Tuesday, December 12, 2017

IPR in Vietnam, handle infringement, IPR protection in Vietnam

Well-known trademarks protection under Vietnamese Law

Definition

The "well-known trademark" term was initially stipulated under Vietnamese Law in February 01, 2001 in the amendment of Decree No. 63/CP dated 24.10.1996 of the Government providing detailed regulations on industrial property in order to guide the implementation of regulations on protection of IP rights in Chapter II, Part VI of the Civil Code (1995); "a well-known mark" is any mark which has become widely known by being continuously used for reputable goods or services".

Before this time, the term "well-known trademark" never ever been existed in the law yet. According to legal interpretation, industrial property rights for the well-known trademark generated on the basis of the decision to recognize of NOIP. The scope of protection of a well-known trademark is broader than that of ordinary trademark. As a general rule, trademarks are only protected against use or registration in respect of goods or services which are identical with or similar to those for which they are registered or used. This principle originated from the objective of trademark protection that is to prevent consumers from deception or confusion as to the origin of the goods or services. Therefore, if the goods or services are completely different, it will be highly unlikely that consumers will be confused about the source of another. However, with regard to well-known trademarks, as a result of long and extensive use, it can create and increase goodwill for the business owning the said trademark in respect to the goods or services. Once goodwill has been established, a positive image clearly remains in the memory of consumers, and the merchandise or services represented by that specific trademark, among any number of competitive options, are likely to be selected or desired again. This reputation brings a power of attraction, in other words, an advertising power, in the trademark itself, independent of the products they affix to. This value of well-known trademarks exposes them to unfair impairment and exploitation beyond the scope of their utilization for identical and similar products. The broader degree of protection is accepted to well-known marks on non-competing goods or services. However, at that time, due to lack of criteria for determination the reputation as well as lack of procedures in recognizing of well-known trademark, none of trademark had been recognized as well-known by National Office of Intellectual Property of Vietnam (NOIP) decision.

In 2005, with the stipulation of the Intellectual Property Law (IP Law), the term "well-known trademark" was defined again. According to Article 4.20 of IP Law, well known mark means a mark widely known by consumers throughout the territory of Vietnam". This term was defined on the basis of extent of geographic areas in which the trademark has been identified. Based on the wording of this term, in order to be recognized as well-known, trademark must be widely known by consumers throughout the country. This is a very difficult standard to overcome for trademark owners who want their trademarks to be acknowledged as well-known. This also seems go far from the requirement stated in Article 16(2) of TRIPs Agreement which requires "in determining whether a

trademark is well-known, members shall take account of the knowledge of the trademark in the relevant sector of the public". Is the mark to be well-known among the public at large or only to the trade circle in which the relevant goods or services circulate? The probable interpretation is that it must be shown that the target audience - the relevant trade circle or the relevant class of consumer for which the particular goods or services are destined - has knowledge of the mark. In other words, the specific sector of the public within which the particular goods or services are purchased or used, or where the mark is exposed through advertising, should become the focus of the actual question. The focus will very much depend on the type of goods or the nature of the services involved. The segment of clients for highly technical equipment such as component for airplanes may be appreciably more limited than the relevant sector of purchasers for daily goods such as soap or clothing.

Furthermore, the well-known trademark definition and the criteria for evaluation of whether or not a mark is well known listed in Article 75 are inconsistent. This problem will be discussed in detail later. In practice, this definition does not make any sense in assessment of well-knownese of trademark. Trademarks which satisfy the criteria set in Article 75 will be

considered as well-known regardless how much degree of recognition they have throughout the country. In otherwise, Vietnam is member of Paris Convention and World Trade Organization, hence, Vietnam is obligated to stipulate in domestic law the provisions which comply with the Paris Convention and the TRIPs Agreement. Vietnam expressly declares in Article 5.3 of IP Law that where the provisions of the international treaties to which Vietnam is a party contravene the provisions of Vietnam IP Law, the former shall prevail. In this circumstance, the requirement of being recognized throughout the territory of Vietnam can be got over by invoking the Article 16(2) or TRIPs Agreement.

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.

