Even though these marks surely helped in distinguishing goods, it is difficult to say that these marks were trademarks with distinctiveness in the modern sense of the word.4 On the other
Concept of trademark and trade name protection
Definition of trademarks and trade names
A trademark for commercial goods is essential for identifying and distinguishing products from different sources The practice of trading goods dates back centuries, leading to the evolution of trademarks, which originally included craftsmen's names or unique symbols to mark their creations While these early identifiers aided in distinguishing goods, they may not have met the modern standards of distinctiveness Today, trademarks play a crucial role in social life by individualizing commodities and helping consumers differentiate between similar products and services, while also providing valuable information about these offerings.
The TRIPs Agreement marked the first introduction of intellectual property rules into the multilateral trading system, providing a comprehensive definition of trademarks It states that any sign or combination of signs that can distinguish the goods or services of one entity from another can qualify as a trademark This includes words, personal names, letters, numerals, figurative elements, color combinations, and any combination of these signs, all of which are eligible for trademark registration.
Thereafter, there are varieties of trademark definition in different countries
In the United State of America, under the modern definition of the term ―trademark‖, both the common law and federal law follow the definition set forth in Lanham Act: 7
“… any word, name, symbol or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those
4 Read more ―The History and Development of Trademark Law‖ in http://www.iip.or.jp/e/e_publication/ono/ch2.pdf (Last visited on 10 May 2014)
5 Ho Chi Minh City University of Law (2012), “Textbook of Intellectual Property Law”, Hong Duc publisher, p.244
7 J Thomas MCCarthny (1992), ―McCarthny on Trademarks and Unfair Competition”, Third edition, Volume 1, Published by Clark Boardman Callaghan, § 3-§ 3.01[1]
A trademark is commonly understood as any word or symbol that identifies goods or services Specifically, symbols that identify services are referred to as service marks According to the federal Lanham Act, a service mark is defined as a mark used in the sale or advertising of services to distinguish one person's services from those of others.
In the EU, according to Article 1 of the Council Regulation No 40/94 of 20 December
The Community trade mark, established in 1993 under Council Regulation No 40/94, is defined as a mark for goods and services that is registered in accordance with specific regulations It may consist of any signs that can be graphically represented, including words (such as personal names), designs, letters, numerals, and the shape of goods or their packaging, as long as these signs can distinguish the goods or services of one entity from those of others.
In Vietnam, trademarks were initially regulated by Decree 197/HĐBT, which defined them as "signs that can be accepted as words, pictures, drawings, embossing, or a combination of these factors, expressed in one or various colors." The concept was later included in sub-laws and officially established in the Civil Code of 1995, which serves as the primary legal framework for protecting intellectual property rights, including trademarks While Decree 197/HĐBT, Circular 1134/SC, and the Civil Code of 1995 were instrumental in creating the legal foundation for IP protection, there are limitations regarding the scope of protection that necessitate new regulations to align with current circumstances.
On November 29, 2005, the enactment of IP law represented a significant advancement in the protection of intellectual property rights According to Article 4.16 of the IP law, a trademark is defined as any sign utilized to differentiate the goods or services of various entities.
10 Article 4 of the Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
Law No 13/57, enacted on August 1, 1957, in Southern Vietnam, defines "production mark" as related to products in the agricultural sector, while "brand" pertains to trade goods For further details, visit: http://luatminhkhue.vn/nhan-hieu/mot-so-van-de-ve-dinh-gia-nhan-hieu-.aspx (last accessed on May 10, 2014).
12 Decree 197/HĐBT date 14 th December 1982 and be guided by Circular 1134/SC dated 17 th October 1991
14 Nguyen Thi Huong (2012), Bachelor‘s thesis, “Trademark dispute settlement under Vietnamese law- Situation and resolution”, p.10
15 Ngo Thanh Hai (2013), Bachelar‘s thesis, “Trademark dispute settlement in Vietnamese law and referring to the European Union law”, p.8
7 organizations and individuals”; in particular, according to Article 72 of Vietnamese IP law, a mark shall be eligible for protection if it meets the 2 following conditions:
(i) To be a visible sign in the form of letters, words, pictures, figures, including three dimensional figures or a combination thereof, represented in one or more colors and;
(ii) To be capable of distinguishing goods or services of the mark owner from those of others
The definition of a trademark in Vietnamese IP law 2005 is more progressive and comprehensive than the stipulation in the Civil Code of 1995, as it emphasizes the distinctive function of trademarks and provides general protections for both goods and services, rather than being limited to trademarks for goods only.
