LEGAL GUIDE ON TRADEMARKS IN VIETNAM

Pham Vu Khanh Toan
Director
Attorney at law, registered IP Attorney
PHAM & ASSOCIATES
Email: hanoi@pham.com.vn

1          Relevant Authorities and Legislation

The relevant trade mark legislation in Vietnam includes the Vietnam IP Law 2005, amended in 2009 and 2019, and a number of Government Decrees and Ministerial Circulars detailing the implementation of the IP Law, of which the most crucial documents are Government Decree no.103/2006/ND-CP and Circular no.01/2007/TT-BKHCN of the Ministry of Science and Technology on detailing and guiding the implementation of a number of articles of the IP Law regarding industrial property and Government Decree no.99/2013/ND-CP on regulating administrative sanctions in the field of industrial property.

2          Application for a Trade Mark

A trade mark may be a word or words, letters, pictures, figures, including three-dimensional figures, or a combination thereof, either in one or more colours.

Smells and sounds cannot be registered as a trade mark in Vietnam.

For trade mark registration, the following information is required:

(a)       Full name and address of the applicant and full name, address and telephone number of the agent.

(b)       Indication of the type of mark concerned (trade mark, service mark, certification mark or collective mark).

(c)        If the mark is in colour, an indication of the colour(s) concerned.

(d)       A brief description in words of the pictorial and distinguishing elements of the mark and the general structure of the mark.

(e)       If priority is to be claimed, an indication of the Convention or agreement on which priority is based, and of the number, country and date of the application whose priority is claimed.

(f)        Indication of the goods or services for which registration is desired, and of the class or classes of the International Classification to which they belong.

(g)       If the mark contains a word or words in a language other than Vietnamese or English, a transliteration or an English translation of the same must be given.

In case of an application for the registration of a Collective mark or Certification mark, the rules for the use of the mark must be filed.

After an application is filed, it is first examined to determine compliance with the formal requirements within one month from the filing date.  If formal defects are found, the application will be rejected, and the applicant may then amend or correct the application within one month.  If the application is found to be formally in order, it will be accepted as such and a notice of acceptance confirming the filing date and application number will be issued and the application will be published (within two months from the date of the notice of acceptance by the NOIP).  Thereafter, the application will be subjected to an examination as to registrability.  If, during substantive examination, the mark is found registrable and the fees are found duly paid, a decision to grant registration will be taken.  The mark will then be registered, a notice concerning the registration will be published in the Industrial Property Official Gazette, and a Certificate of Registration will be issued.

A trade mark can be adequately represented when the representation is clear, precise, self-contained, and capable of being distinguished so that this representation can precisely determine what the sign is, enabling the person looking at the trade mark to understand what the trade mark is.

Class headings or a general description of the designated goods/services are not accepted; it is necessary to describe such goods/services in detail.  The Nice Classification (NCL) ( Version 11-2021) is applied to the classification of goods and services for trade mark registration in Vietnam from January 1, 2021.  This Classification has been translated into Vietnamese by the NOIP, and is available in the Industrial Property Gazette No. 392B – Volume 3, November 25, 2020 and on websites of the NOIP (www.ipvietnam.gov.vn).

Exotic marks like sounds, scents, fragrances, or flavours, etc. cannot be filed in Vietnam.

No.  Proof of use is not required for trade mark registrations and/or renewal purposes.

Vietnam does not have any dependent territories or colonies.  Vietnamese trade marks cover the whole territory of Vietnam.

A legal entity or a natural person having a licensed business, including a foreigner, has the right to register a mark to be used for goods or services he or she has produced or supplied.

Yes, if such sign has been functioning as a trade mark and is widely known by customers.  For more details, see question 3.1, points a), b) and c) below.

On average, registration takes approximately 12–18 months.

On average, registration of a Vietnamese trade mark in a single class costs USD 240 in total, including USD 40 for official fees and USD 200 for agents’ fees.

Yes.  A trade mark that has jurisdiction in Vietnam can be obtained by filing a Vietnam national application, or an international application designating Vietnam under the Madrid Protocol and/or Madrid Agreement.

