The current situation in Vietnam regarding trademark infringement is alarming. Enterprises are encouraged to equip themselves with appropriate knowledge to protect their prestige and interests.
What constitutes trademark infringement?
Trademark infringement is the use of signs on goods and/or services that are identical or confusingly similar to those of registered marks. Specifically:
- Using signs identical to protected trademarks or using class(es) of goods or services identical to goods or services already registered under such trademarks.
For example: A footwear manufacturing company produces shoes identical to those of the ‘NIKE’ trademark.
- Using signs identical to protected trademarks for goods or services similar, or related to those goods or services already registered under such trademarks, if such use is likely to cause confusion as to the origin of the goods or services.
For example: Many mobile phone retail and maintenance shops in Vietnam put Apple’s logo on their signs.
- Using signs similar to protected trademarks for goods or services identical with, similar to or related to goods or services registered together with such trademarks, if such use is likely to cause confusion as to the origin of the goods or services.
For example: VINACERA registers their products under Class 19 (with the sub-class of wall tiles, not of metal) to cause confusion with VIGLACERA’s tiles.
- Using signs identical to, or similar to, well-known trademarks, or signs in the form of translations or transcriptions of well-known trademarks for any goods or services, if such use is likely to cause confusion as to the origin of the goods or services.
For example: Putting ‘SAMSUNG’ or ‘LG’ trademarks on garment products is considered trademark infringement.
Clause 1 Article 129 of the 2005 Law on Intellectual Property, amended in 2009
Infringing elements of trademarks
To evaluate trademark infringement factors, it is required to compare:
- Use of the infringing signs with the protected trademarks.
- Products or services bearing such infringing signs, letters, words, drawings or images within the scope of trademark protection.
Determining which trademarks and groups of goods and services are protected is conducted based on the Certificate of trademark registration.
In regards of well-known trademarks, a protected trademark is identified based on the duration of continuous use, number of countries protecting it, and its reputation in Vietnam, etc.
Signs are considered identical or confusingly similar to a protected mark of the goods or services of the same class if they have identical or confusingly similar features in terms of overall composition, visual impression, way of pronunciation and/or phonetic transcription.
For example: The marks ‘TEAM’ and ‘TIM’ if registered together for the same class of goods and services within the scope of protection in Vietnam might cause confusion due to their somewhat similar pronunciation (for Vietnamese people).
Not all acts of using trademarks without the consent of its owner are acts of infringement. Such cases are:
- Using identical or similar signs for dissimilar or unrelated groups of products or services.
- For example: The ‘SAO MAI’ trademark of Sao Mai Beverages Co., Ltd. for beverage products and the ‘SAO MAI’ trademark of Sao Mai Industry Development Co., Ltd. for industrial repair and civil services.
- The infringing trademark’s owner can prove his/her rightful registration and lack of knowledge regarding the existence of the mark of the infringed party.
- The opposing mark is not a well-known mark in Vietnam.
For example: If Marvel Film Corporation was to oppose the trademark registration of ‘X-Men’ shampoo products in Vietnam, they would have to prove that X-Men (the film) is a well-known trademark in Vietnam.
- Trademarks that are no longer in use in Vietnam for a period of 5 years from the date of issuance of the certificate, or the protection duration of which has expired without being extended.
Article 5 and 11 of Decree 105/2006/ND-CP
Protective measures against trademark infringement
Depending on the nature and severity of the breach, trademark holders may take appropriate protective measures.
Trademark owners are entitled to apply technical and/or technological measures to prevent acts of trademark infringement.
For example: Apple provides a website that allows iPhone users to check the Service and Support Coverage of their devices using serial numbers, which can be used to verify whether an iPhone is genuine or not.
Trademark owners should sufficiently collect evidence, documents, and intellectual property assessments before sending a written request to opponents asking them to terminate their infringing acts or before taking any administrative measures.
An intellectual property assessment done by the Vietnam Intellectual Property Research Institute (VIPRI) covers the following contents: legal status, protectability, similarity, infringing elements, and value of damage. The VIPRI does not reach the conclusion of trademark infringement.
Instead, the results of intellectual property assessments are used by state agencies as the legal basis for decisions made on trademark infringement.
Trademark owners can also independently send written requests to those that commit acts of infringement to terminate their acts.
Trademark holders have the right to request competent state agencies (Inspectorate of the Ministry of Science and Technology, Economic Police, or Market management offices, etc.) to apply administrative remedies provided by the law, such as: monetary fines, forced removal of infringing elements, confiscation of infringing goods, means and production tools, etc.
Trademark holders are entitled to request the Court to apply the following civil remedies in handling parties that have committed acts of trademark infringement:
- Compelling the termination of infringing acts
- Compelling the public apology and rectification
- Compelling the performance of civil obligations
- Compelling the payment of damages
- Compelling destruction, distribution or use for non-commercial purposes of goods, raw materials, materials and means used for the production or trading of trademark-infringing goods, provided that such destruction, distribution, or use does not affect the rights of trademark holders.
Trademark holders have the right to file a request to procedural agencies to handle acts of trademark infringement on a large scale and/or involving elements which constitute a crime.
In addition, trademark owners may request the suspension of import formalities at the customs office to execute the collection of information and evidence for the purpose of sanctioning the infringement.
Article 198, 199, 200, and 202 of the 2005 Law on Intellectual Property, amended in 2009