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The super-protection of a well-known trademark

Higher living standards and recent scandals over poor quality products have prompted changes in Vietnamese consumer habits. In the past, Vietnamese consumers would normally choose a product based solely on a cheap price, but more consumers are now willing to pay a higher price for a brand they trust. As a result, trademarks are becoming increasingly significant.

 
There is no doubt that trademarks play an important role in helping consumers distinguish one product from another. It follows that building a reputation in a trademark and securing proper protection should be given high priority by any business in today’s highly competitive market.
 
The Law on Intellectual Property defines a "well-known trademark" as a trademark that is widely known by consumers throughout the country. The definition can be interpreted that a trademark that is well-known in Viet Nam needs not be widely known on an international scale and vice versa. In other words, an internationally well-known trademark may not be considered well-known in Viet Nam if it has not acquired a sufficient reputation here.
 
Various factors are relevant to a determination of ‘well-known’ mark status, such as: (i) the number of consumers who are aware of the mark; (ii) the territories in which the mark is used; (iii) the turnover of goods or services in relation to which the mark is used; (iv) the duration of continuous use of the mark; (v) the reputation of goods or services bearing the mark; (vi) the number of countries in which the mark is protected and recognised as a well-known mark; and (vii) the value of the mark, based on the value paid for a licence or assignment.
 
Unlike ordinary trademarks which must be registered in Viet Nam to receive adequate protection, well-known trademarks are protected on the basis of use and are not subject to any registration procedures. A well-known trademark is protected as long as it is well-known to Vietnamese consumers.
 
Once protected, a well-known trademark enjoys greater protection than an ordinary trademark. Unlike an ordinary one, it is not restricted to a fixed registration period or to protection in relation only to goods or services in relation to which it has been registered.
 
Although Viet Nam had some general provisions under its old IP regulations allowing a trademark owner to apply to the National Office of Intellectual Property (NOIP) for well-known mark status, no detailed guidance was provided on the required evidence and no mark was ever recognised under these regulations.
 
 
This has been rectified in Viet Nam’s new Law on Intellectual Property, pursuant to which well-known trademark recognition can be obtained through recognition by a court. Any trademark which is recognised as well-known will be added to a list of well-known trademarks in a database maintained by the NOIP. However, as far as we are aware, no marks have yet been recognised as well-known, and there is no guidance as to the form of the NOIP database.
 
Inclusion on this list will constitute prima facie evidence of well-known status. In addition, the court’s decision itself can be relied on in subsequent infringement cases.
 
Besides recognition through a court action, a trademark owner may obtain "confirmation" of well-known status from authorised agencies in opposition/cancellation proceedings. Unlike recognition, this is just an informal confirmation given on a case-by-case basis. It does not serve as a precedent or constitute prima facie evidence that the mark is well-known. However, it may be given some more weight by courts and enforcement authorities in subsequent infringement proceedings.
 
by Chris Vale and Han Le of Rouse Legal (HCM City Branch)
Source: VNS