Yes.  An original Power of Attorney, signed by the applicant’s representative, must be filed within one month from the filing date.

No.  A Power of Attorney does not require notarisation and/or legalisation.

See the answer to question 2.3, point (e) above.  Priority cannot be claimed after the filing date.

Yes.  Collective marks distinguish goods or services of members of an organisation that is the owner of the mark from those of non-members; whereas Certification marks are marks licensed by their owners to other organisations or individuals to use for their goods or services in order to certify characteristics in respect of origin, materials, raw materials and methods of production or methods of supply, quality, accuracy, safety or other characteristics of such goods or services.

3          Absolute Grounds for Refusal

The absolute grounds for refusal of registration include:

a)         signs lacking distinctive characteristics, such as simple geometric shapes, figures, letters and words of uncommon languages.  However, such signs may be protected as a mark if they have become distinctive through extensive use and are recognised as a mark;

b)         signs, symbols, pictures or common names of goods in any language, which are common knowledge or which have been extensively and frequentlyused;

c)         signs indicating the time, place, method of manufacture, kind, quantity, quality, property, composition, purpose or value of the goods or services, or being otherwise of descriptive character in relation to the goods or services or their origin.  However, such signs may be protected as a mark if they have acquired distinctiveness through use before the filing of trade mark applications;

d)         signs being identical or confusingly similar to quality marks, control marks, warranty marks or like marks of international organisations having noticed and requested repression of use of such marks, except for those marks registered as certification marks in the names of the organisations themselves;

e)         signs being identical or confusingly similar to a State flag, State emblems of countries, or symbols, flags, armorial bearings, abbreviations or full names of State agencies, political organisations, socio-political organisations, socio-political professional organisations, social organisations or socio-professional organisations of Vietnam or international organisations, except with the consent of the relevant agencies or organisations;

f)          signs being identical or confusingly similar to real names, aliases, pen names or images of leaders, national heroes or distinguished persons of Vietnam or foreign countries;

g)         signs liable to mislead, confuse or deceive consumers as to the origin, nature, functions, intended purposes, quality, value or other characteristics of the goods or services;

h)        signs describing the legal status and domain of activity of business entities; and

i)          signs indicating the geographical origin of goods or services; except, however, for those signs which have been widely used and recognised as trade marks or registered as Collective marks or Certification marks.

The absolute grounds objections in question 3.1, points d), e) and f) above are impossible to overcome.  The remaining absolute grounds objections in question 3.1, points a), b), c), g), h) and i), may be overcome if distinctiveness of a sign has been acquired through extensive use (“secondary meaning”) and, as such, is recognised by customers as a mark.

Any party to a decision of refusal of registration from the NOIP has the right to appeal that decision.

An appeal against the rejection of an application or refusal to grant registration may be lodged with the NOIP within ninety (90) days from the date the appellant receives the decision or notice concerned.  Against the decision on the appeal, further appeal may be lodged within thirty (30) days with the Ministry of Science and Technology (MoST), or administrative proceedings may be instituted.  In case of disagreement with the decision of the MoST, the appellant still has the right to initiate a lawsuit in accordance with administrative procedures.

4          Relative Grounds for Refusal

Relative grounds for refusal of registration on account of the existence of rights of other parties include:

a)         signs being identical or confusingly similar to the mark of another party registered in Vietnam or registered in an international registration under the Madrid Agreement or the Protocol extending to Vietnam for the same or similar goods or services;

b)         signs being identical or confusingly similar to a mark whose registration in Vietnam, or whose international registration under the Madrid Agreement or the Protocol extending to Vietnam, has been applied for the same or similar goods or services in an application having an earlier filing or priority date.  This applies even for marks belonging to the same owners, except for associated marks;

c)         signs being identical or confusingly similar to a mark of another party, the registration of which has expired or was cancelled less than five years ago, except if it was cancelled only on account of non-use;

d)         signs being identical or confusingly similar to the mark of another party which is recognised as a well known mark in accordance with Article 6bis of the Paris Convention, or being identical or confusingly similar to the mark of another party which is used on an extensive scale and recognised as that other person’s mark;

