A trademark is a recognizable sign used to distinguish the goods and services of one business entity from those of others.
General conditions for trademarks eligible for protection
A trademark 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 trademark owner from those of other traders and providing consumers with information of such goods and services.
Through abovementioned signs protected as trademarks, consumers are able to envision and associate with the goods and services quality, prestige, and superior characteristics.
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.
- When mentioning Mercedes, people will think of “Luxury”
- When mentioning BMW, people will think of a “Great driving experience”
- When mentioning Toyota, people will think of an “Economy, cost-efficient” car line
A brand exists only in the mind of the public, and is 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 the goods and services of the same kind.
To help consumers identify and distinguish distinctive goods and services from other similar ones through unique 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 trademarks
Based on specific vision and business objectives, each trader will choose an appropriate trademark for his/her goods and services.
A collective trademark is issued to an organization and/or association and its direct users are the members of the association and/or organization.
For example: The ‘Hoa Loc Mangos’ collective trademark of Hoa Loc Mangos Cooperative is granted a protection title.
Households and individuals who are members of the Hoa Loc Mangos Cooperative are entitled to use the trademark.
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 Regulations on use of the collective trademarks.
The regulations on the use of collective trademarks consists of the following contents:
- Name, address, grounds of establishment and operations of the collective organization being the owner of the trademark;
- Criteria for becoming a member of the collective organization;
- List of organizations and individuals permitted to use the trademark;
- Conditions for use of the trademark;
- Measures for handling acts violating the regulation on use of trademarks.
Clause 17 Article 4, Clause 4 Article 105 of the 2005 Law on Intellectual Property, amended in 2009
A certification trademark means a trademark 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 trademark.
For example: The ‘High-Quality Vietnamese Goods’ certification trademark, owned by the Vietnam Business Association, is issued only to eligible businesses.
Conditions on the use of a certification trademark depends on the standard requirements of its owner.
The regulations on the use of certification trademarks consists of the following principal contents:
- The organization or individual being the trademark owner;
- Conditions for using the trademark;
- Characteristics of goods or services certified by the trademark;
- Methods of evaluating characteristics of goods or services, and methods of controlling the use of the trademark;
- Expenses to be paid by the trademark user for the certification and protection of the trademark, if any.
Clause 18 Article 4, Clause 5 Article 105 of the 2005 Law on Intellectual Property, amended in 2009
An integrated trademark means identical or similar trademarks 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 trademarks for they are products of Coca-Cola.
By using integrated trademarks, trademark 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
A well-known trademark means a trademark widely known by consumers throughout the Vietnamese territory.
Criteria for the evaluation of well-known trademarks:
- 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 required for the trademark to be classified as a “well-known trademark”. 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.
Businesses with trademarks that are 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 dismissed the argument that Marvel’s X-Men is a well-known brand in Vietnam, as 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, trademark holders are advised to prove their presence and popularity in as many countries 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 trademark, 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 trademark.
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 trademark, determined through criteria such as quality, taste, or price, etc.
- Number of countries protecting the trademark;
For example: Perfumes and fragrances produced under the Valentino (Italy) trademark are distributed and protected in 130 countries and territories.
- Number of countries recognizing the trademark as a well-known trademark
- Assignment price, licensing price, or investment capital contribution value of the trademark.
For example: McDonald’s brand value is about USD 126 billion.
Regulations on well-known trademarks in Vietnam nevertheless remain unclear, resulting in certain difficulties in preventing trademark infringement.
At present, trademark holders wishing to do business in Vietnam usually prioritize trademark registration under the normal trademark regulations in order to ensure the probability of receiving protection.
Regardless of whether the trademark is well-known or not, distinctiveness is the most important element of any trademark.
Clause 20 Article 4, Article 75 of the 2005 Law on Intellectual Property, amended in 2009