14 Aug TRADEMARK PROTECTION IN VIETNAM – FREQUENTLY ASKED QUESTIONS
Trademark protection is one of the first steps to take on your way to establish a business brand, in Vietnam or anywhere. However, before trademark analysis, it is necessary to understand the rules of human – customer thinking.
1. WHAT IS A BRAND? WHAT IS A TRADEMARK?
A brand is a concept of the products with the manufacturer’s signs attached to their surface and packaging to confirm their quality and origin in the eyes of the consumers. Brand is often associated with the ownership of the manufacturers and is usually delegated to the official trade representative.
- According to the definition of the American Marketing Association. “A brand is a name, term, design, symbol, or any other feature that identifies one seller’s good or service as distinct from those of other sellers.” In fact, there are also other symbols make up a brand.
- “A brand – as being defined by the World Intellectual Property Organization (WIPO), is a special (visible and invisible) sign that identifies a product or service that is produced or provided by an individual or organization.”
At present, there is no definition of brand in Vietnam; therefore, only trademark is subject to intellectual property rights protection in Vietnam. More specifically, in Vietnam, only trade names (legal entity names in Vietnamese, English and abbreviations) are protected. In the meantime, according to the UK-American law system, brands can be protected and the registered trademark owners reserve the right to sue anyone for infringing on their trademarks. Note: How to distinguish a brand from a trademark protection. A manufacturer is usually characterized by a brand, but he may have many different brands. For example, Toyota is a brand, but it comes with many trademarks like Innova, Camry, etc.
The term “brand” is sometimes used to refer to any distinct feature of a confirmed product, particularly those of a well-known product, e.g., Gucci fashion, Elton John’s sunglasses and so on. It should be noted that the brand protection right only really exists when such brand has been used and registered for a certain series of products or services. Brand ownership may be discarded or ceased to be protected if it is not continued to be used. Thus, the brand owners must use their brands if they wish to maintain this right.
A trademark is essentially a symbol, a language in the thinking process, playing an important role in trade as a powerful tool for occupying the mind and then cognition and behaviors of customers.
Trademarks may be traded or leased. Trademarks can be protected domestically or internationally.
- Article 785 of the Civil Code says, “Trademarks are signs used to distinguish goods and services of the same type of different manufacturers and providers. Trademarks may be words, images or their combinations, expressed in one or more colors”.
- In Vietnam – US Trade Agreement defines, “A trademark is the marks of an enterprise (or group of enterprises) that distinguish its goods from those of the same type of other enterprises”.
- According to Philip Kotler, the world’s leading marketing expert, “A trademark is a name, a term, a sign, a symbol, a picture or their combinations, used to confirm the goods or services of a seller or a group of sellers and distinguish them from the goods and services of competitors”.
In ancient times manufacturers used trademarks to differentiate their goods. The term “brand” comes from the ancient Icelandic language, meaning “to burn”. The pride of self-produced goods is not the main reason to use trademarks. In fact, manufacturers hope that customers can recognize them to further buy their products or recommend to others. Initially, marks were stamped on livestock, and later on, ceramic, animal skin and silk producers also used this method to distinguish their goods from others’.
A sign eligible to be registered should meet the standards set out by national trademark protection agencies and international ones. There are two main criteria to consider:
- The trademark must be unique and/or allow a business to distinguish its products/services from other businesses.
- The trademark does not describe products/services that may mislead or violate social order and social morality.
2. THE DISTINCTION BETWEEN A BRAND AND A TRADEMARK
- Technically, a brand can be understood as a form of trade names to be protected by default in Vietnam. However, brands and trade names are not always the same. For example, Vingroup Joint Stock Company owns the Vingroup brand.
- A strong brand will create the strengths and advantages of the trademarks belonging to it. In some cases, a brand may be a trademark (e.g. Harley-Davidson); a brand may have multiple trademarks.
- Brands are valuable and quantifiable in money. Each year, Interbrand valuates brands and publishes a list of the 100 most valuable brands in the world. The latest rating announced in July 2006 includes multi-billion dollar brands such as Coca Cola: 67 billion, Sam Sung: over 16 billion and HSBC: 11.6 billion, etc. The World’s 100 most valuable brands come from many different countries and from a variety of industries, arranging from consumer goods to fashion, computing, finance and banking, and so on. It is important to emphasize that the total value of these top 100 brands is worth nearly $1 trillion, roughly equivalent to the total income of the world’s 63 poorest countries (where nearly half of the world’s population live).
- A strong brand gives its owner the opportunity to earn a higher price of the product from his customer than that of the same one. Just removing Raph Lauren label from a shirt, who among us would be willing to pay VND 300,000 (being VND 200,000 less than the actual price with label) for it? It would not be too hard to get an answer.
- A strong brand helps to cut down costs. How much will Gia Dinh bank and ACB invest to get a customer who knows about them or buys their services or is loyal to them? We certainly do not have the exact answer, but the investment will definitely not be the same (in terms of value) and which brand will have to invest less money? It can certainly be inferred.
- A strong brand strengthens corporate sustainability. The world is changing. Any brand has to face the challenges of this change. Consumer demands may change; science and technology have kept advanced incessantly; there are more and more competitors in the market; troubles always wait for chances to attack businesses; for example, Super Dream steering neck is broken; Bank General Director ran away; Fresh milk is made from milk powder; soy sauce can cause cancer, etc. Against this change, tangible comparative advantages like lower cost, high technology, huge capital and quality products and so on will be very important but difficult to maintain the position of the business. A strong brand helps get loyal customers who never leave it just for minor changes and are not easy to leave immediately but are always tolerant and await changes of the brand to which they are loyal. The saying “Whatever people say, we keep using our old brand” is also true to this situation.