e)         signs being identical or confusingly similar to a protected trade name if the use of such signs is likely to cause confusion to consumers as to the origin of goods or services, or a protected geographical indication if the use of such signs is likely to cause confusion to consumers as to the geographical origin of goods;

f)          signs identical to a geographical indication or consisting of a geographical indication or being translated or transliterated from a protected geographical indication for wines or spirits, if such signs shall be registered for wines or spirits not originating from the place indicated by that geographical indication;

g)         signs being identical or not significantly different from a protected industrial design or an industrial design whose protection has been applied for, having an earlier priority date; and

h)        in the case of an application for the registration of a mark identical or similar to an earlier mark of another party, a letter of consent from that other party could be filed, but the NOIP in such case may still refuse registration if it is of the opinion that registration of the mark may lead to confusion in connection therewith.  It should therefore be stated in the letter of consent that the simultaneous use of the marks by both parties concerned will not cause confusion amongst the public.

A relative grounds objection can be overcome by (i) limiting the specification so that no conflict remains, (ii) obtaining consent from the relevant earlier rights owner, or (iii) removing the earlier mark from the register through revocation or invalidation due to non-use of a registered mark or bad faith registration.

Please refer to question 3.3 above.

Please refer to question 3.4 above.

5          Opposition

The grounds on which a trade mark can be opposed are:

(a)       The applicant for registration neither has the right to registration nor has been assigned such right.

(b)       The subject matter of the trade mark failed to satisfy the protection conditions at the grant date of the certificate.

Any legal entity or natural person can oppose the registration of a Vietnamese trade mark.

During the period from the date a trade mark application is published (which takes place within two months from the date of the notice of acceptance by the NOIP) to the date of a decision on the grant of a trade mark registration certificate, any third party can file a written opposition with the NOIP to oppose the grant of, or refusal to grant, a trade mark registration certificate.

6          Registration

Registration of a trade mark is published in the Industrial Property Official Gazette and a registration certificate is sent to the owner of the trade mark.

Trade mark rights commence from the granting date.

The term of a trade mark is 10 years counted from the filing date and it is renewable indefinitely for consecutive terms of 10 years.

The request for renewal must be filed and the renewal fee paid within six months before the expiration of the running period, or within six months after the expiration, provided that a surcharge amounting to 10% of the renewal fee is paid for each month of late filing.

7          Registrable Transactions

A trade mark owner can assign his/her trade mark rights.  The assignment (contract/agreement) must be in writing and registered with the NOIP in order to be effective.

Yes.  For instance, a registered trade mark may be partially assigned, or may be assigned with or without the goodwill of the business.  However, the assignment is allowed only to the legal entity or individual who fulfils requirements for the person having the right to register in respect of that mark.

Yes.  A trade mark owner can license his/her trade mark rights.  The licence (contract/agreement) must be in writing.  Recordal of the licence with the NOIP is not mandatory.

A Collective mark is not allowed to be licensed to legal entities or individuals other than members of the Collective mark owner’s organisation.

Yes.  An exclusive licence permits the licensee, within the scope and term of the licence, to use the property to the exclusion of all others, including the owner.  A non-exclusive licence permits any number of licences to be granted and the owner is not barred from using the property.  A sub-licence is a licence, the licensor of which is a licensee of the property under another licence.

Yes.  If infringement is prejudicial for a licensee, the licensee may request the competent authority to take action if the following conditions are met: (i) there is a term of the licensing agreement/contract that allows the licensee to do so; and (ii) the licensee has acquired a statement in writing from the licensor that the latter has no objection to that action.

Yes.  Quality control clauses are necessary in a licence and the licensee must guarantee the quality and characteristics of the goods bearing the mark.

The law of Vietnam is silent on this issue; there are no regulations on trade mark lien.

Please refer to question 7.7 above.

8          Revocation

A trade mark can be entirely revoked if:

(i)         the applicant for trade mark registration has no right to registration; or

(ii)        the trade mark application does not meet the protection conditions at the filing date of the trade mark application.

A trade mark can be partly invalidated if that part fails to satisfy the protection conditions.