In reality, it is normal that a mark may have a high degree of recognition or use in one area but a lesser degree of recognition or use in a number of areas across the country. In other words, the mark may enjoy local or regional fame and well-known status but not be recognized throughout the whole country. That is the reason why TRIPs Agreement requires the recognition of relevant sectors of consumers is sufficient to be well known.


 

Prohibition of registration of a mark identical or similar to well- known/famous trademarks of others

In conformity with the international requirements with respect to well-

known trademark protection set by Paris Convention and TRIPs Agreement, the prohibition of registration of a mark which is in conflict with well-known trademark has been stipulated in IP Law.

According to Article 74(2)(i) of IP Law: "Distinctiveness of the mark:

2.A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

(i) Signs identical with or confusingly similar to another person's mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark."

This article contains two different parts.

The former part provides the same prohibition as that applies for registered ordinary trademark. That means a mark which is identical with or confusingly similar to another person's well-known mark which has been registered for identical or similar goods or identical or similar services affixed by well-known mark will be considered as non-distinctive, hence, will be refused from registration. The ambit of protection in this part is to prevent consumers from confusion over source of goods or services as traditional principle. For a well-known trademark under IP Law, trademark right shall be established on the basis of use process, not subject to any registration procedures, thus, the separately provision for well-known trademark was created differently from that used for registered trademark.

The latter part provides the protection beyond the ambit of confusion to the goods or services which are not identical with or similar to those covered by well-known trademark. As a general rule, trademark is only protected against use or registration in respect of goods or services which are identical or similar to those for which they are registered or used. This principle derived from the objective of protection of public against deception or confusion as to the source of goods or services. It is highly unlikely that consumers will be confused about the origin of products if the goods are completely different. However, with regard to well-known trademark, the issue is totally different. As a result of widely and continuously use as well as others factors such as quality of product or service, frequency advertising... the trademark becomes more familiar with the public. The reputation brings a power of attraction in the trademark itself, independent of the products or services they have been affixed. This value of well-known trademark leads them to be likely to be impaired or exploited beyond the use for identical or similar products or services in bad faith. This requires a broader degree of protection provided to well-known marks on non-competing goods or services, to which their commercial magnetism amounts to an exception to the principle of specialty.29 In reply to this demand, TRIPs Agreement has established a wider rule of special protection granted to well-known trademarks. The confusion is not required as long as the use of an identical or similar mark on a completely different goods or services would indicate a connection with the

owner of the well-known trademark and as long as the uniqueness of well-known trademark would be damaged.

The expansion of well-known trademark protection to dissimilar goods or dissimilar services under the latter part of Article 74(2)(i) of IP Law happens in two situations: the mark for which the registration is sought will be refused if:
  • It is identical with or confusingly similar to the well-known trademark used for dissimilar goods or services, and
  • The use of that mark may lessen the distinctiveness of the well known trademark or the mark registration was aimed at taking advantage of the reputation of the well known mark.

The contain of the latter part of Article 74(2)(i) with respect to the impairment of the uniqueness of well-known trademark is something resembling a dilution case in which the capacity of a famous mark to identify and distinguish goods or services is weaken regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake, or deception.

It should be noted that Article 16(3) of TRIPs is only applicable to registered well-known trademarks and thus excludes unregistered ones from the extended protection. However, trademark right granted to well-known trademark under IP Law can be automatically established based on its usage regardless it is registered or not, therefore, the latter part of Article 74(2)(i) can be acknowledged as fall under Article 16(3) of TRIPs Agreement.

Since it is very difficult to work in practice with the broad definition of confusing similarity, some rules have been developed which help to define in specific cases whether, in view of the similarity of the two marks, confusion is likely to arise.