The history of the legal protection of trademarks has been less well charted than most areas of intellectual property, and the early developments are particularly obscure 16
Trademarks play a crucial role in aiding consumer decision-making and encouraging companies to deliver high-quality products They not only simplify the purchasing process for consumers but also motivate firms to maintain desirable attributes in their offerings, even when these qualities are not immediately visible prior to purchase.
The history of trademark law dates back to the 19th century when Europe and the United States first enacted laws to protect against fraud Notably, the first trademark protection is attributed to the BASS beer label featuring an orange equilateral triangle in 1777 France introduced the "Manufacture and Goods Mark Act" in 1857, while Germany followed with the Trademark Protection Law on November 30, 1874 The United Kingdom passed the "Trade Mark Registration Act" in 1875, and the United States established its trademark law on March 3, 1881.
Numerous conventions have been established to regulate intellectual property (IP) values and manage trademarks effectively Notable examples include the Paris Convention for the Protection of Industrial Property, established in 1883, and the Madrid System for the International Registration of Marks.
16 Lionel Bently and Brad Sherman (2004), ―Intellectual Property Law”, Second Edition, Oxfords University, p.695
17 Paul Goldstein (1993), “Copyright, Patent, Trademark ans Related state doctrines, Cases and materials on the law of Intellectual property”, revised third edition, Standford University, p.16
18 Nguyen Xuan Quang, Le Net, Nguyen Ho Bich Hang, “Vietnamese Civil law textbook”, Ho Chi Minh
19 See more in World Intellectual Property Organization (2013), ―Summaries of Conventions, Treaties and
The Nice Agreement (1957) outlines the international classification of goods and services for trademark registration, while the Vienna Agreement establishes a classification system for the figurative elements of marks.
In 1973, various conventions primarily addressed the regulation of formalities related to the establishment of intellectual property rights However, it was not until the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), negotiated during the Uruguay Round from 1986 to 1994, that comprehensive intellectual property rules, including a normative definition of trademarks, were integrated into the multilateral trading system for the first time.
Trademark law grants exclusive rights to use distinctive marks that differentiate the goods or services of one provider from those of others A trademark can be a word, a combination of words, or any device that identifies and distinguishes products or services This includes elements such as design, color, patents, scents, packaging, and even nonfunctional designs.
Trademarks are essential for legal protection in commerce, as they establish important business rules and assist consumers in making informed purchasing decisions Their crucial functions significantly contribute to market order and consumer confidence.
Conditions and scope of trademark and trade name protection
1.1.2.1 Conditions and scope of trademark protection
Trademark protection of intellectual property (IP) rights is a legal framework established by the state to safeguard the rights of IP owners, including copyright, related rights, industrial property rights, and plant variety rights This protection is enforced through IP legislation, which outlines the conditions for protection, the establishment of trademark rights, the rights of trademark proprietors, and the limitations on those rights.
According to Article 15.1 of the TRIPs Agreement, a trademark is defined as "any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings." This definition emphasizes both the origin and distinction functions of trademarks To qualify as a trademark, a sign must fulfill the requirement of distinctiveness, which is essential for denoting the commercial source of goods or services and differentiating them from competitors A lack of distinctiveness often arises when a sign is deemed generic, highlighting the importance of uniqueness in trademark protection.
44 International Association for the Protection of Intellectual Property (AIPPI) (26th Congress of Tokyo, April 11
- 16, 1966), Yearbook 1966/II a, 69th Year, pp 45 - 46
45 Available at: http://eur-lex.europa.eu/legal- content/EN/TXT/?qid01085932646&uriEX:C2007/269/21 (Retrieved on May-26-2014)
46 Available at: http://eur-lex.europa.eu/legal-content/EN/TXT/?qid01085932646&uriEX:62012CJ0409 (Retrieved on 26 May2014)
47 Available at: http://eur-lex.europa.eu/legal- content/EN/TXT/?qid01085932646&uriEX:62008TA0534
48 Judicial Science Monograph, No.698-2009/CSB/02-2037/TP SPC, p.10
The term "chair" categorizes a type of furniture, while "drinks" refers specifically to alcoholic beverages A lack of distinctiveness may arise from the descriptive nature of the sign in question.
A diverse range of signs can qualify for trademark protection, as long as they can distinguish the goods or services of businesses in the market However, these signs must also meet additional criteria, including adherence to moral standards and public order.