- In a market-oriented economy with fiercely competitive pressure, it is vital to a business to build a brand and position in the market for its goods and services.
- Whether in Vietnam or anywhere in the world, trademark protection is always the first step on the road to building a business brand. There is nothing worse than when a company’s long-lasting brand is infringed, but the company has no legal evidence to prove it or even countersued or deprived of the right to use it by another party at any time.
- A trademark is a collection of symbols relating to each specific type of goods and services and belonging to the same brand.
- Trademark is heavily influenced by the brand, but in some situations, it is also likely to destroy the brand. For example, the explosion of Galaxy Note 7 trademark products has driven Samsung brand into an extreme lamentable position.
- Basically, there are four types of protected trademarks in Vietnam, including certification trademarks, collective trademarks, associated trademarks, and well-known trademarks.
- A good trademark is an important asset to any business. This is a useful tool to help customers and consumers identify your products and services. The creation of trademark means the creation of a name, image and brand for a business in the market.
- Trademark registration is essential to minimize the risk arising from unfair competition activities from other suppliers of goods and services seeking to benefit from your reputation and position in the market. Let us say the Harley-Davidson, they even registered for the specific exhaust sound of their vehicle products!
- Additionally, with a registered and protected trademark, a business may transfer its trademark when there is no need for business operation.
3. WHO HAS THE RIGHT TO REGISTER TRADEMARK PROTECTION?
- Organizations or individuals conducting production, trading and supply of goods and services themselves. For example limited liability companies, joint-stock companies, joint ventures, private enterprises, individual business households;
- A legally established collective organization has right to register trademark for use by members of such organization in accordance with the rules governing the use of collective trademarks. Example: Cooperative, Farmer’s Association, Association, or a Group of two or more businesses;
- An organization having the function of controlling quality, characteristics and origin of goods has the right to register trademark protectionprovided that such organization does not conduct production and trading of such goods or services. For example the International Organization for Standardization (ISO), Vietnam Certification Centre (QUACERT), Vietnam Tea Association;
- Foreign individuals and organizations shall file Application for Trademark Registration through the authorization entered into with Industrial Property Attorneys in Vietnam.
- In addition, after obtaining Protection Certificate in Vietnam, as trademark protection is not automatically applied abroad, the business may continue to request protection registration in foreign markets where business activities will be conducted under the potential risks of competition, abuse and misappropriation. The registration may be made through the National Office of Intellectual Property of Vietnam for countries such as: Armenia – Egypt – Albania – Algeria – Azerbaijan – Austria – Portugal – Poland – Belarus – Belarus – Belgium – Bosnia – Herzegovina – Bulgaria – Bhutan – Democratic People’s Republic of Korea – Czech – Croatia – Cuba -German – Netherlands – Hungary – Iran – Italy – Kazakhstan – Kenya – Kyrgyzstan – Latvia – Lesotho – Liberia – Liechtenstein – Luxembourg – Moldova – Mongolia – Mozambique – Macedonia – Morocco – Monaco – Russia – France – Romania – San Marino – Serbia & Montenegro – Sierra Leone – Cyprus – Slovakia – Slovenia – Sudan – Swaziland – Spain – Tajikistan – Switzerland – China – Ukraine – Uzbekistan – Vietnam..
4. CASES OF TRADEMARK REGISTRATION BEING REJECTED?
In some cases, some following signs will not be protected as trademarks. Typical examples can be found in Article 73 of the Intellectual Property Law of Vietnam:
- Signs that are identical or confusingly similar to national flags or national emblems.
- Signs, flags, bearings, initials and full names of state agencies, political organizations and socio-political organizations of Vietnam, unless otherwise permitted.
- Signs that are identical or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes, or celebrities in Vietnam or abroad.
- Symbols that are confusingly similar to trademark of another successfully registered enterprise in Vietnam. This is one of the most common causes of failure to register a trademark protection.
- Trademark registration may also be rejected in case of failure to comply with the law and social ethics, often arising due to cultural, regional or national differences.
5. WHY SHOULD TRADEMARK BE SEARCHED BEFORE APPLYING FOR TRADEMARK REGISTRATION?
- Trademark Search means essentially searching and researching on Vietnam Trademark Database to identify whether or not the Trademark intended to be registered is identical or confusingly similar to any trademarks of other parties registered for goods or services of the same kind.
- Searching results will provide legal information on the relevant existing trademarks, thereby contributing to the increased likelihood of successful registration of the trademark protection and avoiding rejection after a long time of application (12-18 months).
6. ARE DOCUMENTS AND PROCEDURES RELATED TO TRADEMARK REGISTRATION?
- Preparing documents related to legal entity, owner of the trademark.
- Preparing documents related to the trademark protection.
- Filing valid application documents.
- Receiving and responding feedbacks and requests from the National Office of Intellectual Property.
- Carrying out procedures for receiving a protection certificate.
- Carrying out procedures for renewal or adjustment in necessary cases.
The preparation of documents and the follow-up until obtaining the formal trademark protection certificate require qualified skills to minimize cost for travel, response and especially ensure the chance for trademark protection, considering that each application step may last from 3 to 18 months.
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