In applying the Article 74(2)(i) of IP law, to determine whether or not a trademark is similar to a well-known trademark, the elements of each trademark such as its appearance, pronunciation, concept as well as commercial impression (impression for consumers in the course of trade) must be taken into consideration in a comprehensive manner to determine if there is an apprehension that the two could be confused by a customer. The criteria in judging the similarity resemble those applies for ordinary trademark. However, it is said in Trademark Guidelines31 which has been issued recently that in case of judging the similarity of a well-known trademark it should be noted that:

  • Well-known trademarks are often highly distinctive and have wide range of impression therefore the similarity between a sign and a well-known trademark must be taken in to account stricter than that of ordinary trademarks because it is more likely to cause confusion for consumers;
  • A sign similar to the well-known trademark may not be protected for both products /services which are not similar to those bearing the well-known mark.

All of the following situations are possible to cause confusion for consumers:

  • Identical signs used for identical goods/services
  • Identical signs used for similar goods/services
  • Similar signs used for identical goods/services
  • Similar signs used for similar goods/service

However, if the cited trademark is well-known trademark, it is liable to cause confusion even though the goods or services affixed to the mark in question are definitely different provided that consumers may think it comes from the same source or has relationship with those of well-known trademark.

For example:HONDA is recognized as well-known trademark for cars, motorbikes among consumers. When some ones other than its owner use this trademark for confectionery, the consumers may think the two kinds of products belong to the same owner or the two owners have close relationship.

In the Circular No.1 for guiding the Decree No.103, the sign which is subject of registration application shall be regarded as unregistrable if:

"39.10 Conclusion of the confusing similarity of the sign in the relation with the cited mark

(iv) The sign is identical with or similar to the cited mark being a well- known trademark and even though goods and services bearing that mark is neither identical nor similar to the well-known trademark, the use of that sign functioning as a trademark may mislead the consumers about the relationship between the goods and services bearing that sign and the well-known trademark owner which induces the actual likelihood of diluting the distinctiveness of the well-known trademark or being detrimental to the reputation of the well-known trademark".

In the light of the relevant statutory provisions, it may be concluded that the protection of well-known trademarks in Vietnam not only fulfills the obligations under Article 6bis of the Paris Convention and Article 16(2) and

16(3) of the TRIPS Agreement, but goes beyond their limited scope. In reality, the question is how to implement these advance provisions effectively.


 

The content of provision of act of unfair competition in IP Law can be regarded as additional mode to protect well-known trademark.

Article 130 reads as follows: "Acts of unfair competition:

1. The following acts shall be deemed to be acts of unfair competition:

a) Using commercial indications to cause confusion as to business entities, business activities or commercial origin of goods or services;

b) Using commercial indications to cause confusion as to the origin, production method, utilities, quality, quantity or other characteristics of goods or services; or as to the conditions for provision of goods or services;

c) Using marks protected in a country which is a contracting party to a treaty of which the Socialist Republic of Vietnam is a member and under which representatives or agents of owners of such marks are prohibited from using such marks, if users are representatives or agents of the mark owners and such use is neither consented to by the mark owners nor justified;

d) Registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected trade names or marks of others, or geographical indications without having the right to use, for the purpose of possessing such domain name, benefiting from or prejudicing the reputation and popularity of the respective mark, trade name or geographical indication.

2. Commercial indications stipulated in clause 1 of this article mean signs and information serving as guidelines to trading of goods or services including marks, trade names, business symbols, business slogans, geographical indications, designs of packages and/or labels of goods.

3. Acts of using commercial indications stipulated in clause 1 of this article include acts of affixing such commercial indications on goods, goods packages, means of service provision, business transaction documents or advertising means; and selling, advertising for sale, stocking for sale and importing goods affixed with such commercial indications."

This article protects all kind of trademarks including well-known trademark. Traditionally, the trademark provision uses "registration" as a procedural means of granting the trademark owner a fixed "monopoly right" to a trademark, and protecting his/her private interests. Unfair competition provision, in contrast, does not protect in the same way as does the trademark provision but rather, by directly prohibiting acts of unfair competition. This encompasses the protection of well known indications ("indications" includes trademarks), which are one of many targets of unfair competition.

In order to be recognized as an act of unfair competition, it is required that the use of commercial indications cause the confusion or the registration or possession of the right to use or the use of domain names are aimed to take unfair advantage or reputation and popularity of the respective trademark.

