“Mark means any sign used to distinguish goods or services of different organizations or individuals” – according to Clause 16 Article 4, Intellectual Property Law 2005 (IP Law) of Vietnam (as amended and supplemented 2009). The trademark thereby comprises two functions, which are referred to as the distinguishing function and the function of indicating the source.
The trademark may be presented in the form of words, devices or a combination thereof in one or several colors. These elements give the guidance that will allow consumers to consider the differences in quality, price and other characteristics between the various goods on the market.
Types of trademarks
There are actually several different types of trademark protection which were admitted in Vietnam available to business. The rules for each of these types vary slightly, but generally adhere to a few basic principles.
Based on the signs are using for trademark, we have three types of trademarks:
- Word marks: A word mark is a text-based mark consist of one or more words; and can also be a combination of numbers or letters (meaning or unmeaning; may be a name or creative-letter…) or sets of words, whether invented or not, and slogans, e.g. NIKE, Google, Coca Cola.
- Figurative marks/logos: Figurative marks are trademarks which consist of a figure, images (it can be an original computer printout), symbol, particular shape of goods or their packaging (three-dimensional trademarks).
I.e. the three-dimension signs such as the three-pointed Mercedes star or the original Coca-Cola glass bottle can serve as a trademark.
- Combinations of any of those listed above, including logotypes and labels. These marks can be presented in black and white or in a certain color.
Based on the features and functions of mark, Vietnam’s IP Laws have the following types of trademarks:
- Trademarks: Trademark is any a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.
- Service marks: A service mark is the same as trademark, except that it identifies and distinguishes the source of a service rather than a product.
For example, Google brand certain products with a trademark, but use a service mark on the internet searching service that it provides.
- Collective marks: “Collective mark is a mark used to distinguish goods or services of members from those of non-members of an organization which is the owner of such mark.” – Article 4.18, IP Law of Vietnam.
In example, “Thai Nguyen Tea” trademark is a collective mark of the Thai Nguyen Province’s Farmer Association and be granted in 2007 in Vietnam.
- Certification marks: Certification mark may only be used in accordance with the defined standards. The main difference between collective marks and certification marks is that the former may be used only by particular enterprises, while the latter may be used by anybody who complies with the defined standards.
For example, “HANG VIET NAM CHAT LUONG CAO DO NGUOI TIEU DUNG BINH CHON” (Vietnamese high-quality products were voted by consumers, image) mark, which was registered by Saigon Marketing Newspaper in 2007.
- Integrated marks: Integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar typed or interrelated. I.e. Pepsi Co. registered integrated marks: PEPSI, PEPSI MAX, PEPSI ICE, PEPSI LIGHT, PEPSI TWIST, etc.
Especially, subject to Article 4.20 of IP Law, Vietnamese law authorizes the well-known trademarks as marks that are “widely known by consumers throughout the territory of Vietnam”.
In some States, the well-known trademarks are divided in two levels: (i) a well-known mark is a widely known mark in the country territory; and (ii) a famous mark is a widely known mark in the global market. The top-ten global famous marks as follows in 2015 (listed by Interbrand): Apple, Google, Coca-Cola, Microsoft, IBM, TOYOTA, SAMSUNG, GE, McDonald’s, amazon. In Vietnam, the well-known marks as “Trung Nguyen” (on goods and coffee trading services) or “Vietnam Airlines” (on air transport services) are widely known in the territory.
Different from the normal trademark, the rights to a well-known mark are derived from use, not registration. Furthermore, this use does not need to occur in Vietnam. Well-known marks are granted extended protection: it is considered an infringement to exploit a well-known trademark for all goods or services; and it can be cited to refuse or cancel trademarks even if this trademark register for goods or services that are not identical or similar to the goods or services covered by the well-known mark.
Be noted that, there is no formal procedure in Vietnam for recognizing the fame of a mark. So, the competent state authority can ex officio recognizes the well-known status of mark during examination, opposition, or cancellation proceedings.
( March 2, 2017 )