Trademark means any sign used to distinguish goods or services of different organizations or individuals (Clause 20 Article 4 of the Intellectual property Law 2005 amended in 2022 (IP Law)). The current IP Law of Vietnam stipulates that industrial property rights to trademarks are established on the basis of decisions on granting the protective certificates of Vietnamese competent authoritiy, which is the IP Office, and when the rights holder registers.
However, in some special circumtances, when a trademark has become “famous” because it was used continuously, widely and for a long term, that trademark will be “recognized” without having to carry out registration procedures at the IP Office. In other words, at this time, a well-known trademark will have its own protection mechanism without having to follow the registration procedures at the IP Office. Clause 20 Article 4 of IP Law regulates: “Well-known trademark means a trademark widely known by the relevant sections of the public throughout the territory of Vietnam.”;
It can be seen that, compared to the previous IP Law, the Legislator has edited the specialized word of the public from “consumers” to “relevant sections of the public”. This change has limited the scope of evaluation of whether a trademark is considered a well-known trademark or not. Accordingly, in order to evaluate whether a trademark is well-known or not, people will consider it within the scope of “relevant sections of the public” instead of considering it on the whole of consumers as in the previous regulations. Although there is currently no clear regulation of which the term “relevant sections of the public” is but we can understand that these sections of the public includes:
- Relevant (direct/potential) consumers of the goods/services bearing the trademark;
- People related to the distribution channel of goods/services bearing the trademark (manufacturers or suppliers);
- Group of business entities related to goods/services bearing the trademark
This amendment is not only in line with international law in the EVFTA, CPTPP, TRIPs and General Recommendations of WIPO of 1999, but also facilitates rights enforcement activities, removes obstacles for owners having trademarks that are well-known in each specific field and only known and approached by the public, consumers in related fields. For instance, in the case a trademark is a high-tech medical device used in clinics, hospitals, it is not logical to require that trademark known by all consumers, even ordinary consumers. Trademark only needs to be known by a group of consumers such as doctors, nurses, producers, distributors… those who work in the medical and pharmaceutical field.
Otherwise, Article 75 of IP Law regulates
“Whether a trademark is well known shall be decided according to some or all of the following criteria:
1. The number of relevant consumers who were aware of the trademark by purchase or use of goods or services bearing the trademark, or from advertising.
2. The territorial area in which goods or services bearing the trademark are circulated.
3. Turnover of the sale of goods or provision of services bearing the trademark or the quantity of goods sold or services provided.
4. Duration of continuous use of the trademark.
5. Wide reputation of goods or services bearing the trademark.
6. Number of countries protecting the trademark.
7. Number of countries recognizing the trademark as a well known trademark.
8. Transfer price, Assignment price, or investment capital contribution value of the trademark.”
Accordingly, the owners want the competent authority to recognize the trademarks they own as well-known trademarks just need those documents proving that the ownership rights which meet some of the criteria specified in Article 75 as quoted above. Compared to the provision of the prevous IP Law amended in 2019, the requirements for well-known trademarks have been lowered from having to meet all 8 criteria to only having to meet some of the criteria. This is completely in line with reality because it is extremely complicated to prove a well-known trademark having all 8 criteria.
In addition, IP Law also has the new regulation amended at Point i, Clause 2, Article 74 as follows: “The time a trademark is recognized well-known is when it is considered to be used for reference, which means the reference trademark begins to be well-known before the filing date of the registration trademark.”
This means that in opposition or cancel cases of a trademark based on the rights to a well-known trademark, (1) the evidences proving the well-known trademark must be (established) before the filing date of the other party, and (2) the documents/evidences available after the filing date of the other party are not valid and not accepted. This new regulation is meaningful in that a well-known trademark’s owner exercise the right to oppose or cancel a trademark based on the right to a well-known trademark.
By Nguyen Thi Hang
Trademark Department
