On 26 August, our Chinese client reached out to our firm informing us that their trademark had been refused by the Intellectual Property Office of Vietnam (IP Vietnam). It was really a shock for them who had exerted a great deal of money, energy and time on their brand name/trademark. How such a situation can be overcome is a question frequently asked by most of our clients.
You know, a trademark is a subject matter of intellectual property and a subdivision of intangible property. It is one of products created by human intelligence through creative activities in the fields of social life. As an asset, a trademark can be commercialized this or that way, such as capital contribution, trademark licensing or franchising agreement. To this end, registration of a trademark under a statutory procedure is a need-to-pursue thing, which is to establish legal rights over the trademark and can thereby offer a considerable level of legal protection against infringement attempts.
If your trademark is smoothly allowed and a trademark registration certificate is granted in Vietnam, your trademark will become “registered”, which affords you statutory trademark rights. Yet what if your trademark is refused by IP Vietnam? So you may be reduced to a dilemma.
- First, you may stop prosecuting your application and let it abandoned by not filing a response against opinions raised by IP Vietnam, in order to save time, costs and energy which are entailed in subsequent actions. You may then make other investments to create a new trademark with a view that it can be registered in Vietnam, in place of the former one.
- Second, you may persistently prosecute your application by filing a response against IP Vietnam’s opinions and taking any further action permitted by law to defend your rights. Thinking to yourselves “I want to overcome the refusal”, you need to seek ways to solve the dilemma.
In an office action raised by IP Vietnam, a pending trademark (the “Refused Trademark”) is mostly refused due to a likelihood of confusion with a prior registered trademark (the “Prior Trademark”) under Article 74.2.e of the Intellectual Property Law of Vietnam. This Article reads as follows:
“2. A trademark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: […] e) A sign which is identical with or confusingly similar to a registered trademark of another organization, individual in respect of identical or similar goods or services on the basic of a registration application having earlier filing date or earlier priority date, as applicable including applications filed under international treaties to which the Socialist Republic of Vietnam is party, except for cases where such mark registration is terminated under the provisions of Article 95.1d(¹) or invalidated under the provisions of Article 96(²) according to the procedures specified at Article 117.3b of the Law.”.
In an attempt to overcome the refusal, you can take the following options:
1. Reasoning on differences between the Refused Trademark and the Prior Trademark;
2. Seeking a Letter of Consent from the owner of the Prior Trademark;
3. Initiating an invalidation of the Prior Trademark based on its non-use in Vietnam for five (5) consecutive years;
4. Negotiation for assignment of the Prior Trademark.
In the first option, reasoning should focus on appearance, pronunciation, connotation and origin of the Refused Trademark as compared to the Prior Trademark. Furthermore, a comparison on the lists of goods/services of the two trademarks should also be made. A difference or dissimilarity in the lists of goods/services may save the Refused Trademark in some way.
If the said reasoning is not accepted by IP Vietnam, its decision on refusal will be issued. Under Vietnam legislation, the Refused Trademark owner may file an appeal against such a refusal decision. By means of an appeal, the Refused Trademark owner is required to prove that the decision does not comply with applicable laws.
If the appeal fails, IP Vietnam will issue a decision on settlement of the appeal which continue its refusal against the Refused Trademark. If you still wish to pursue the case, you can file an appeal to the Ministry of Science and Technology (MoST), a superior agency of IP Vietnam, or initiate a lawsuit at a competent court of Vietnam.
In the second option, you may consider obtaining a Letter of Consent (LoC) from the owner of the Prior Trademark, where the owner states that they do not oppose the registration and use of the Refused Trademark in Vietnam. By way of such an LoC obtained, you may stand a chance to seek protection for the Refused Trademark in Vietnam. However, as a side remark, an LoC may be acceptable on a case-by-case basis, subject to IP Vietnam’s decision. The reason lies in the concern about confusion to consumers due to the co-existence of the two similar trademarks, even though there may exist no conflict between the relevant two owners.
