In recent years, businesses have gradually realized the importance of protecting their intellectual property assets, especially marks. What are conditions need to meet to protect the mark? Find out with AMI through the following article.
What is trademark?
According to the provisions of Clause 16, Article 4 of the Law on Intellectual Property 2005: “A mark means any sign used to distinguish goods and/or services of different organizations or individuals”. Mark is subject matter of industrial property right, therefore, industrial property right to a mark shall be established on the basis of a decision of the competent State agency to grant a protection title in accordance with the registration procedures stipulated in the Law on Intellectual property or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member. In the case of a well known mark, industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures.
What are conditions for mark protection?
In accordance with Article 72 of the Law on Intellectual Property 2005, a mark shall be eligible for protection when it satisfies the following conditions:
The first, it is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours. This condition is understood that the mark must be perceived by the human eye, thereby distinguishing the goods and services containing this mark from other goods and services.
However, the law also stipulates that if the mark contains the following signs, it shall be ineligible for protection as marks:
- Signs identical with or confusingly similar to national flags or national emblems.
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services
The second, it is capable of distinguishing goods or services of the mark owner from those of other subjects. A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the following cases that are considered to be non-discriminatory:
- Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
- Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
- Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
- Signs describing the legal status and business sector of business entities;
- Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in the Law on Intellectual Property 2005;
- Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
- Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
- Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of the Law on Intellectual Property 2005;
- 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;
- Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
- Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
- Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
- Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.
For well-known marks, if the mark meets the conditions specified in Article 75 of the Law on Intellectual Property 2005, it will be considered a well-known mark and automatically protected without registration.
Above are the conditions for trademark protection under current Vietnam laws, in the process of evaluating and implementing procedures for registering mark protection, if you have any question, you can contact AMI for specific advices.
