New regulations on procedure for registration of trademarks – Circular No. 01/2007/TT-BKHCN
February 9, 2009-
As previously reported by D&N International, on February 14, 2007 Ministry of Science and Technology issued Circular 1/2007 providing detailed guidelines on procedure for acquisition of industrial property rights (IPRs). The old Circular No. 3055 dated December 31, 1996 on procedure for establishment of IPRs has been abrogated accordingly. In relation to procedure for registration of trademarks, Circular 1/2007 contains the following new provisions:
1. Assessment of registrability criteria
It is now trite law that to qualify for registration a trademark must have a capacity to distinguish the goods/services to which it is applied. But previously to Circular 1/2007, there existed no legal provisions on how to assess trademark distinctiveness. The National Office of Intellectual Property (the NOIP) has had a discretionary power in respect to this issue for many years. Circular 1/2007 has finally adopted the current examination practices of the NOIP and provides for assessment of trademark distinctiveness. According to it, a trademark may acquire or loose distinctiveness through use in Vietnam. A latin word may be considered non-distinctive if its meaning becomes a generic description of products/services to which it is applied (article 39.3d). An inherently non-distinctive or feebly distinctive sign may be considered distinctive if it becomes widely well-known among customers through use (article 39.5). In case of the so-called «combined trademark» (i.e. a sign made up of words and a device), the distinctiveness should be assessed based on an examination of the sign as a whole. A trademark containing non-distinctive or feebly distinctive elements may still be considered distinctive if: (i) its strong element is distinctive; or (ii) the combination of its elements is original giving a special impression; or (iii) the «combined trademark» has acquired distinctiveness through use (article 39.6).
Circular 1/2007 also provides for assessment of likelyhood of confusion, which is also a condition for trademark registration. To assess the likelyhood of confusion, the subject trademark should be compared with its cited marks in structure, content, pronounciation (if word mark), meaning and mode of representation (word and device). A comparison of products/services to which they are applied must be carried out simultaneously.
A trademark is considered identical to a cited mark if they are identical in structure, content, meaning and mode of representation. A trademark is considered confusingly similar to a cited mark if (i) they are so similar in structure, content, pronounciation, meaning or/and mode of representation that the customers might think that they are the same, or that one is derived from the other, or that they share the same origin; (ii) the subject trademark is merely a translation or transliteration of a well-known cited mark (article 39.8).
Two products/services are considered identical if they are of the same/similar nature and have the same function and destination; Two products/services are considered similar if they (i) are of similar nature; or (ii) have similar functions, destination and are put on the market through the same distribution chanels. A product and a service are considered similar if they are connected by nature or function, or mode of implementation (article 39.9).
2. Types of marks
Circular 3055 did not provide for registration of tridimensional trademarks. Provisions on procedure for filing and examination of associated marks, collective and certification marks were also inadequate. Circular 1/2007 has contributed to improving regulations on registration of such marks.
a) Associated marks: When applying for registration of associated trademarks, the applicant should indicate which of those signs is the «principal» trademark, in case they are associated by «signs». If they are assocated by products/services, the applicant should indicated which of those products/services is «principal». Otherwise, they shall be considered independant, and not associated.
b) Collective marks: Article 105 of the IP Law provides for the content of the rule of use which must accompany the application for registration of a collective or certification mark. Under Circular 1/2007, it must additionally include the following: (a) summary information on the mark, its owner and products/services to which it is applied; (b) conditions for the grant of a license to use the mark and license termination; (c) obligations of the mark users; (d) rights of the mark holder; (e) mechanism of grant of license and control of the mark use aimed at guaranteeing the quality and reputation of products/services bearing the mark; (f) mechanism of settlement of disputes (article 37.6).
c) Certification marks: When applying for registration of a certification mark, the applicant should indicate in detail the content of certification, the mode of certification as well as procedure for grant of certification, the mode of controlling and maintaining the certification objective and content (article 37.4.c). Of note, Circular 1/2007 provides for registration and use of geographical certification marks. Accordingly, a geographical name may be registered as a certification mark if the applicant is authorised by the relevent local authority. In case the region or locality can not be determined based on administrative demarcations and local authority’s certificate, the applicant may supply a map indicating clearly the region or locality bearing the geographical indication of the products/services certified by the relevent authority (article 37.7).
d) Tridimensional marks: This type of marks has been accepted by the NOIP since long time even in absence of legal texts. Circular 1/2007 merely adopts the Office examination practice. It provides that specimens of a tridimensional mark should be accompanied by photos or drawings showing the 3D form in perspective and may be accompanied by a description of the 3D form (article 37.5.b).