Monday, January 22, 2018

IPR in Vietnam, handle infringement, IPR protection in Vietnam

Famous trademarks, well-known trademarks, widely-known trademarks, trademarks with good reputations?

With respect to the trademarks which have reputations, there is a variety of terms referring to this kind of trademark, including famous trademarks, well- known trademarks, widely-known trademarks, trademarks with good reputations, etc.

There appears to be considerable confusion between well-known trademarks and famous trademarks. Courts and legal scholars alike sometimes use the terms interchangeably. A well-known trademark is sometimes called a famous trademark. However, differences exist between the two notions, and it appears that the standard for  achieving famous trademark status  is  higher  than  that required for well-known trademark status.

Generally speaking, a distinction between "well-known" and "famous" or between "well-known trademarks" and "famous trademarks" is not very clear in any of the international conventions or  treaties,  national  trademark laws  or related laws, or even in papers authored by leading commentators and practitioners.

In the position of the United States, with respect to this point, a statement made in an article by Mr. Frederic Mostert, the former President of International Trademark Association (INTA), as follows:

"The ordinary dictionary meaning of "well-known" according to Merriam Webster is, among others, "widely known" and "known to many".  In the context of trademark law, therefore, a well-known mark can be characterized as a mark which is known to a substantial segment of the relevant public in the sense of being associated with the particular goods or services.

It   has   often   been   suggested   that   a   special   category   of well-known marks, i.e., "famous" marks be recognized. Famous marks are considered to have a higher degree of reputation than well-known marks and therefore deserve a broader scope of protection against unauthorized use on non-competing goods or services."

A famous trademark must be used for some goods or services which have been continuously and internationally distributed and marketed throughout the world, causing  them  to  become  globally  identified  in  connection  with  a specific source or quality of goods or services.

In  the  position  of  the  EU,  the  Community Trade  Mark  Regulation also includes certain provision concerning well known trademarks and trademarks with reputation as follows:

A well-known trademark in the sense of Art.6bis of the Paris Convention is a trademark which as a consequence of its extensive use in the market and its advertising has been widely diffused without losing its distinctive character and is well-known by the consumers of those goods or services for which the trademark is protected. (CTMR Art.8(2) (c))

A trademark with a reputation, on the other hand, refers to a trademark which as a result of its extensive use in the market is not only recognized by consumers in its specific sector, but has a general reputation in the Community. These trademarks benefit from a protection even beyond the similarity of the goods and services, in the case where the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier mark. (CTMR, Art. 8 (5)).

In the position of Vietnam, the two terms "well-known trademarks" and "widely-known trademarks"  are  clearly  differently  defined  in  Intellectual Property Law. Well-known trademark is a mark widely known throughout territory of Vietnam.  It is protected without registration requirements. Well- known trademark rights are automatically established through usage. The definition for widely-known trademark cannot be found in Intellectual Property Law.  However,  one  of  the  thirteen  signs  which  shall  be  deemed  to  be indistinctive listed in the law is a sign identical with or confusingly similar to another person's mark, which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date. Therefore, it should be deduced that a widely-known trademark is a mark widely used and recognized among consumers. In comparison with  the  two  above-mentioned terms, well-known trademark is reserved a higher protection than that of widely- known trademark. Widely-known trademarks are protected from other parties' registration, but trademark rights are only obtained through its own registration.

Login Form