a years-long legal battle with Adidas in the UK after Adidas sued Thom Browne, alleging that Thom Browne’s use of a four-stripe design infringed upon Adidas’s intellectual property rights in their distinctive three-stripe trademark. However, High Court of Justice in England and Wales ruled in favour of Thom Browne, reasoning that the average consumer can generally perceive the difference between three and four-stripe as well Adidas had failed to provide any evidence of actual consumer confusion. The ruling comes after Thom Browne won a series of other legal battles against Adidas from other countries.
It implies that Adidas’s protection rights for the three-stripe trademark are only recognized within the scope of its protected trademark. Accordingly, Adidas’ three-stripe trademark can be considered relatively simple in the diverse fashion industry with countless different stripe variations, Adidas can hardly prevent other parties from using three-stripe trademark that is different from its three-stripe trademark, unless it can demonstrate that a likelihood of consumer confusion between the trademarks or provide other concrete evidences.[1]
Similarly, the “ChatGPT” and “GPT” trademarks of the AI chatbot owned by OpenAI, which have made significant global attention recently, also face a disadvantageous situation due to the use of common terms in the technology sector as a part of their trademarks. Specifically, the United States Patent and Trademark Office (USPTO) rejected OpenAI’s application to trademark “ChatGPT” and “GPT”, citing that “CHAT” means “a synchronous exchange of remarks over a computer network.” and “GPT” is a widely used acronym that means “generative pre trained transformers,” which is widely used. Accordingly, the USPTO believes that “GPT” is a broad term to register and may prevent competitors from accurately describing their products.
Despite OpenAI’s efforts to argue that “GPT” is neither descriptive nor generic in that it is unlikely that consumers would “immediately understand” its meaning, the USPTO maintained that it doesn’t matter if consumers don’t know what GPT means, rather whether those in the technology field understand that the term “GPT” refers to a general type of software, not just OpenAI products.
The widespread use of the term “GPT” has created a considerable challenge for OpenAI in enforcing its IP rights, given the difficulties they have faced in securing trademark registration, while competitors have rapidly integrated “GPT” into the name of their AI products and services. Consequently, OpenAI has been compelled to create and design many new trademarks for other products and services, such as their text-to-video model as “Sora.”.[2]
3. To trademarks which are familiar to consumers in Vietnam.
In Vietnam, many trademark owners are also facing challenges in enforcing their intellectual property rights when they have used trademarks which are lack of distinctiveness in their business activities. For example, Giao Hang Tiet Kiem Joint Stock Company (abbreviated as “GHTK Company”), which primarily operates in the fields of transportation and express mail delivery services, is commonly known as (as well as the trademark) “Giao Hang Tiet Kiem.” This trademark is considered as lack of distinctiveness as it merely describes the services and cannot be registered for protection. This creates challenges for GHTK Company to handle infringements when other entities using similar signs, lead to a gradual shift by GHTK Company towards the use of alternative trademarks in their business activities even though consumers are familiar with the trademark “Giao Hang Tiet Kiem”. To ensure protection, GHTK Company has been obliged to register other trademarks such as “GHTK” (abbreviated form) or combine the phrase “Giao Hang Tiet Kiem” with other elements.
In another case, VN Coffee Tea Service Trading Corporation (abbreviated as “VN Coffee Tea Corporation”) also encountered challenges in both trademark registration and the enforcement of intellectual property rights, given that, up to now, only the trademark “THE COFFEE HOUSE SINCE 2014, device” has been accepted for protection out of 07 trademarks that VN Coffee Tea Corporation filed applications.
It is apparent that the combination of simple words “THE”, “COFFEE”, “HOUSE” to create the trademark has revealed several limitations, as these words are considered as lack of distintiveness within the classes of goods and services related to coffee. As a result, the trademark “THE COFFEE HOUSE SINCE 2014, device” being protected only in general form and not protected separately for “THE COFFEE HOUSE” because as these are English words with meaning, representing the common name and describing the locations which sell the related goods and services, as stipulated in Articles 74.2.b, c of the Law on Intellectual Property.
As a result, many other parties have used part or all of this term to register other identical or similar trademarks, or even use the sign “THE COFFEE HOUSE” for cafes/stores with similar store design to the original cafes/stores of VN Coffee Tea Corporation, thereby causing confusion among consumers. In these cases, even with sufficient grounds to demonstrate unfair competition by these parties, VN Coffee Tea Corporation will face significant difficulties and obstacles in addressing the infringement and protecting its legitimate interests.
Furthermore, the delay in trademark registration also constitutes a contributing factor to the detriment of VN Coffee Tea Corporation ‘s rights. Specifically, VN Coffee Tea Corporation only proceeded to register its second “THE COFFEE HOUSE” trademark on September 8, 2021, more than six years after the successful registration of its initial trademark. This indicates a lack of adequate attention and strategy in the corporation’s approach in protecting its trademark rights. This situation has unintentionally generated an opportunity for third parties to take advantage of the impressive uniqueness of the term “THE COFFEE HOUSE” to use or register similar trademarks created by combining this term with other signs, leading to a high degree of consumer confusion. This highlights the important role in business activities of intellectual property protection that any trademark owner needs to pay attention to. Therefore, updating information and consulting with lawyers and experts in the field of intellectual property is becoming ever more necessary, especially in today’s highly competitive economic environment.
