Well-known trademark in Vietnam

Well-known trademark is a relatively new and complex concept in Vietnam. Currently, there are no specific criteria to determine a well-known trademark. Typically, a well-known trademark is recognized if, in a dispute, the court rules that one of the disputed trademarks has achieved widespread awareness among the public and consumers, and therefore does not require registration/cannot be infringed upon.

Well-known Trademark

The concept of a well-known trademark refers to a trademark that has achieved a high level of recognition and reputation among the public. These trademarks are widely known and, as a result, have significant trademark value. The protection and rules surrounding well-known trademarks differ between countries, but there are some common principles and international agreements that provide a framework for their recognition and enforcement.

In both Vietnam and international contexts, the criteria for recognizing a well-known trademark do not depend on the laws of each country but rather lean towards international conventions. Additionally, even if a trademark is recognized as well-known in one region, such as in Vietnam, that recognition may not be accepted in another territory, such as Canada, if the trademark does not exist or achieve significant awareness in the Canadian market.

The concept of a well-known trademark is important in intellectual property law as it provides enhanced protection to prevent unauthorized use or infringement. Well-known trademarks are often afforded broader scope and stronger protection compared to regular trademarks. They are recognized as valuable assets and are granted special status due to their widespread recognition and reputation.

The criteria for determining a well-known trademark may vary between jurisdictions, but some common factors considered include:

1. Degree of knowledge or recognition: The extent to which the trademark is known among the relevant public, including consumers, industry professionals, and businesses.
2. Duration of use: The length of time the trademark has been in use and its continuous promotion and investment to build its reputation.
3. Geographic scope: The territorial extent of the trademark’s recognition and reputation.
4. Sales and market share: The market share and sales volume associated with the goods or services identified by the trademark.
5. Advertising and promotional efforts: The level of marketing and advertising activities undertaken to promote the trademark and create brand awareness.
6. Record of enforcement: The history of successful enforcement actions taken to protect the trademark against unauthorized use or infringement.

Regulations on well-known trademarks at the international level

The Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) are two important international agreements that provide principles for the protection of well-known trademarks. Many countries have incorporated the provisions of these agreements into their legal systems.

While TRIPS does not provide an official definition of a well-known trademark, the Agreement recognizes the importance of well-known trademarks and acknowledges special protection for them.

TRIPS requires member countries to provide special protection for well-known trademarks. This protection is not limited to specific goods or services but extends to similar or unrelated goods or services as well.

Furthermore, TRIPS requires member countries to treat well-known trademarks fairly and equally. This ensures that well-known trademarks are considered and protected in a legal and effective manner.

When a well-known trademark is infringed upon, member countries are required to provide legal measures to protect the well-known trademark from unauthorized use, including preventing the use of similar trademarks that may cause confusion or diminish the value and reputation of the well-known trademark.

This provision is also reflected in the Paris Convention. Specifically, Article 6bis of the Paris Convention for the Protection of Industrial Property contains provisions on well-known trademarks as follows:

By default, if national law allows it or upon the request of the interested party, the member countries of the Paris Convention are responsible for refusing or invalidating registration, prohibiting the use of a trademark that is a copy, imitation, translation, and likely to cause confusion with a trademark already registered or recognized as a well-known trademark in the country of registration or use by the competent authority, benefiting the person under the Convention using that trademark for similar or related goods.

These provisions also apply in cases where the main component of the trademark is a copy of any well-known trademark or an imitation likely to cause confusion with that trademark. The term for requesting the cancellation of such a trademark shall not be less than 5 years from the date of registration of the trademark.

Member countries of the Convention have the right to determine the term under which they may require the prohibition of the use of the trademark. No provision shall be made for a time limit requiring the cancellation or prohibition of the use of trademarks registered or used with bad faith.

Some notes on the process of protecting well-known trademarks

In the process of seeking protection for a well-known trademark, individuals/organizations should consider the following:

Recognition of well-known status: Different legal jurisdictions have different criteria for determining whether a trademark qualifies as well-known. Generally, factors such as the level of awareness or recognition of the trademark among the relevant public, the duration, scope, and geographic area of any use of the trademark, as well as the promotion and investment made to enhance the trademark’s reputation, are taken into account.

Enhanced protection: Well-known trademarks are often afforded enhanced protection, at a higher level than regular trademarks. This means that their protection extends beyond the specific goods or services they are registered for, to include related or unrelated goods or services. In some cases, even if a well-known trademark is not registered in a specific country, it may still be protected against unauthorized use.

Protection against dilution and trademark infringement: Well-known trademarks are protected against unauthorized use. Other parties are not allowed to use a trademark with the purpose of blurring or tarnishing the distinctiveness or reputation of a well-known trademark, even if there is no likelihood of confusion. Trademark infringement occurs when a third party uses an identical or similar trademark to a well-known trademark in relation to similar or related goods or services, which may cause confusion among consumers.

Enforcement: Trademark owners can enforce their rights through civil litigation, seeking injunctions, damages, or other remedies against infringers. In some legal jurisdictions, administrative procedures or specialized courts are also available to resolve disputes involving well-known trademarks.

Some globally well-known trademarks

Below are some internationally recognized well-known trademarks that have gained widespread recognition in most countries and territories and should be avoided for any actions that may infringe upon these trademarks, even if the products/services may differ significantly from the trademark’s product/service group (Or, if the trademark is not registered, the products/services that they are most known for in the market):

1. Coca-Cola: Coca-Cola is a globally well-known carbonated soft drink trademark. Established in 1886, Coca-Cola has become an icon of the beverage industry and has a large consumer base. The trademark is known for its distinctive red scripted logo and the unique taste of Coca-Cola soft drink.
2. Apple: Apple is a technology company and trademark that produces electronic products such as the iPhone, iPad, Macbook, and Apple Watch. With innovative design and advanced technology, Apple has built a global user community and become one of the most well-known technology trademarks in the world. The company is also the first to achieve market capitalization milestones of $1 trillion, $2 trillion, and soon $3 trillion, an achievement unmatched by any other company.
3. Nike: Nike is a well-known sports trademark known for its footwear, apparel, and sports accessories. With its distinctive Swoosh logo, Nike has built a strong image and is associated with athletes and competitive performance in the sports industry.
4. Google: Google is a leading technology company and online search engine. The Google trademark has become an integral part of modern life, providing services such as search, email, maps, and various other applications.
5. McDonald’s: McDonald’s is a globally recognized fast-food restaurant chain. With its “Golden Arches” logo and a diverse menu including hamburgers, French fries, and other fast food items, McDonald’s has become an iconic symbol of culinary culture and business worldwide.

*** Other Articles***

– You could visit here to see the Trademark Registration in Vietnam.

– You can also check the Vietnam Trademark Law: Detailed Guide And Legal Notes.

– You could check Questions of filing trademark in Vietnam: POA, Trademark requirement and trademark fee in Vietnam.

Contact AAA IPRIGHT: Email: info@aaaipright.com

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