Successful Opposition: Protection Refused for LUCKY LUKE

Trademark Application No.4-2020-08369 for "LUCKY LUKE", filed on March 13, 2020, by a Vietnamese company for products and services in Classes 09, 38, 39, and 41, was successfully opposed by Morris Comics NV (Belgium) - the copyright owner of the "Lucky Luke" comic book series.

The opposition was grounded on the fact that the applied-for mark is identical to the main character "Lucky Luke" created by Belgian cartoonist Maurice De Bevere (“Morris”) in 1946. According to the opponent, the registration and use of the "LUCKY LUKE" mark constitute an infringement of the economic rights of the copyright owner. Furthermore, it is likely to cause consumer confusion regarding the commercial origin of the goods and services with Morris Comics NV, the entity legally assigned all copyright and related rights to the work since 2014.

More specifically, the opposition is based on the following legal grounds and arguments:

(i) The work and the character image are within the term of copyright protection in Vietnam:

- Vietnam is a contracting state of the Berne Convention for the Protection of Literary and Artistic Works. Therefore, works owned by individuals or organizations from Berne Convention member countries (including Belgium) are automatically protected in Vietnam without requiring formal registration.

- Under Point b, Clause 2, Article 27 of the IP Law of Vietnam, the term of protection for the economic rights of literary and artistic works (including comic books) is the author's lifetime plus 50 years after the year of the author's death. The author, the late cartoonist Maurice De Bevere (“Morris”), passed away in 2001. In accordance with the aforementioned regulation, the copyright protection term for the entire comic book series and the character image of "Lucky Luke" in Vietnam extends continuously until the end of December 31, 2051.

- The applicant's registration of a mark identical to a protected character image without the copyright owner's consent constitutes an infringement of legitimate intellectual property rights.

(ii) The applied-for mark is likely to cause consumer confusion regarding commercial origin:

- Clause 5, Article 73 of the IP Law stipulates that signs shall not be protected as trademarks if they are: "Signs which mislead, confuse, or deceive consumers as to the origin, properties, intended utility, quality, value, or other characteristics of goods or services."

- The character image and brand "Lucky Luke" have achieved widespread recognition and long-standing global reputation, including in Vietnam. The applicant's registration of the "LUCKY LUKE" mark for the related classes of goods and services will mislead the general public into believing that these goods and services originate from Morris Comics NV, or are manufactured, licensed, or commercially affiliated with the copyright owner. Consequently, the mark fails to meet the protection criteria under Clause 5, Article 73 of the IP Law and must be refused registration.

(iii) The applied-for mark is identical to the name and character image of a widely known work:

-To clarify the misleading acts stipulated under Clause 5, Article 73 of the Intellectual Property Law, Point 39.12.a (iv) of Circular No. 01/2007/TT-BKHCN (as amended and supplemented by Circular No. 16/2016/TT-BKHCN) explicitly guides: A sign shall be deemed confusingly similar regarding the origin of goods or services if it is "identical or similar to the name, character image, or distinctive icon of a widely known work, provided that the use of such sign is likely to mislead consumers into believing that the goods or services bearing the sign are manufactured or rendered by the owner of that work."

To establish the grounds for applying this regulation, the Opponent submitted objective documents and evidence to IP Vietnam. This evidence proves that the comic book series and its main character "Lucky Luke"—the cowboy known for "shooting faster than his shadow"—have achieved outstanding reputation and widespread public recognition in numerous countries, particularly in Vietnam:

- Traditional Publication History: As early as 1988–1989, the complete 80-volume "Lucky Luke" series was legally translated, published, and widely accessed by generations of Vietnamese readers.

- Subsequent Publication Volume: During the 2012–2015 period, the work was continuously reprinted with exceptional volume, reaching over 447,000 copies in circulation nationwide.

- Digital Platform Coverage: The work and its character image have been digitized and widely distributed across various digital platforms and specialized websites, recording an average monthly traffic of nearly 30 million active users.

The applicant's verbatim use of the "LUCKY LUKE" mark for identical or related classes of goods and services will inevitably mislead the general public into assuming an association, sponsorship, or endorsement by the legitimate copyright owner. This directly violates the prohibitive provision under Point 39.12.a (iv) of Circular No. 01/2007/TT-BKHCN.

On the basis of a comprehensive review of the arguments and evidence provided by the Opponent, IP Vietnam accepted the entirety of the aforementioned opposition.

On April 16, 2026, IP Vietnam issued a Notice of Substantive Examination Results and concurrently rendered a Decision to refuse the issuance of a protection certificate for Trademark Application No. 4-2020-08369 for the "LUCKY LUKE" mark./.