A request for revocation of a trade mark is submitted to the NOIP with the payment of a fee.  Based on the result of the examination of the request for trade mark revocation and interested parties’ opinions, the NOIP will make a decision either to entirely or partly grant a notice of refusal to revoke the trade mark.  When a trade mark is revoked, the rights of the owner are deemed to cease to the extent that they have been revoked from the date of the NOIP’s decision on the trade mark revocation.

The time period for making a request for revocation of a trade mark is five years as from the grant date, except for the case where the trade mark has been granted due to the applicant’s dishonesty.

Any legal entity or natural person can commence revocation proceedings.

Relevant counter-measures should be raised to prove that the grounds for revocation are not applicable; for instance, in the case that a trade mark is revoked due to “lacking distinctiveness”, the grounds of defence can be raised because the mark has acquired distinctive character through extensive use and has become widely known by customers.

The appellant must file a first instance appeal to the NOIP.  In the case that the appellant does not agree with the NOIP’s decision on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) with the MoST, or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision, in accordance with the civil proceedings.

9          Invalidity

A trade mark may be declared invalid in the following cases:

a)         the use requirement is not complied with and there are no legitimate reasons for the non-use; and

b)         if the owner of the registered mark is deceased (if a natural person), or no longer carries out business activities and has no legal successor.  Furthermore, the registration of a mark will be invalidated if it was not duly renewed.

A request for invalidation of a trade mark is submitted to the NOIP with the payment of a fee.  Based on the result of the examination of the request for trade mark invalidation and interested parties’ opinions, the NOIP will make either a decision or a notice of refusal to invalidate the trade mark.

Any legal entity or natural person can commence invalidation proceedings.

Relevant counter-measures should be raised to prove that the grounds for invalidation are not applicable; for example, in the case where the trade mark is requested to be invalidated on the ground of “non-use” as it has not been used for more than five consecutive years without justifiable reason, evidence must be provided for refuting that.

The appellant must file a first instance appeal to the NOIP.  In the case that the appellant does not agree with the NOIP’s decision on the first instance appeal, the appellant may choose to further appeal against the first instance appeal’s decision by filing a further appeal (second instance appeal) with the MoST, or bringing a lawsuit to the administrative courts to appeal against the first instance appeal’s decision in accordance with the civil proceedings.

10        Trade Mark Enforcement

Vietnam does not have specialised courts for IP disputes.  Depending on the nature of a case, trade mark infringement may be settled through administrative measures by competent authorities, or through civil or criminal measures by courts at the district or provincial/city level.

The administrative authorities involved in the IP right enforcement include: (i) specialised inspectors of industrial property belonging to science and technology agencies at various levels; (ii) People’s Committees at local levels; (iii) the customs offices; (iv) the market management authorities; and (v) the economic police.

There are two instances of trial in Vietnam, namely first instance and appeal trial.  In general, first instance trials fall under the power of the court in the district where the defendant is located.  The jurisdiction of an appellate court is conferred on court at the regional/provincial or city level.  Where one of the parties is a foreigner, the first instance trial is under the responsibility of a court at the provincial or city level.

During the period of preparation for trial at first instance, the key pre-trial procedural stage is the conciliation (judicial compromise) carried out by the court to enable the parties to reach an agreement on the settlement of the case, except in some special cases as stipulated by the law.  Where the parties reach an agreement on the matters which must be resolved in the civil case, the court shall record the same and issue a decision acknowledging the settlement of parties.  The decision shall take legal effect immediately after it is issued and the case then shall be suspended in accordance with Article 192 of the Code of Civil Procedure.  If negotiation between parties fails, the court shall issue a decision to bring the case to a hearing.

The period to reach trial from commencement is four to six months.

Preliminary (or provisional) and final injunctions are available.

A preliminary injunction may be applied for if: (a) there is a threat of irreparable damage to the trade mark owner; or (b) there is a threat of dispersal or destruction of goods suspected of infringing upon trade mark rights, and relevant evidence if they are not protected in time.

The preliminary injunction includes one or several of the following: (i) seizure; (ii) inventory; (iii) sealing off; and (iv) other measures as stipulated by the Code of Civil Procedure.