In the third option, you can initiate an invalidation of the Prior Trademark based on its non-use in Vietnam for five (5) consecutive years. Under Vietnam legislation, if a registered trademark has not been put into use in Vietnam for five (5) consecutive years or more, it may be vulnerable to a non-use-based invalidation initiated by a third party. The steps for initiating a 5-year non-use-based invalidation against a registered trademark in Vietnam can be outlined as follows:
Step 1: Conducting an investigation on non-use of the Prior Trademark in Vietnam
To initiate a non-use-based invalidation against a registered trademark, it is required to tender evidence for non-use of the trademark. To prove the non-use of the trademark, you may file a request for investigation on use or non-use of the Prior Trademark in Vietnam to a competent organ for obtaining its official confirmation on the use or non-use status. In most cases, IP Vietnam accepts such a confirmation as a basis to request the registered trademark owner to prove the use of their trademark in Vietnam to overcome the invalidation, even though the confirmation on non-use of a registered trademark issued by the competent organ is not considered as a full information source of the non-use.
If it is found by means of the investigation that the Prior Trademark has not been used during consecutive five (5) years, you can then file to IP Vietnam a request for invalidation of the Prior Trademark based on the competent organ’s report on investigation results of the non-use of the Prior Trademark.
Step 2: Filing a request for invalidation of the Prior Trademark
A request for invalidation of the Prior Trademark should be filed to IP Vietnam along with MPM’s report on investigation results of the non-use of the Prior Trademark, which acts as a supporting document for your invalidation request. IP Vietnam will then notify the Prior Trademark owner of the invalidation and request the owner to provide any use evidence against your invalidation request. Once any opinions and evidence on use of the Prior Trademark, if any, are submitted by the Prior Trademark owner, the invalidation requester shall have a chance to file arguments against such opinions. Upon sufficient reasoning and evidence submitted, IP Vietnam will review the same and issue its conclusion on the case.
In the fourth option, you may consider negotiating for assignment of the Prior Trademark. If the assignment is successfully concluded, you may overcome the refusal and be accordingly granted a trademark registration certificate in Vietnam. Noteworthily, the third and fourth options may be simultaneously taken to somewhat make the fourth option more effective. Specifically, a request for invalidation of the Prior Trademark, once submitted to IP Vietnam, may put certain pressure on the Prior Trademark owner. Therefore, the possibility of success in your negotiation for assignment of the Prior Trademark from its owner turns higher.
In a nutshell, while trademark registration is obviously critical to fostering innovation and preventing a third party from unauthorized use of the trademark, to obtain such a registration may be a challenging journey which requires your sufficient wisdom, persistence and patience. In the journey, you have options available to protect your trademark and defend your rights. Above all, you should lucidly take the right option and flexibly combine the options to increase the chance of success in overcoming an office action raised by IP Vietnam.
(1)“Article 95. Termination of validity of protection titles
1. The validity of a protection title shall be wholly or partially terminated in the following cases:
…
d) The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
…”
(2) “Article 96. Invalidation of protection titles
1. A protection title shall be entirely invalidated in the following cases:
a) The application is filed for malicious intent;
b) The application is filed against regulations on security control regarding inventions prescribed in Article 89a of this Law;
c) The invention is directly created from a genetic resource or traditional knowledge about a genetic resource but the registration application does not disclose or accurately disclose the origin of the genetic resource or traditional knowledge about the genetic resource.
…”
What are the signs ineligible for protection as marks?
The following signs shall be ineligible for protection as marks:
- Signs identical with or confusingly similar to national flags or national emblems.
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
How can we define the distinctiveness of marks?
The ability of a mark to “identify and distinguish” a good or service is known as “distinctiveness. Dating back to 1976, Judge Henry Jacob Friendly established five basic categories of marks along a spectrum of distinctiveness, ranging from “fanciful” marks that are inherently distinctive on one end and on the other end “generic” marks that are never distinctive and thus not eligible for trademark registration. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. An element of a sign is not distinctive if it is exclusively descriptive of the goods and services themselves or of the characteristics of those goods and services (such as their quality, value, purpose, provenance, etc.) and/or if its use in trade is common for those goods and services. Similarly, an element of a sign that is generic (such as a common shape of a container or a common colour) will also lack distinctiveness. An element of a sign may be distinctive to a low degree(weak)if it refers to (but it is not exclusively descriptive of) characteristics of the goods and services. If the allusion to the goods and services is sufficiently imaginative or clever, the mere fact that there is an allusion to characteristics of the goods might not materially affect distinctiveness. An element of a sign that is neither non-distinctive nor weakly distinctive possesses a ‘normal’ degree of inherent distinctiveness. This means that the element of a sign in question is fully distinctive, in the sense that its capacity to identify the goods and services covered by the mark as coming from a particular undertaking is not in any way diminished or impaired.
