PLF Tutorials

LEGAL TUTORIALS FOR DOING BUSINESS IN VIETNAM

What is a trademark in Vietnam?


A trademark is a recognizable sign used to distinguish the goods and services of one business entity from those of others.

General conditions for marks eligible for protection

A mark will be protected when it satisfies the following conditions:

  • Being a visible sign in the form of letters, words, drawings, or images, including holograms, or a combination thereof, represented in one or more colors.
  • Being affixed on products, goods, services, or packaging.
  • Being capable of distinguishing goods or services of the mark owner from those of other traders and providing consumers with information of such goods and services.

Through abovementioned signs protected as marks, consumers are able to envision and associate with the quality, prestige, and superior characteristics of the goods and services.

Article 72 of the 2005 Law on Intellectual Property, amended in 2009
 

Difference between brands, trademarks, and logos

A brand is how the public perceives a target object emotionally.

For example:

  • When mentioning Mercedes, people will think of “Luxury”
  • When mentioning BMW, people will think of the “Great driving sensation”
  • When mentioning Toyota, people will think of an “Economy, cost-efficient” car line

A brand exists only in the mind of the public and not recognized by Vietnamese law.

A trademark is a sign recognized and protected by Vietnamese law, distinguishing goods and services of different entities.

A logo is the symbol of a business. It can be in the form of a drawing, pattern, font, or some special signs.

Logos can be registered as trademarks or copyrights.

 

Functions of trademarks

To distinguish goods and services of the same kind.

To help consumers identify and distinguish distinctive goods and services from the similar ones through unique signs and signs in the form of words or images.

To provide information about the origin of the goods and services.

Behind a trademark is the quality and characteristics of the product.
 

Different types of marks

Based on specific vision and business objectives, each trader will choose for his or her goods and services an appropriate mark.

Collective marks

A collective mark is issued to an organization and/or association and its direct users are the members of such association and/or organization.

For example: The ‘Hoa Loc Mangos’ collective mark of Hoa Loc Mangos Cooperative is granted a protection title.

What is a trademark in Vietnam?

Households and individuals who are members of the Hoa Loc Mangos Cooperative are entitled to use the mark.

The organization and/or association must ensure that their members comply with quality conditions and standards set forth.

Members of the organization and/or association may only use the collective mark to affix on products, goods, packaging, or transaction documents, provided that they comply with the requirements in the Regulation on use of collective marks.

The regulation on use of collective marks consists of the following principal contents:

  • Name, address, grounds of establishment and operations of the collective organization being the owner of the mark;
  • Criteria for becoming a member of the collective organization;
  • List of organizations and individuals permitted to use the mark;
  • Conditions for use of the mark;
  • Measures for handling acts violating the regulation on use of marks.

Clause 17 Article 4, Clause 4 Article 105 of the 2005 Law on Intellectual Property, amended in 2009

Certification marks

A certification mark means a mark authorized by its owner to be used by another organization or individual on the latter’s goods and/or services, for the purpose of certifying the origin, raw materials, materials, etc. of the goods and/or services bearing the mark.

For example: The ‘High-Quality Vietnamese Goods’ certification mark, owned by the Vietnam Business Association, is issued only to eligible businesses.

What is a trademark in Vietnam? 

Conditions on use of a certification mark depend on the standard requirements of its owner.

The regulation on the use of certification marks consists of the following principal contents:

  • The organization or individual being the mark owner;
  • Conditions for using the mark;
  • Characteristics of goods or services certified by the mark;
  • Methods of evaluating characteristics of goods or services and methods of controlling the use of the mark;

  • Expenses to be paid by the mark user for the certification and protection of the mark, if any.

Clause 18 Article 4, Clause 5 Article 105 of the 2005 Law on Intellectual Property, amended in 2009

Integrated marks

An integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated.

For example: Fanta, Sprite, and Dasani are all affixed with integrated marks for they are products of Coca-Cola.
What is a trademark in Vietnam?

By using integrated marks, mark holders will be able to prevent other entities from producing potential counterfeit goods.

Clause 19 Article 4 of the 2005 Law on Intellectual Property, amended in 2009

Well-known marks

A well-known mark means a mark widely known by consumers throughout the Vietnamese territory.

Criteria for evaluation of well-known marks:

  • 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;
In fact, the law does not prescribe the exact quantity of consumers. Typically, the Court will conduct a survey with a number of people to determine the proportion of those who are aware of the goods or services.
For example: When Nestlé fought to have the four-finger shape of their KitKat chocolate bars registered for trademark protection as a well-known mark, a survey was conducted with 1,030 respondents, 80% of whom recognized the KitKat product.
Marks that have yet to operate in Vietnam will face difficulties for failing to meet this criterion.
For example: In the lawsuit involving the brand ‘X-Men’, the Ha Noi City Court has dismissed the argument that Marvel's X-Men is a well-known brand in Vietnam since its popularity couldn’t be proven among Vietnamese consumers.
  • Territorial areas in which goods or services bearing the mark are circulated
There are no regulations on a specific number of countries. However, mark holders are advised to prove as many as possible to strengthen the grounds of the applications.
For example: Coca-Cola is available in over 200 countries and territories.
  • Turnover of the sale of goods or provision of services bearing the mark, or the quantity of goods sold or services provided.
For example: In the Fourth Quarter of 2016, Apple sold approximately 60 million units, including iPhone, iPad, and Mac products. Therefore, Apple can completely satisfy this criterion.
  • Duration of continuous use of the mark.
For example: Founded in 1924 and stylized as Adidas since 1949, the brand still exists and is widely used around the world.
  • Wide reputation of goods or services bearing the mark, determined through criteria such as quality, taste, or price, etc.
  • Number of countries protecting the mark;
For example: Perfumes and fragrances produced under the Valentino (Italy) trademark are distributed and protected in 130 countries and territories.
What is a trademark in Vietnam?
  • Number of countries recognizing the mark as a well-known mark
  • Assignment price, licensing price, or investment capital contribution value of the mark.
For example: McDonald's brand value is about $ 97 billion.

What is a trademark in Vietnam?

Regulations on well-known marks in Vietnam nevertheless remain unclear, resulting in certain difficulties in the process of proving.

At present, mark holders wishing to do business in Vietnam usually give priority to trademark registration under the normal trademark regulations in order to ensure the probability of receiving protection.

However, regardless of being well-known or not, distinctiveness is the most important element of any mark.

Clause 20 Article 4, Article 75 of the 2005 Law on Intellectual Property, amended in 2009

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