For the grant of a preliminary injunction, a claimant must submit (a) evidence demonstrating the claimant’s trade mark rights, (b) evidence showing acts of infringing the trade mark concerned, and they must deposit (c) a sum of security equal to 20% of the value of the goods that are subject to the application for a preliminary injunction, or at least VND 20 million if it is impossible to evaluate those goods.

Yes.  During trial, a court may request disclosure of documents and materials, and may stipulate the extent of such disclosure.

Evidence is given in writing (no prescribed form is available) with witness statements (and signature) and the court can call such witnesses for cross-examination at trial.

Yes.  Infringement proceedings can be stayed if validity of the trade mark for which infringement is claimed is a pending issue in an administrative court or the NOIP.

According to the Code of Civil Procedure, a claim for trade mark infringement is time-barred for two years from the day on which the trade mark owner knew that his/her trade mark rights had been infringed.

Yes; if trade mark infringements are:

■          intentional; and

■          on a commercial scale,

criminal liabilities shall be incurred, including (i) a monetary fine of VND 50–500 million (approx. USD 2,200–22,000), and (ii) non-custodial reform of up to two years.

Criminal prosecution can be pursued only by the prosecutor.

There are no provisions for unauthorised threats of trade mark infringement in Vietnamese IP legislation.

11        Defences to Infringement

A claim for infringement can be refuted on the facts of the case, for instance: (i) that the sign in question was not confusingly similar to the registered mark; (ii) that the sign has been used fairly and in good faith; (iii) that the registered mark has not been used for five consecutive years; or (iv) that the registered mark failed to meet the protection conditions on the filed date of the trade mark application.

Exhaustion of the rights can be raised in addition to non-infringement; for instance, according to the IP Law of Vietnam, the trade mark owner has no right to prevent others from circulating, importing or exploiting uses of products legally put into the marketplace, including foreign markets, except for such products put into foreign markets by persons other than the mark owner or his licensee (the case of parallel importation).

12        Relief

A trade mark owner can rely on the following measures to enforce his/her protected rights:

(1)       Administrative measures: the main administrative penalties and remedies may include: (a) a warning; (b) fines; (c) additional penalties (such as confiscation of evidence and means of violation, or suspension of the infringer’s business activities); and (d) compulsory remedial measures (such as the removal of infringing elements from the infringing goods, the destruction or distribution for non-commercial purposes of infringing goods, or the publication of corrective notices).

(2)       Civil remedies: a trade mark owner may request the competent court to issue a decision against a party that is alleged to have committed any act of infringement.  The remedies against infringement may include: (a) termination of the act of infringement; (b) public rectification and apology; (c) performance of civil obligations; (d) compensation for damages; and (e) destruction or disposal of infringing goods for non-commercial purposes.

(3)       Criminal procedures: in serious cases, trade mark infringements may be subjected to criminal liability with a warning, monetary fine or imprisonment.

An award of damages given by a court may include material damage and moral damage.  Material damage is determined on the basis of actual losses and there are specific rules on how to calculate these.  If such losses cannot be determined, the court has sole discretion to determine the level of compensation, but the total amount of compensation for damage cannot exceed VND 500 million (approx. USD 23,000).  Moral damage can be compensated in an amount between VND 5–50 million.  In addition, the trade mark owner may request the court to compel the infringer to pay the reasonable costs of hiring attorneys.

13        Appeal

A petition to appeal or protest against a judgment or a decision of the first instance court should be filed within fifteen (15) days from the announcement of the judgment.  The Court of Appeal shall reconsider the judgment of the first instance court, or its part subject to the appeal or protest, within three to four months.  The judgment or decision of the Court of Appeal is final.

A court’s decision/judgment that has come into force can be protested by the Chief Justice of the Supreme People’s Court or the Chief Procurator of the Supreme People’s Procuracy, under the supervisory and review procedures, if there is a mistake or a violation of law found in the judgment, or a new important fact(s) of the case, which the litigant(s) was (were) unable to know, is (are) discovered.

New evidence can only be added at the appeal stage if it was unavailable at the time of the decision being appealed and is relevant to the point at issue.