Distinctiveness of a Mark
A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases mentioned below.
Indistinctiveness of a Mark
A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
(a) Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
(b) Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
(c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
(d) Signs describing the legal status and business sector of business entities;
(dd) Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
(e) Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
(g) Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
(h) Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
(i) Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
(k) Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
(l) Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
(m) Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
(n) Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark..
Below are the five categories of distinctiveness ranging from lowest to highest.
- Generic: A generic mark uses a common word for a product or service. Generic marks cannot identify the source of a good or service and are therefore completely ineligible for trademark protection.
- Generic terms can be used effectively in distinguishing company’s products from each other (e.g. Google Maps, Google Calendar, Google Analytics, etc.). Example: Blogger for blogging platform.
- Descriptive: A descriptive mark is an ingredient, quality, characteristic, function, feature, purpose, or use of a good or service. A descriptive mark is not automatically distinctive and becomes eligible for trademark protection only when it becomes associated in the minds of the public with the relevant good or service. Examples: Sharp for televisions, DoubleClick for online advertising.
- Suggestive: A suggestive mark suggests or hints at a good or service, but requires some imagination to arrive at the ultimate meaning of the mark. Although less distinctive than arbitrary or fanciful marks, a suggestive mark is distinctive and eligible for protection. Examples: Greyhound for transportation services, Jaguar for cars.
- Arbitrary: Arbitrary marks are existing words that have no relation to the relevant goods or services. Arbitrary marks are inherently distinctive and afforded higher trademark protection by courts. Examples: Apple for electronics, Camel for cigarettes.
- Fanciful: A fanciful mark consists of an invented word or phrase. Fanciful marks are at the highest end of the distinctiveness spectrum and receive the most protection from courts. Examples: Kodak for photography equipment, Pepsi for beverages.
Why does trademark distinctiveness matter?
Trademark distinctiveness is an essential concept of the law applicable to trademarks and service marks. A trademark which is arbitrary (random) or fanciful (made up words) is considered to be the most distinctive. This means that the mark cannot be so similar to another mark that it causes consumers to confuse the brand or entity associated with that mark. A trademark is inherently distinctive if it does not refer the consumer to a multitude of sources when it is evaluated in light of related products or services. Nike, Apple, Google are extremely protectable because they are extremely unique and distinctive.
When selecting a trademark for your goods or services, you want to be as far to the right as you can on the spectrum of distinctiveness. Brand distinctiveness is a powerful tool for capturing consumer attention and building a memorable brand. By focusing on creating and strengthening distinctive brand assets, you can increase your brand’s salience and protect it from competitors. In short, trademark distinctiveness is important for two reasons. Firstly, it defines whether a name can be protected or not. Secondly, for those names that are distinctive and protectable, the degree of distinctiveness is important when assessing how strong the trademark protection is against other companies.
If you are wondering whether your trademark is worth registering, or if you need any advice on its distinctiveness, please do not hesitate to contact us for our free assistance.
Bud & Prairie
We offer a full complement of services in all areas of IP law, including without limitation patents; trademarks; copyrights; industrial designs; IP litigation; anti-counterfeiting and enforcement; and licensing, due diligence, and contract review. Our strong technique fields include bio-chemistry, biotechnology, pharmaceutical, superconductor devices and systems, civil engineering, electrical engineering, mechanical engineering, electronics, computer software, telecommunications, information technology, communications, media, construction. Bud & Prairie boasts a team of highly-qualified lawyers, licensed patent and trademark agents, engineers, paralegals, technical staff and legal professionals whose knowledge, experience, and acumen are second to none. Most of our attorneys and consultants own advanced degrees from both domestic and foreign institutions. We have the depth of experience of our partners with a perfect combination of knowledge, foresight and creativity, making us possible to analyse and solve issues faced by clients from various industries and providing them with all-round or holistic solutions that are not only legally sound, but also commercially sensitiv