Protecting well-known trademark in Vietnam

Vietnamese jurisdiction does not require a well-known trademark to be registered under regular trademark registration procedure. The right over a well-known trademark in Vietnam automatically established through the use thereof in commerce without any registration.

► International protection of well-known trademark

Well-known trademarks are protected through implementation of the Paris Convention for the Protection of Industrial Property (1883) as amended (Paris Convention), and Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). Since Vietnam is a member of Paris Convention and WTO, well-known trademark in Vietnam will enjoy advance and strong protection.

► Vietnam protection of well-known trademark

A well-known trademark in Vietnam is defined as a mark widely known by consumers throughout the Vietnamese territory (Article 4& 6 Intellectual Property Law of Vietnam). A mark, from a third party, shall be refused for protection if it is identical with or confusingly similar to another person’s mark recognized as a well-known mark for goods or services which are identical with or similar to those bearing such well-known mark. Under other circumstances, a mark also may be refused if the use of such mark may affect the distinctiveness of the well-known trademark in Vietnam or aimed at taking advantage of the reputation of the well-known mark.

However, currently there is still no official list for well-known trademarks in Vietnam. In practice, it has been considered case by case, such as by a decision/notification of the National Office of Intellectual Property under cases of cancellation/opposition procedure.

► Criteria for recognition of well-known trademark in Vietnam

According to Article 75 of Vietnam IP Law, in order to be defined as “well-known”, a trademark should be satisfied the following requirements:

(i) The number of involved consumers who have been aware of the mark through purchase or use of goods or services bearing the mark or through advertising;

(ii) Territorial area in which goods or services bearing the mark are circulated;

(iii) Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;

(iv) Duration of continuous use of the mark;

(v) Wide reputation of goods or services bearing the mark;

(vi) Number of countries protecting the mark;

(vii) Number of countries recognizing the mark as a well-known mark;

(viii) Assignment price, licensing price, or investment capital contribution value of the mark.

However, it is reported that very few well-known trademarks in Vietnam has been recognized. Trademark owners, especially foreigners, face difficulties to prove that their trademark is well-known in order to obtain benefits from wider protection.

► Differences between “well-known” and “widely used and recognized trademark” term in Vietnam.

According to current legislation, a well-known trademark in Vietnam is considered as having a wider protection than “widely used and recognized” trademark which means that infringement may be easier to establish. Also, a well-known trademark are protected against even non-competing, unrelated uses, on the basis that such use will dilute the distinctiveness of the well-known trademark or aim at taking advantage of the reputation of the well-known trademark.

Unlike a “well-known trademark” in Vietnam can be protected for unlimited classes, a “widely used and recognized trademark” is often protected only for goods and services related to those with which it is already associated.

The definition of a well-known trademark in Vietnam can vary depending upon the relevant jurisdiction. Numerous and different criteria can be taken into account when granting this increased level of protection to a trademark. Therefore, when confronted with this level of uncertainty, even though well-known trademarks are protected even when they are not registered, it is always advisable to register them in order to ensure the highest protection.

In case you require more information or require advice on Trademark in Vietnam, Laos, Cambodia and Myanmar as well as other IP matters, please do not hesitate to contact us via email: info@apta.vn