14        Border Control Measures

Yes.  There is a mechanism for seizing and preventing the importation of infringing goods or services.  This is border customs’ control measures for IP-related imports and exports, which comprise: (i) suspension of customs procedures for suspected intellectual property rights (IPR) infringing goods; and (ii) supervision to detect goods containing signs of infringement of IPR.

Upon acceptance of the IPR owner’s request, Customs Offices (CO) will operate the monitoring system.  When they discover suspected infringing products, the CO will temporarily suspend the clearance of the products and instantly notify the IPR owner or its representative.  Within three working days from the date of the notification, the IPR owner or its representative should submit a Request for Suspension and a deposit bond or bank guarantee for an amount equal to 20% of the value of the goods that are subject to detention, or VND 20 million (approx. USD 900) if the total value of the goods cannot be determined.

The CO is entitled to grant a decision on suspension of customs clearance of requested goods in 10 days (with an extension for a further 10 days, as may be required).  Within the prescribed time limit for suspension, the IPR owner should consolidate their allegation and proceed with possible actions, including initiating a civil lawsuit against the owner of the detained goods, requesting the CO to take administrative action against the owner of the detained goods, or reaching an agreement with the owner of the detained goods.

The decision to take any of the above actions is based on the examination of the detained goods and the relevant information collected.

15        Other Related Rights

Unregistered trade mark rights, except well-known trade marks which are protected without registration according to Article 6bis of the Paris Convention, are enforceable under the tort of passing off and/or unfair competition if the use of the trade mark or similar trade mark by the defendant results in misrepresentation and causes injury or damage to the plaintiff’s goodwill.

Compared to the enforcement of registered rights, the enforcement of unregistered trade mark rights may be much more complicated because the plaintiff needs to demonstrate goodwill and misrepresentation on an evidential basis.

Protection of a company name (or trade name) is prescribed in Article 129.2 of the IP Law.  According to this, any act of using commercial indications identical or similar to another person’s prior trade name for the same or similar goods or services, that causes confusion as to business entities, business premises or business activities under the trade name, may be considered to be infringing the rights to the trade name.

In addition, Article 130.1.d of the IP Law stipulates that acts of unfair competition may include the registering, possessing the right to use or using a domain name identical or confusingly similar to a protected trade name or mark of another person, or a geographical indication that one does not have the right to use, for the purpose of possessing the domain name, benefiting from or prejudicing the reputation and goodwill of the respective mark, trade name and geographical indication.

Book titles and film titles do not confer IP protection in Vietnam.  However, a geographical indication can confer IP protection if it meets the criteria for protection under the IP Law, namely: (i) the product bearing the geographical indication originates from the territory, locality or country indicated by such geographical indication; or (ii) the reputation, quality or characteristics of the product bearing the geographical indication are due essentially to the geographical environment of the territory, locality or country indicated by such geographical indication.

16        Domain Names

An organisation or an individual can own a domain name.

The authority for registration of “.vn” domain names is the Vietnam Internet Network Information Centre (VNNIC).  An application for domain name registration is submitted via an authorised registrar to VNNIC, with the payment of a fee, by the registrant.  Within 10 working days of receiving the application, VNNIC will review the application document and announce its acceptance or rejection of it in writing.

If rejecting it, VNNIC will state the reasons.  If the application is accepted, the registrant and VNNIC will sign a “Contract of Internet domain name ‘.vn’ development”, which contains articles regulating the provision of the domain name “.vn” in compliance with laws on management and use of the domain name “.vn”.

Acts of unfair competition, according to the existing IP Law (Article 130.1.d), include the registering, possessing the right to use or using a domain name identical or confusingly similar to a protected trade name or mark of another person, or a geographical indication that one does not have the right to use, for the purpose of speculating, the domain name, benefiting from or prejudicing the reputation and goodwill of the respective mark, trade name and geographical indication.

In addition, a trade mark which is confusingly similar to a prior domain name may not be accepted for registration.  Use of that trade mark is considered an infringement of the prior domain name’s rights and may constitute an act of unfair competition.

