Conditions for Registering Descriptive Signs as Trademarks in Vietnam and abroad
I. General Rule: Descriptive and Generic Signs Are Not Registrable
Signs that merely describe the characteristics, quality, or function of goods or services are not inherently distinctive and thus not registrable as trademarks.
• Generic Terms: Common names like 'Milk', 'Laptop' – never registrable.
• Merely Descriptive: Directly describe the product or service (e.g., 'Sweet', 'Fast Delivery') – not registrable unless secondary meaning is proven.
• Suggestive: Indirectly hint at characteristics and require consumer imagination – registrable (e.g., Netflix, Coppertone).
Legal basis:
• Vietnam: Article 74.2(b), (c) IP Law (amended 2022)
• EU: Article 7(1)(c) EUTMR
• US: §2(e)(1) Lanham Act
II. Exception: Acquired Distinctiveness (Secondary Meaning)
Descriptive signs may be registrable if they acquire distinctiveness through long-term and prominent use. Conditions include:
|
Criteria |
Description |
|
Long and consistent use |
Extensively and continuously used in commerce, typically over 5 years |
|
Strong marketing efforts |
Widely promoted and recognized through branding campaigns |
|
Consumer recognition |
Consumer surveys show association with a specific business |
|
Not overly descriptive |
Not falling within the category of absolute exclusions |
• Vietnam: Accepted under Article 74.2(a) if distinctiveness is established through use
• US: Acquired distinctiveness under §2(f) Lanham Act
• EU: Article 7(3) EUTMR
III. Scope of Protection for Descriptive Marks (If Accepted)
- Protection is limited to the specific form and usage proven.
- Cannot prevent fair descriptive use by third parties.
- Easily lost if usage is inconsistent or generic meaning prevails.
IV. Signs That Can Never Be Protected – Regardless of Use
|
Sign Type |
Example |
Reason for Exclusion |
|
Generic Term |
Milk, Laptop |
Common name – never capable of distinguishing source |
|
Purely Descriptive |
100% Natural, Low Cost |
Only conveys promotional or functional meaning |
|
Measurement or Indicator |
500ml, 4K |
Technical, mandatory, or factual descriptors |
|
Common Shape or Packaging |
Standard water bottle |
Part of the public domain |
Practical Illustration:
• Case 1 – “Quán NGON”: The word 'NGON' (meaning 'delicious') is descriptive, but if used prominently and independently as the main identifier, and shown to have acquired distinctiveness through long use and recognition, it may be eligible for trademark protection.
• Case 2 – “Zìn Ký / Ngon”: 'Ngon' appears beneath the main brand 'Zìn Ký' and serves only as a descriptive slogan. It does not function as an independent source indicator and cannot be registered, regardless of long-term use. This illustrates a descriptive sign that can never acquire distinctiveness.
V. Conclusion
Trademark systems in Vietnam, the US, EU, and others uphold the principle that merely descriptive or generic signs are not eligible for protection unless distinctiveness is acquired through actual use. However, where a descriptive sign is always used as subordinate to a primary mark, and does not serve as a standalone source identifier, it cannot gain protection even after long-term use./.