4. Regulations and practices in Vietnam
To be eligible for protection, a trademark must satisfy the conditions stipulated in Article 72 of the Law on Intellectual Property 2005, amended and supplemented in 2022 (hereinafter referred to as the “IP Law”), in which the trademark must satisfy the requirement of distinctiveness as stipulated by Article 74 of the IP Law. Distinctiveness can be simply understood as the trademark containing characteristics or signs that help to distinguish the goods or services of the trademark owner from those of other parties. Specifically, the distinctiveness of a trademark is categorized into: inherent distinctiveness and second meaning (acquired distinctiveness through use or gained a significance awareness among the consumer). A trademark can achieve inherent distinctiveness through a unique design by combining elements such as words, images (devices), and colors, thereby clearly distinguishing it from other trademarks. Furthermore, in cases where a trademark lacks inherent distinctiveness, it may still be protected by acquiring distinctiveness through extensive use. For example, the SHARP trademark of SHARP KABUSHIKI KAISHA (also trading as SHARP CORPORATION) was initially considered to lack of inherent distinctiveness because the word “sharp,” meaning keen or acute, could be seen as descriptive of the shape of televisions, the goods that SHARP manufactures and sells. However, the SHARP trademark was accepted for protection later because consumers recognized this trademark on television products as belonging to SHARP KABUSHIKI KAISHA (also trading as SHARP CORPORATION).
However, currently, many trademark owners tend to use common and popular words/terms within specific industries, intending to design simple and memorable trademarks for consumers. This inadvertently increases the risk of being refused protection or have to redesign for trademark to be wholly protected, without obtaining separate protection for the specific signs. Furthermore, subjectivity and underestimation of the importance of trademark design can lead to potential risks of intellectual property rights enforcement in the future.
In Vietnam, when trademark owners intend to enforce their intellectual property rights agaist infringement or intellectual property conflicts, they often have to conduct an assessment at Vietnam Intellectual Property Research Institute. Accordingly, the assessment conclusion will serve as a crucial document and evidence to prove whether an infringement has occurred. In case the assessment conclusion is favorable, the trademark owner can provide it to the intellectual property enforcement authorities to handle the infringement, send a warning letter (C&D letter), file oppositions or submit third-party observations.
This indicates that although trademarks are protected through registration, the assessment of similarity or infringement by competent authorities still plays a decisive role in the process of intellectual property rights enforcement. In other words, the initial subjective assessment of the similarity between trademarks is inadequate to confirm infringement and competent authorities often require documents and evidence such as assessment conclusion to proceed with the handling. Therefore, the proactive preparation of comprehensive documentation and evidence, including the assessment conclusion, from the very beginning of intellectual property rights enforcement is essential.
However, in cases where a trademark has been protected but only as a whole without separate protection for the specific signs/parts/elements that the trademark owner primarily uses in their business activities (as in the case of VN Coffee Tea Corporation mentioned above), obtaining a favorable assessment result can be difficult. This is because other parties can still use the signs/parts/elements not separately protected (due to a lack of distinctiveness) for their trademarks.
To overcome this situation, trademark owners can consider several alternative approaches, including registering multiple similar “umbrella” trademarks to broaden the scope of their trademark rights, as building a “fence” to protect its core trademarks, or using legal measures such as unfair competition and/or sending C&D letters to the infringing party.
However, each option has certain limitations. For example, registering multiple similar trademarks can be time-consuming and financially burdensome, and concurrently adding complexity to the owner’s trademark list. Unfair competition measures also have several drawbacks when applicable cases are limited, or C&D letters may not be sufficiently to deter infringing parties.
5. Conclusion
In order to secure the future protection and enforcement of their intellectual property rights, trademark owners need to stay updated on intellectual property knowledge and consult with intellectual property advisors to design trademarks that comply with legal regulations from Article 72 to Article 74 of the Law on Intellectual Property, particularly regarding the distinctiveness of the trademark. Dedicating time and resources in updating intellectual property knowledge in general and trademark design in particular not only helps trademark owners protect their intellectual property assets, but also creates a competitive advantage in the Vietnamese and global markets.
[1] https://www.fashiondive.com/news/thom-browne-adidas-stripe-lawsuit-uk/734048/ và https://www.farrer.co.uk/news-and-insights/more-than-three-stripes-and-youre-out-adidas-loses-trade-mark-case-against-thom-browne/
[2] https://www.theverge.com/2024/2/16/24075304/trademark-pto-openai-gpt-deny và https://www.geekwire.com/2024/uspto-denies-openais-applications-to-trademark-chatgpt-and-gpt/
By Do Anh Tuan
Enforcement Department