A number of ccTLDs are available in Vietnam.  A Vietnam domain name is allowed to be registered both in second level (under .vn) and third level formats (under .com.vn, .org.vn, .net.vn…).  For example, “.com.vn”, “.biz.vn” and “edu.vn” are for organisations/individuals involved in commercial, business, education/training activities and “.gov.vn” is for central- and local-level state agencies and organisations.

There were some dispute resolution procedures regarding ccTLDs in Vietnam.  All disputes over domain names in Vietnam are resolved in accordance with Article 76 of the Law on Information Technology and Article 16 of Government Decree 72/2013/ND-CP dated July 15, 2015 on management, provision and use of Internet services and online information, in one of the following forms: (i) negotiation and conciliation; (ii) arbitration; and (iii) court lawsuits.

17        Current Developments

Law no.42/2019/QH14 of June 14, 2019 amending and supplementing some articles of the Law on Insurance Business and the Law on Intellectual Property came into effect on November 1, 2019.  In relation to trade marks, there are some important changes/supplementations, namely: (i) the use of a trade mark by the trade mark licensee under a licensing agreement is also to be considered a trade mark used by the trade mark owner to nullify a non-use cancellation against its registration; (ii) recordal of a trade mark licensing contract with the NOIP is not mandatory to be effective to a third party; (iii) defendants in IP disputes, if the court concludes that they do not commit acts of infringement, may request the court to force the plaintiffs to pay them a reasonable fee to hire a lawyer; and (iv) any parties suffering from damages caused by the abuse of IP rights protection procedures are entitled to request the court to force such right holders to compensate for the damages and reasonable attorney fees.

The first important judgment that has taken place in Vietnam over the last 18 months was the application for the “SHINE SPA” trade mark, (application reference no.4-2009-20520) for “cosmetics” in Class 4 and “Beauty and hygiene care services; massage service; mineral healthcare service (spa services)” in Class 44 under the name of Sheraton International IP, LLC, known in this case as Sheraton.  Sheraton was rejected by the  National Office of Intellectual Property (NOIP) on the ground of indistinctiveness and lack of descriptiveness as defined under Article 74.2.(c) of the IP Law.  As they lost their appeal to the NOIP against the decision, Sheraton appealed further to the Ministry of Science and Technology (MoST), the governing body of the NOIP, arguing that: (i) the applicant requested the mark “SHINE SPA” to be protected in its entirety, the word element “SPA” appearing in the mark is disclaimed; and (ii) the English word element “SHINE” in the mark (according to the English-Vietnamese Dictionary) means “a quality of brightness, especially from reflected light, lighting”.  As Class 4 includes many different cosmetics, beauty and hygiene care services, such as face powders, lipsticks, perfumes, lotions etc., each of these have different chemical ingredients, characteristics, properties and usages, and the manufacturers often use specific words/phrases to describe each type of product to help and guide consumers to choose the products that are suitable for their own beauty purposes.  The same is true for spa services in Class 44.  Therefore, one cannot work under the assumption that “SHINE”, with the abovementioned meaning, directly describes the composition, nature and quality of products/services in Class 4 and Class 44.  As a result of the above two factors, it was concluded that the word “SHINE” can be capable of functioning as a trade mark; and (iii) since this case, Sheraton has used the trade mark “SHINE SPA” and promoted its products bearing this mark widely in the Vietnamese market.  Reviewing the case, the MoST accepted the above arguments to be true and has ordered the NOIP to register the trade mark.