It should be noted that most of the cases listed in this article required confusion. This means it does not cover the typical case of dilution in which although there is no existence of confusion but the illegal use of suspected commercial indications would make the well-known trademark lose its capacity to signify a source.

The nature of the legal acts of unfair competition is any act contrary to the standards of honesty and a healthy trade relationship, causing damage mainly to business as competitors on relevant market. Therefore, in unfair competition cases, the key thing is to prove the competition between the parties. This is different from those applies under trademark provisions which requires the infringement of trademark right regardless the existence of competition.

Generally, unfair competition provision is invoked as "life-buoy" in case of unregistered trademarks which is infringed. However, under the IP Law, regarding well known trademark, industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures, thus, trademark provision is sufficient to protect well-known trademark.

In practice, up to now, it is very rare the case that the unfair competition provision is used to solve the infringement. Only in the case which the trademark owner failed to rely on the trademark provision to protect his/her right, the unfair competition would be invoked.


 

Industrial property right over well-known trademark is established on the basis of widely use without any registration procedures. Thus, the acts which are deemed as act of infringement of trademark right in general would be also regarded as infringe well-known trademark rights.

Where a well-known trademark is allegedly being infringed, the owners must submit the evidence to prove their ownership as well as to prove that their trademarks satisfy the conditions for being considered as well-known.

Act of infringement stipulated in Article 129 of IP Law regarding to well- known trademark reads as follows:

"1. The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

(d) Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners."

According to the above-mention paragraph, using a sign may cause act of infringement if
  • A sign is identical with or similar to well known mark or in the form of translations or transcriptions of well-known marks and
  • Such use is liable to create confusion of goods or services or misleading impressions as to the relationship between users of such sign and well-known trademark owners.

In order to determine whether a suspected sign is an infringing element of a well-known mark, it is required to compare such sign to the mark. The comparison between goods or services is not much important because the scope of protection of well-known trademark is not limited to identical or similar goods/services but extended to dissimilar one.

An infringing element can only be confirmed if the following two conditions are fully met:

  • The suspected sign is identical or confusingly similar to the trademark

Where a sign is regarded as identical to a protected mark if it has the same composition and method of presentation (including the colors); a sign is regarded as confusingly similar to a protected mark if it has several features identical or similar to those of the protected mark to such an extent that it is not easy to distinguish between them in terms of composition, the way of pronunciation, the way of phonetic transcription of signs, letters, meaning, the method of presentation and colors, thereby causing confusion to consumers in selecting goods or services bearing the mark;

  • Goods or services bearing the suspected sign that is identical or similar in substance to, have a relationship in terms of functions and utility with, and have the same distribution channel with, the protected goods or services or goods or services are not identical, similar or related to the goods or services bearing the well-known mark but are capable of misleading customers as to the origin of services or goods or create wrong impressions about the relationship between the producer or trader of such goods or services and the owner of the well-known mark.

The protection from infringement for well-known trademark is similar to those for ordinary trademark. That means it protect consumer from confusion. Moreover, well-known trademark right is extended to protect fairness trade environment. The acts other than that cause confusion also constitute infringement if it misinform about the source of goods or services or associate the well-known trademark owner and others who in fact have no relationship.

This article seems compatible with the requirements set forth by Article 6bis of Paris Convention and Article 16(2), (3) of Trips Agreement.

However, this article does not cover the dilution cases in which the consumers do not be confused about the source of goods or services or be misled about the relationship between suspected trademark owners and well-known trademark holders but the uniqueness of well-known trademark is weaken because while a consumer may not believe that Kodak bicycles are made by the same company that produces Kodak camera equipment, but the use of the Kodak trademark arguably decreases the ability of the Kodak mark to create a connection between it and the camera company for the consuming public.


In IP Law 2005, the criteria for determining well-known trademark were first stipulated in legal document. Although the protection of well-known trademark was admitted since 2001 on the basis of registration through the recognition decision of NOIP, but, in practice, none of well-known trademarks had been granted by this way. One of the main reasons of this situation is lack of statutory standards for recognizing well-known trademark. In reply the need to fulfill the requirements as the member of WTO, a lot of Vietnamese Law had been modified or established and IP Law 2005 is one of them.