Practically all national trademark laws provide for the protection of visually perceptible signs, in particular the following types:
- pictorial devices, such as logotypes, paintings, figures, drawings;
Many national trademark systems protect three-dimensional signs, including product packaging and shapes, as trademarks Additionally, emerging trademark types like color marks, multimedia marks, sound marks, and olfactory marks are likely to develop in response to innovative marketing strategies and evolving consumer perceptions.
Article 16 of the TRIPs Agreement defines the scope of protection, to allow the holder to oppose the use without its consent in the course of trade of an identical or similar sign on identical or similar goods or services, where such use would result in a likelihood of confusion The use of an identical sign on identical goods or services raises a presumption of likelihood of confusion
Article 16 defines the scope of trademark protection, granting Members significant flexibility in determining the level of protection offered The fundamental requirement prohibits the use of a "similar" sign on "similar" goods, which can be interpreted either strictly—demanding near-identicality—or liberally, allowing for broader categorization Consequently, variations in interpretation can arise across different legal systems and even among courts within the same system.
49 Tina Hart, Linda Fazzani & Simon Clark, ―Intellectual Property Law”, 4th edition (Palgrave Macmillan,
50 World Intellectual Property Organization (2006), ―Document prepared by the Secretariat, Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications”, Sixteenth Session, Geneva,
Article 16 of the TRIPs Agreement introduces additional flexibilities and complements the Paris Convention rules regarding "well-known" marks It specifically narrows the scope of individuals who must recognize a trademark or service mark as well-known to qualify for protection.
Trademark law in Europe includes both EU legislation and the national laws of its 27 Member States regarding mark protection In the UK, trademark law has its roots in the early concept of passing off, where courts historically prevented one trader from using another's mark even before a formal trademark registration system was established.
The Community Trademark Regulation (CTMR), established in December 1993 and codified as Regulation No 207/2009 in 2009, facilitates the registration of Community trademarks that provide protection across the entire EU These trademarks are managed by the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain The CTMR operates alongside national trademark laws, which were significantly harmonized in 1988 through the First Directive aimed at aligning the trademark laws of Member States.
(Trademarks Directive) (in 2008 codified as Directive 2008/95/EC) With the three Benelux countries having established a common trademark system in 1970, there are
The European Union features 25 distinct national trademark regimes The German Trademark Act of 1994 not only implements the Directive but also serves as a comprehensive law that protects all distinctive signs.
In Europe, the requirements for trademark registration are largely consistent across Member States and the Community trademark system Trademark protection extends to various signs that can distinguish one business's goods or services from another's, including traditional marks like words and logos, as well as shapes, colors, and even sounds For a sign to qualify for trademark protection, it must be graphically representable, with case law emphasizing that this representation should be clear, precise, self-contained, easily accessible, intelligible, durable, and objective.
51 Report on United Nations Conference on Trade and Development, ―Dispute Settlement under WTO,‖ New York and Geneva, 2003, p.15
52 David I Bainbrigde (1999), ―Case & Materials in Intelectual property law”, Second edition, Financial Time Pitman Publishing, p.312
Registration is not permitted for marks lacking distinctive character, those that are descriptive of the goods or services' nature, quality, or geographical origin, or generic terms The assessment of these conditions relies on public perception regarding the mark and the associated goods or services However, a mark may gain protection if it has acquired distinctiveness through use, known as "secondary meaning." For Community trademarks, this distinctiveness must be demonstrated in the specific parts of the European Union where the initial obstacle existed Additionally, marks that are deceptive, violate public order or morality, or conflict with earlier protected geographical indications or appellations of origin are excluded from protection Earlier rights include registered trademarks, trademarks established through use, trade names, trade dress, and any other rights that may conflict with a trademark, such as rights in names, images, design rights, or copyrights.
The Community trademark system operates on the principle of unitary character, meaning that any absolute grounds for refusal or invalidation in one part of the European Union affect the entire Community trademark Earlier rights, whether Union-wide or specific to a Member State, can also lead to refusal In national systems, Community trademarks are considered earlier rights, but obstacles must be relevant to the specific Member State Consequently, a mark deemed descriptive may be unregistrable as a Community trademark or in a particular Member State, yet it could still be eligible for registration in other Member States with different languages.
Under provision of Article 72: General requirements for marks eligible for protection
A mark shall be eligible for protection if it meets simultaneously two following conditions:
In Vietnam, intellectual property law protects visible signs such as letters, words, images, and three-dimensional figures presented in various colors However, invisible signs, including smells and sounds, are not eligible for protection under this legal framework.
