Vietnam: Quick update on regulations and practice for recognition of well-known trademarks
It can be said that up to now, Vietnam’s trademark law and regulations have established general provisions on the mechanism for considering and recognizing well-known trademarks, but there still remains a lack of specific regulations and guidelines in implementing this mechanism. Besides, the actual implementation exercised by state management agencies is not in line with what is actually prescribed. These issues are discussed in detail as follows:
* Legal definition
Article 4.20 of the Intellectual Property Law before being amended in 2022 used to define a “well-known trademark” as “a trademark that is widely known by consumers throughout the territory of Vietnam.” It is this loose stipulation that led to the difficulty in determining and having a common perspective of the scope and degree of reputation that a trademark needs to achieve in order to become well-known, e.g. whether it is always necessary for a trademark to be widely known by general consumers while in fact it has reputation only in a particular line of goods or service? To rectify the situation, the above provision has now been revised as: “A well-known trademark is a mark widely known by the relevant public in the territory of Vietnam.”
According to the aforementioned regulation, it can be understood that “a trademark widely known by the relevant public” is to be considered as a “well-known trademark” and vice versa, when a trademark is said to be well-known, it must be understood that the mark has already been widely known to the relevant public. The IP Law also has a particular article (Article 75) to provide a list of the criteria for the consideration and evaluation of this type of marks. However, the IP Law also provides several cases where a trademark has been “widely used and recognized” but not necessarily recognized as “well-known “, e.g. articles 74.2 (a), (b), (d) and especially (g). Of course, the purposes of these articles are different from that of the article purely dedicated to the evaluation for recognition of “well-known trademarks”, but such expressions which employ almost duplicate wordings would easily cause misunderstanding and confusion in the application of law. Consequently, the examination practice has long witnessed many cases in which a trademark though accepted by the VNIPO as “widely used (and recognized)” is still not considered well-known! This clearly goes against the definition of a well-known mark in Article 4.20 of the IP Law as stated above.
* Recognition mechanism
Circular 01/2007/TT-BKHCN (as amended and supplemented – hereinafter referred to as “Circular 01”) dedicates the whole Article 42 to the “Recognition of well-known marks” in which it provides a list of necessary documents to demonstrate the popularity of the mark in accordance with the criteria set out in Article 75 of the IP Law. In particular, it is clearly stated at Article 42.4 of the Circular 01 that “in the cases where a mark is recognized as well-known and such recognition leads to a decision on handling infringements of that well-known mark … or a decision on refusal of protection of another mark …, that well-known mark shall be recorded in the Directory of well-known marks kept at the VNIPO for purpose of reference in the establishment and protection of intellectual property rights.”
Regrettably, after almost 18 years since the IP Law became effective, there have yet been any well-known trademarks recorded in this Directory. In fact, the competent authorities including the VNIPO may find themselves reluctant to give acknowledgement of the well-knownness of a mark. The long absence of an official trademark examination guideline from the VNIPO might have also been one of the reasons why the consideration and recognition of well-known trademarks has become extremely challenging.
Even though the IP Law which was amended and supplemented in June 2022 has entered into force from the beginning of 2023, till date the Government has not been able to issue new legal instruments for clarifying and guiding the implementation of the amended IP Law. We will keep you promptly updated on this issue once new regulations and/or practices are available.