These criteria were built on the basis reference to the WIPO Joint Recommendations concerning provisions on Protection of Well-known marks and experience of other countries in the world.

Article 75 of IP Law provides the following relevant factors to be considered in determining whether a mark is well-known:

"To be considered well-known as a well-known mark, the following criteria shall be taken into account:

  1. The number of involved consumers who have been aware of the mark through purchase or use of goods or services bearing the mark or through advertising;
  2. Territorial area in which goods or services bearing the mark are circulated;
  3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;
  4. Duration of continuous use of the mark;
  5. Wide reputation of goods or services bearing the mark;
  6. Number of countries protecting the mark;
  7. Number of countries recognizing the mark as a well-known mark;
  8. Assignment price, licensing price, or investment capital contribution value of the mark.

As stated before, there is a contrary direction between well-known trademark protection in Article 4(20) and the first criterion indicated in Article 75 related to the number of consumers involved in trademark. "Well-known trademark" was defined in Article 4(20) requires the reputation over consumers throughout the territory of Vietnam but this requirement does not appear in any items of Article 75. However, in practices, rarely has well-known trademark received the acknowledgement of consumers nation-wide. Therefore, the requirement set forth in Article 4(20) seems be ignored in determining well- known trademark. Moreover, the consumers in this manner is not strictly limited to end-consumers of goods or services to which the mark applies, but included the persons involved in channels of distribution of, or business circles for goods or services to which the mark applies. The expression "consumers" is to be understood in the wide sense of the term, and covers all part of the consuming public. The business circles are in general constituted by importers, wholesalers, licensees or franchisees interested and prepared to deal in the goods or services to which the mark applies. As stated in Article 16(3) of TRIPs Agreement, the words of this article can be read as it is sufficient that the mark is well known in at least one relevant sector of the public, and it is not permitted to require that the mark be well known by the public at large. This approach is considered to be fair, because goods or services are usually directed only to certain sectors of public, in accordance with their diversified tastes, interests, income, or creational activities, to name a few criteria. This means that only those who are interested in the goods may have reasons to know about the mark. And the cases in Vietnam are not an exception. In so many cases related to well-known trademark, the reputation within relevant sectors is sufficient to be proved the well-known-ness. With respect to the degree of recognition in the country of protection, as refer in list of criteria, the number of involved consumers is taken in consideration.

Apart from the criterion related to the number of consumers who is aware of well-known trademark, the territory where the trademark has been used is also considered. In line with the definition of well-known mark in IP Law, it raises the question whether well-known trademark that is widely recognized by consumers outside the territory of Vietnam that is not used in Vietnam is protected as well-known trademark. It is undoubted that none of factors stated in Article 75 expressly requires that the well-known mark must be used in Vietnam. It should be noted that one of many purposes of the protection of well-known trademark is to protect the public from confusion, thus actual use or non-use a well-known foreign trademark in country where it claims for protection of is not decisive. In some countries, it is indeed rational not to require use of a well known trademark in the country of protection, because nowadays physical locality is no longer considered one of the most important factors for establishing goodwill in a country, since consumers are more interested in the quality of the goods, symbolized by internationally well known or famous marks, rather than the actual presence of the goods or services themselves. Furthermore, consumers in many cases know about a trademark through spill-over advertisements in international publications or media, and thus local use is not determinative in establishing the knowledge of consumers with regard to the trademark.

In practices, more than one foreign trademark which has not yet been used or registered in Vietnam has been protected although this principle cannot be found in any statutory document. In 1992, NOIP denied the application for registration of trademark "McDonald's" of an Australian company for fast food, food providing services and other classes. At that time, NOIP had sufficient information to confirm "McDonald's" is famous trademark in the world for fast food and food supplier under McDonald's Corporation (United States) even though this company has not registered and used this mark in Vietnam and the act of Australian company in this situation deemed as taking unfair advantage of "McDonald's" reputation. It can be presumed that McDonald's fame reaches Vietnamese consumers through travelers, mass of media such as internet, newspaper... Thus the registration of Australian company for trademark would make consumers confuse about the origin of service or mislead about the relationship between the two companies. The application of Australian company was refused on the basis of well-known trademark protection. In 1993, "Pizza Hut" had been granted for OPHIX GROUP (Australia Company). After that, The Pizza Hut International Company lodged its invalidation, arguing the "Pizza Hut" mark be registered under its own name, as it had been in many other countries even though it had not been used in Vietnam. They also provided the evidence to prove trademark's reputation in the world. Based on trademark owner's materials, NOIP decided to invalidate the trademark registration granted to Australia Company.