Basis of appearance and mechanism of establishing to protect the
Each type of IP rights has the specific basic of appearance and mechanism of establishing to protect the rights
1.1.3.1 Basis of appearance and mechanism of establishing to protect the trademark rights
Trademark protection can be established through either use or registration, with modern systems typically integrating both methods According to Article 6.1 of the Paris Convention, each member country is responsible for defining the conditions for trademark filing and registration based on its own laws The Convention mandates that contracting nations maintain a trademark register, and over 150 countries have committed to its principles.
Most countries now maintain a trademark register, and comprehensive trademark protection is achieved through registration However, usage remains significant, especially in jurisdictions where trademark rights are primarily established through use In such cases, registering a trademark serves to affirm the rights gained through prior use, granting priority to the first user in trademark disputes rather than the first registrant.
62 World Intellectual Property Organization (2004), supra note 60, p.77
The European Union's Directive 2008/95/EC emphasizes that registered trademarks must provide absolute protection when there is an identity between the mark and the sign, as well as the goods or services This protection also extends to cases of similarity, necessitating a clear interpretation of "similarity" in relation to the likelihood of confusion Factors influencing this likelihood include market recognition of the trademark, potential associations with the sign, and the degree of similarity between the trademark and the sign, as well as the goods or services involved The determination of likelihood of confusion and the burden of proof are to be governed by national procedural rules, unaffected by the Directive.
As provided in Article 10 of Directive 2008/95/EC of the European Union Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trademarks:
1 If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use
The use of a trademark includes variations that do not change its distinctive character from the registered form.
(b) affixing of the trade mark to goods or to the packaging thereof in the Member State concerned solely for export purposes
2 Use of the trade mark with the consent of the proprietor or by any person who has authority to use a collective mark or a guarantee or certification mark shall be deemed to constitute use by the proprietor
3 In relation to trade marks registered before the date of entry into force in the Member State concerned of the provisions necessary to comply with Directive 89/104/EEC:
If a provision in effect before the specified date imposed penalties for not using a trademark continuously, the five-year period referenced in the first subparagraph of paragraph 1 will be considered to have started concurrently with any ongoing period of non-use as of that date.
In cases where no use provision was in effect before the specified date, the five-year periods referenced in the first subparagraph of paragraph 1 will be considered to commence from that date at the earliest.
A Community trademark is exclusively obtained through registration, yet all Member States are required to protect well-known marks even without use In contrast, countries such as Germany offer protection based on commercial use, granting rights when a mark is recognized by a significant portion of the relevant public, known as "Verkehrsgeltung." This is in line with Sec 4 of the German Trademark Act.
―Trade mark protection shall accrue
1 by registration of a sign as a trade mark in the Register kept at the Patent Office;
2 through the use of a sign in the course of trade insofar as the sign has acquired a secondary meaning as a trade mark within the affected trade circles; or,
3 by notoriety as a trade mark within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention).‖
As provided in Art 6.3(a) Vietnamese IP law:
Industrial property rights in Vietnam are established through the competent State authority's decision to grant a Protection Title, following the registration procedures outlined in the law or through international treaties For well-known marks, ownership rights are recognized based on use, independent of registration.
Mechanism of establishing to protect trademark right:
Overall, mechanism of establishing to protect trademark right is made through trademark registration
Trademark registration applications must be submitted to the appropriate government authority, typically the same entity that handles patent applications This authority is commonly referred to as the "Industrial Property Office."
"Patent and Trademark Office" or "Trademark Office."
Countries typically require a mandatory application form for trademark registration, which must include the applicant's name and address Foreign applicants must provide a local address for service or appoint an agent with a power of attorney Additional formalities may be required According to Article 3 of the Trademark Law Treaty (TLT), Trademark Offices can request specific information for registration but cannot impose unnecessary formalities like authentication or legalization The TLT also offers Model International Forms that must be accepted by the Offices of Contracting Parties, and the trademark sign must be included in the application or as an annex.
To register a sign in color, it is essential to claim the colors and submit either a color specimen or a description of the colors For three-dimensional signs, protection must be explicitly claimed in that form Additionally, prior rights holders should be able to notice the trademark application, typically facilitated by its publication in a trademark journal.
The applicant must specify the goods for which the trademark is being registered Trademark laws typically classify goods for registration purposes, with some countries requiring separate applications for each class, while others allow a single application to cover multiple classes.
The Nice Agreement is a crucial treaty for international trade, as it provides a standardized classification of goods and services for trademark registration This agreement facilitates the registration process across different countries, promoting consistency in trademark laws The back flap of this publication includes a list of the Contracting States involved in this treaty.