The next important case regards the application for the trade mark “PEAK PILATES”, (application reference no.4-2012-06133) under the name of Mad Dogg Athletics, Inc. (USA) for products/services in Classes, 9, 28 and 41.  Mad Dogg were rejected for registration on the grounds of describing a feature of the goods/services in respect of which the registration is sought.  On behalf of the client, Pham & Associates appealed to the NOIP against the decision, arguing that “PEAK PILATES” does not indicate or refer directly to the characteristics, properties and functions of the product/service under the application as follows: (i) “PILATES” is a physical fitness system developed in the early 20^th century by Joseph Pilates, after whom it was named.  This physical fitness system is widely practised and popular worldwide.  Pilates is a proper noun, a part of the name Joseph Pilates, and therefore not descriptive of the accompanying product or service; (ii) “PEAK PILATES” is not an indication of the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which are descriptive of the products  of “sound recording, images pre-recorded, in particular CDs and DVDs containing guidance for health and physical fitness exercises” in Class 9; “Exercise apparatus and equipment” in Class 28 and the services of “Providing guidance on health and physical fitness exercises” in Class 41; and (iii) the mark “PEAK PILATES” has been protected for products/services in Class 9, 28 and 41 in many countries around the world since the early 2000s, including  English-speaking countries such as Australia, Canada, New Zealand, Singapore, the UK, the USA, and the 27 countries operating within the European community. Convinced by the above argument, NOIP accepted to register the mark.

The next trade mark application regards “ON-YASAI, figure” (application reference no.4-2012-25241) under the name of REINS International Inc. (REINS) for services relating to a Japanese restaurant.  The food and beverage service provided by the restaurant in Class 43 was rejected on the grounds that  the mark is indistinctive and the transliteration of  “ON-YASAI” means “steamed vegetable” which describes goods/services in Class 43.  In failing to appeal to the NOIP against the decision, REINS appealed further to the MoST, arguing as follows:

(i) “ON-YASAI, figure” is a combined mark consisting of word and figure elements.  The word element “ON-YASAI” contains Latin letters that can be pronounced.  The figure element is a set of some red-and-black decorative motifs and some characters of the Japanese pictographic language.  In whole, this combined mark is capable of distinguishing, instead of being indistinctive as the NOIP considered;

(ii) for Vietnamese consumers – where Japanese is not considered widely spoken – “ON-YASAI” by itself neither means steamed vegetable nor conjures up this dish, nor does it describe the service of which registration is sought.  Moreover, these characters are presented graphically and should be identified as pictograms.  For the same reason, the trade mark has been protected in Japan and many other countries such asChina, Hong Kong, Malaysia, the Philippines, Singapore, Taiwan and the USA.  REINS has had more than 30 years of culinary business with 1,248 stores in Japan and 143 stores in 11 other countries, and the trade mark is widely known by consumers around the world.  In Vietnam, the trade mark owner simply wants to apply this trade mark under the services of Class 43 for their Vietnamese branches for the Japanese hotpot “ON YASAI SHABU SHABU” restaurants, which is advertised and introduced widely on Vietnamese food websites about such as: foody.vn; pasgo.vn; vinid.net; adayroi.com.vn; and

(iii) the mark “ON-YASAI, figure” is requested to be protected in its entirety, the Japanese characters are only disclaimed when standing alone.

Reviewing the case, the MoST accepted the above arguments to be true and has ordered the NOIPto register the trade mark.

According to the law-making plan of the National Assembly (NA), the IP Law (enacted in 2005, amended in 2009 and 2019) will be comprehensively amended and supplemented in 2021 to correct the limitations after 15 years of its implementation and to incorporate international commitments on IP into national law when Vietnam joins the TRIPS Agreement of the World Trade Organization (in 2007) and a series of new-generation free trade agreements such as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) (in 2019), EU-Vietnam Free Trade Agreement (EV-FTA) (in 2020), and Regional Comprehensive Economic Partnership (RCEP) (in 2020).  The process of drafting the Law amending the current IP Law (“the Draft”) started in early 2019 and the Draft was published in November 2020 for public comments to be finalised in mid-2021 and then for submission to the NA for approval in October 2021.

According to the Draft, there will be 67 articles of 14 chapters proposed to be amended and supplemented and possibly the upcoming amended IP Law (2021?) will have 18 chapters and 235 articles, which marks an increase of 13 articles in comparison to the current IP Law.

There have not been any general practice or enforcement trends that have become apparent in Vietnam over the last year.  Handling infringement by administrative measures is still the preferred and more overwhelmingly-used option./.

Acknowledgement

This article was first published in the International Comparative Legal Guide (ICLG) – Trade Marks at https://iclg.com/practice-areas/trade-marks-laws-and-regulations/vietnam