Others criteria stipulated in Article 75 is similar to those of WIPO Joint Recommendations and others countries criteria. In general, all of these factors are interdependent, in fact, whether or not a trademark is well-known should be judged comprehensively on the case-by-case basis, which means that even if one of the factors is weak in a particular case; this can be compensated for by the strength of another of the factors.

Evidences

Because the industrial property right over well-known trademark is established based on the usage without registration procedure so in order to enjoy a protection as well-known trademark, trademark owners must show the evidence to demonstrate their ownership and trademark's celebrity.

Many types of evidence have been specified in provision 42(3) of Circular No.1/2007 TT BKHCN of February 14, 200737 evidencing the ownership and reputation of a mark as follows:

  • Materials on the scope, scale, level and continuity of the use of the mark, including an explanation of origin, history and time of continuous use of the mark;
  • Material showing the number of nations in which the mark has been registered or recognized as a well-known mark;
  • List of goods and services bearing the mark;
  • Materials showing the territorial area in which the mark is circulated;
  • Materials showing the turnover from products sold or services provided;
  • Materials showing the quantity of goods and services bearing the mark manufactured or sold;
  • Materials showing the property value of the mark such as price of assignment or licensing of the mark and value of investment capital contributed in the form of the mark;
  • Materials showing the amount of investment and expenses for advertising and marketing of the mark, including those for participation in national and international exhibitions;
  • Materials showing the success in infringements, disputes and decisions or rulings of the court or competent agencies;
  • Surveyed number of consumers knowing the mark through sale, purchase, use, advertisement and marketing;
  • Rating and evaluation of reputation of the mark by national or international organizations or the mass media;
  • Prizes and medals awarded on the mark;
  • Results of examinations held by intellectual property examination organizations...

Other than above-mentioned evidences, trademark owners are free to submit anything to support their demand in recognition of well-known trademark.


No specific article or provision related to the ways to obtain well-known trademark recognition can be found in any statutory document. According to Decree No.103/2006/ND-CP of September 22, 2006, it is stated the base and procedure for establishment of industrial property right as follows:

"2. Industrial property rights to well-known marks are established on the basis of widespread use of those marks according to the provisions of Article 75of the Law on Intellectual Property, not requiring the completion of registration procedures." and in provision 42(4) of Circular No.1/2007 TT BKHCN of February 14, 2007, two routes of acknowledgement of well-known-ness has been pointed:

"If a well-known mark is recognized according to civil procedures or under a recognition decision of the NOIP, that well-known mark shall be recorded in the list of well-known marks kept at the NOIP"

There seems a disagreement between the two above-mentioned provisions. The registration of well-known trademark is not necessary in one but the well-known-ness is recognized through NOIP's decision in other.

Whether a court or an administrative body has the power to recognize a well-known trademark for the purpose of enforcing the trademark rights? Whether the NOIP has the authority to recognize a well-known trademark for the purpose of ensuring its proper decision on granting or refusing a trademark registration? These questions are laid open in the IP Law. Up to now, there is no type of decision has been rendered by the NOIP or the court.

In practice, the recognition of well-known trademark has been made case- by-case indirectly. NOIP has issued a series of decision to refuse the registration of signs which are identical or confusingly similar to well-known trademark under Article 74(2)(i) of IP Law. In these cases, it deems that the well-known status of trademark has been indirectly admitted by the NOIP decision on related trademarks.

