Color trademark protection in Vietnam and overseas

Color trademark is considered as nontraditional trademarks where at least one color is used to perform the trademark function of uniquely identifying the commercial origin of products or services.

This issue was addressed by the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights, which broadened the legal definition of trademark to encompass "any sign... capable of distinguishing the goods or services of one undertaking from those of other undertakings". The signs may be figures, words, a color combination or a combination of such signs.

Despite the recognition which must be accorded to color trademarks in most countries, the graphical representation of such marks sometimes constitutes a problem for trademark owners seeking to protect their marks, and different countries have different methods for dealing with this issue.  

Color trademark protection in Vietnam

In Vietnam, article 72 of Intellectual Property Law 2005 (amended 2009) provides that a trademark eligible for protection is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors, which capable of distinguishing goods or services of the mark owner from those of other subjects.

The law of Vietnam accepts protection of color trademark under the provisions of TRIPS. In fact, Vietnam has accepted protection of such trademark for a long time, from its inception of legislation on protection of industrial property rights (Regulation on trademark - 1982). However, the criteria for protection of color trademarks according to the current law are as follows:

i) It is sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors.

ii) A single color or a color combination not constitute a distinguishable sign are not to be protected as a trademark.

Until now, many domestic and foreign companies have filed single color or color combination applications for registration in Vietnam. The colors were used for advertising, packaging goods, a backdrop for events, painting shops or color of uniform of employees, for example:

- Green and gold colors of BP

- Lilac color of Milka Chocolate Company

- Sepia of Trung Nguyen’s Coffee products

However, the aforementioned colors were refused protection as a trademark. E.g. Dunhill Tobacco Company (UK) applied for trademark registration in Vietnam; the applied-mark was dark-red on the cigarette packages being widely sold in the market in many countries. The applied-mark was refused protection by the following reasons:

- A single color could not to be considered as a sign.

- As the number of natural colors was limited, so it could not confer the exclusive rights on a trademark holder to use a color that eliminates the right of others to use that color.

Dunhill made ​​a complaint and proved that the color on the label had been widely used for its tobacco products for decades in many countries around the world, thus acquired substantial distinctiveness. However, the National Office of Intellectual Property dismissed the complaint.

Therefore, to be protected on such color, Dunhill Company applied the following trademark application of “Dunhill & Figures”.