IMPORTANT CHANGES ON TRADEMARK REGISTRATION YOU SHOULD KNOW IN LAW ON IP OF VIETNAM AMENDED IN 2022
By Tran Tuyen, Thanh Hong, Q. Minh ELITE Law Firm
In this change the Laws focuses on changes that are more suitable to the practice of trademark protection. We would like to walk you through the upcoming change to prepare for your business.
1.Deregulation on integrated marks (Article 4.19 according to the previous IP Law)
According to the provisions of the current IP Law (IP Law 2005, revised 2009 and 2019), Integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types of interrelated. However, in the opinion of the legislators, in essence, trademarks are used to distinguish the origin of goods and services between manufacturers and service providers. Therefore, if the trademarks are identical or similar but with the same owner, the possibility of confusion about the origin of the product will not occur. Therefore, the current regulations on associated trademarks are complicating the process of trademark examination in the procedure for establishing and transferring rights. In other words, the integrated trademark protection mechanism is no different from the normal trademark protection mechanism. Therefore, it is not necessary to keep the regulations on integrated trademarks. Therefore, the IP Law 2022 has removed the regulation on integrated marks.
2.Amending the scope of the regulation on well-known marks (Art. 4.20)
Usually, in each field or line of business, there will be a number of reputable and well-known branded/branded products that are widely known by consumers of that field, for example: “3M” is a reputable brand/brand in the field of materials and chemicals, “Apple” is the number one brand in the field of phones and electronic devices, computers, “Zippo” is a reputable brand in the field of manufacturing consumer goods (notably lighters for smokers), “VISA” is a well-known brand in the field of digital finance (fintech), financial software, “SKF” is a prestigious brand for bearings, seals and lubrication systems in industrial equipment, machinery, etc. Therefore, having a well-known or well-known brand name in all fields is a harsh requirement and incorrect in consumer and business practice. Accordingly, for well-known brands in a narrow range of industries, it is exceedingly difficult to meet the regulation ” well-known mark means a mark widely known by consumers throughout the Vietnamese territory” under the current Intellectual Property Law because the product is branded in a narrow field or industry (such as bearings for machinery, aluminum door frames (glass), bicycle locks, etc.) in only popular to a certain customers but cannot be known throughout the territory of Vietnam.
On the other hand, the reality of applying the Intellectual Property Law in 2009, amended and supplemented in 2019 shows that although it is stipulated that a trademark is considered a well-known mark, it must be widely known by consumers throughout the territory of Vietnam but in reality, the criteria for evaluating well-known trademarks (Article 76 of the IP Law) are limited to “relevant consumers”. Therefore, the IP Law 2022 has revised the concept of a well-known mark as a pharmaceutical mark widely known by the public in the territory of Vietnam to be true to the actual use of the mark. At the same time, a well-known mark is also evaluated and recognized by a competent state agency (NOIP) based on some or all of the 08 criteria specified in Article 75 as amended by the IP Law 2022 instead of meeting all of the criteria in all assessment cases as before.
3.The sound mark represented in graphic form has been protected (Art. 72)
In addition to the purpose of implementing the commitment in the CPTPP Agreement that Vietnam has joined, the amendment of this regulation is also to respond to the actual requirements of trademark protection in the 4.0 technology era and the inevitable trend in the current context. Sound marks not only demonstrate the distinguishing function of a trademark, which is to distinguish goods and services of an enterprise, but also contribute to increasing the ability to attract customers. Because sound has a more intuitive impact than other signs, it can convey the emotions and characteristics of the brand to consumers, creating a deeper connection.
It can be seen that the IP Law 2022 stipulating the protection of audio marks is in line with the needs of businesses as well as international practices. For this change, businesses were able to protect their unique sound signs as trademarks, which increased their ability to attract customers more than conventional trademarks.
4.Adding the case of invalidation of the trademark protection title (Art.95)
Article 95 (points h, i, k, clause 1), IP Law 2022 has added more grounds to terminate the whole or part of the validity of trademark registration in some of the following cases:
- h) The use of a protected mark for goods or services by the trademark owner or a person authorized by the owner causes consumers to misunderstand the nature, quality or geographical origin of such goods or services;
- i) The protected mark has become the common name of the goods or services registered for that trademark;
- k) The geographical indication of a foreign country is no longer protected in the country of origin.
When a trademark has been known to users and the public to the extent that it is as common as the common name of goods or services, it also loses its distinguishing function from other goods and services on the market. Some examples (this is for illustrative purposes only, not the actual case):
– If the Google trademark is used by Vietnamese consumers as a verb with the same meaning as the word “search” and the word “Google” is included in the Vietnamese dictionary as a Vietnamese word meaning “search”), in this case, the trademark “Google” will be deemed to have lost its function and distinctiveness.
– Another example, in Vietnam, if Nestle’s Maggi brand becomes a popular name for a type of soy sauce, that Maggi brand will also be considered as losing its function and distinctiveness.
In the above examples, trademark registration will fall into the case of invalidation of protection titles under the IP Law 2022 (Article 95.1.i). Therefore, enterprises and title holders should pay attention to the use of the registered trademark so that the mark does not become so popular that it becomes the common name of the registered goods/services.
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