Nevertheless, in Decree No.105/2006/ND-CP of September 22, 2006, it is required that if the well-known trademark owners want to enforce their right in infringement cases, they should submit the evidence proving their trademarks' well-known-ness. The problem will happen if an enforcement authority is not capable of recognizing a trademark as well-known, in this case, they certainly needs to have an expert opinion with respect to the well-known status of trademark in question given by competent authority. The Decree No.105 does not specify which agency shall have the authority to issue that kind of decision, either at the request of the trademark owner or upon the requirement of the enforcement authority. The NOIP is no longer existent as an agency of industrial property right assessment for the purpose of enforcement. Instead, Vietnam Intellectual Property Research Institute (VIPRI) is appointed to function as the industrial property right assessment service providers at the request of the enforcement authorities and the parties to the industrial property right infringement cases. However, the Decree No.105 does not state clearly the legal validity of the conclusion on a well-known trademark made by VIPRI in respect of the trademark registration proceedings conducted at the National Office of Intellectual Property. This decision is not also stated in provision 42(4) of Circular No.1/2007 TT BKHCN. For that reason, the NOIP may accept or reject the binding effect of the conclusion of well-known trademark issued by VIPRI. Similarly, the enforcement authorities, including the administrative authorities and the courts, may use the conclusion of VIPRI as a source of evidence to identify whether the trademark in the case is admitted as well- known or not. However, VIPRI's decision is not a well-known trademark recognition decision.

In fact, the need of acknowledgement of well-known trademark takes part in all stages of trademark protection from establishing intellectual property right, examining the registrability of trademark to taking trademark enforcement actions therefore many competent authorities get in touch in this action such as intellectual property inspectorate, economic police, custom authority, market management authority... However, the capacity in judging the well-known-ness status of trademark is not sufficient among competence authorities. Apart from the NOIP, which is responsible for establishment of industrial property rights as well as cooperation with other competence authorizes to take measures to protect legitimate rights; other entities appear unready to be in the position of making a decision on recognition of well-known trademark due to the limitations of the professional expertise. This fact raises suspicions about the efficacy of well-known trademark protection. The question is that how the enforcement authorities can accept or refuse the evidence of a well-known trademark provided by the trademark owner.

Similarly, in which way the trademark owner may prove his rights derived from the assumed well-known trademark.


 

The list of well-known trademark was first mentioned in provision 42(4) of Circular No.1/2007 TT BKHCN of February 14, 2007 guiding the implementation of the Government's Decree No.103/2006/ND-CP of September

22, 2006, detailing and guiding the implementation of a number of articles of The Law on Intellectual Property regarding industrial property right.

"If a well-known mark is recognized according to civil procedures or under a recognition decision of the NOIP, that well-known mark shall be recorded in the list of well-known marks kept at the NOIP"

Although, the existence of well-known trademark list has been stipulated in above statutory document but up to now there is unavailable List of recognized well-known trademarks in the NOIP. One of reason is lack of necessary mechanism to compile this list. That is perceived as an inherent difficulty for the trademark examiners in the course of performance of their duties in examining the well-known trademark related application, for other related competence authorities in protection of well-known trademark and for trademark owners in evidencing their legitimate right in dispute. Thus, compiling well-known trademark list is vital step in the effort of protection well-known trademark.

Generally, countries do not make a list of their well-known trademarks which resolved in each case in the process of granting a trademark registration or trial in a court dispute. Some countries like Japan, China, Indonesia, France43 was established well-known trademark list, but this list is not an absolute materials to solve issues on whether a trademark is well-known or not, in common cases, it is used as a reference material for competence authorities or serve the purpose of trade or exchange information with other countries.

Other than official well-known trademark list which has not existed yet, there are some types of well-known trademark list accumulated by other agencies such as list of 33 famous trademarks in the year of 2008 published by Market research firm Nielsen coordinate with the U.S. Chamber of Commerce and Industry of Vietnam (VCCI), list of top 20 well-known trademarks in Vietnam published every year since 2006 by the cooperation of Vietnam Union of Science and Technology Association, Vietnam Chamber of Commerce and Industry, the NOIP... However, the presence in these lists is not deemed as this trademark is recognized as well-known in order to be protected under well-known trademark regime. These are only used as evidence of rating and evaluation of reputation of the mark by the mass media or social agency...

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