- the number of relevant consumers knowing about the mark through buying, selling, using the products/services bearing the mark or through advertisement of the mark;
- the territories where the products/services bearing the mark are circulated ;
- the value of sales of products/services bearing the mark, or number of products sold or services provided;
- the duration of continuous use of the mark;
- wide reputation of products/services bearing the mark;
- the number of countries where the mark is registered;
- the number of countries where the mark is recognized as being well-known;
- the value of the mark in business transactions, such as assignment, licensing, investment capital contribution.
During recent years, in line with the improving awareness of domestic busisnesses and consumers on the protection of trademark rights, Vietnam has made great efforts in reforming its protection system. At present, trademarks are protected under the Amended Civil Code 2005 which came into effect as of January 1, 2006 and the new Law on Intellectual Property (« the IP Law ») which came into effect as of July 1, 2006.
Below are some new features of trademark protection under the IP Law:
1. Conditions for trademark protection
Conditions for trademark protection under the new legislation follow closely the former regulations and practices. Under the IP Law, a sign will be protected as a trademark if it is (i) a visible sign in the form of letters, words, designs, devices including three-dimentional devices or a combination of these elements which is manifested in one or more colours; and (ii) capable of distinguishing the trademark owner’s goods/services from those of others. Of note, this is the first time protection of three-dimentional mark is officially recorgnized by the vietnamese law.
Under the IP Law, a trademark is considered as distinguishable if it is composed of one or several recognisable and memorable elements or of several elements constituting a whole which is recognisable and memorable; and it is not one of the signs expressly excluded from protection by Article 74.2 of the IP Law.
2. Categories of Marks to be protected
Categories of marks to be protected under the IP Law include: (i) Trade/service Mark; (ii) Collective Mark; (iii) Certification Mark; (iv) Associated Mark and (v) Well-known Mark.
Of note, this is the first time Vietnam gives protection for Certification Mark. Under the IP Law, Certification Mark is a mark which its owner authorises other entities/individuals to use on their goods/services to certify the characteristics of goods/services as to geographic origin, materials, manufacturing mode, services providing method, quality or other characteristics. Entities having competence for control and certification of quality, nature, origin or other characteristics of goods/services have the right to apply for registration of Certification Marks provided that they do not manufacture/provide such goods/services.
Under the former regulations, a Well-known Mark is generally defined as a trademark which is continuously being used for prestigious products/services so that it is widely known. However there was no explicit guidelines for determination of well-known trademark. The IP Law provides the following creteria in determining whether a trademark is well-known:
There is no significant change regarding the protection of Collective Marks and Associated Marks.
3. Establishment of trademark rights
Trademark rights are only established on the basis of registration certificate granted by the State Competent Authority. First-to-file and priority principle are both applied for filing trademark application. Of note, the new IP Law gives grounds for trademark co-ownership i.e. two or more individuals or entities can jointly file a trademark application and become co-ownership of a registered mark provided that (i) the use of the trademark must be in the name of the co-ownership and (ii) such use does not constitute confusion as to the origin of goods/services.
As to the examination procedure, the time limit for examination as to form is reduced to one (1) month (previously 3 months) from the filing date or from the date on that all filing requirements are fulfiled if all filing requirements was not furnished at the filing. The time limit for examination as to substance is also reduced to six (6) months (previously 9 months) counting from the date of publication of the application. All applications will be published in the Official Gazette within two (2) months from the date on that the applications are accepted as filed in due form. This time limit does not include time for amending the applications filed by the applicant.
4. Use requirement
Like the former provisions, a trademark registration may be suspended if it is not used by the owner or transferred to others for use within five (5) consecutive years calculated backward on time from the date on that a request for suspension is filed by a third party without any justifiable reason for such non-use. However, under the IP Law, such trademark registration cannot be suspended if the trademark has been used or re-used before at least three (3) months from the filing date of such suspension request.