Law on the protection of trademarks – the actual situations and recommendations

Therefore, the protection of industrial property rights on the trademark has always been a pressing issue, to be a priority concern, not only in Vietnam but also in almost any other coun

TRƯỜNG ĐẠI HỌC KINH TẾ TP.HCM

NGUYỄN LÊ THÀNH MINH

LAW ON THE PROTECTION OF TRADEMARKS

– THE ACTUAL SITUATIONS AND

RECOMMENDATIONS MASTER OF ECONOMIC LAW

Major code: 60 38 01 07

Instructor: Dr Lê Văn Hưng

HO CHI MINH CITY, 2016

My name is Nguyen Le Thanh Minh, student code No: 60380107 I’m a

student of Master Class of Economic Law - Course 24, Faculty of Economic Law, University of Economics Ho Chi Minh City and also the author of this master thesis entitled “Law on the Protection of Trademark – the Actual Situation and Remedy” (herein referred to as the “Thesis”)

I hereby declare that all contents of this Thesis is the result of my independent research under the instruction of Dr Le Văn Hung There are some references

of opinions and points of view of some authors in this Thesis All of these references and information sources are cited specifically, accurately and can be verified All of the data, information used in this Thesis is completely objective and honest

Trademark is a term in the field of Intellectual Property, which is a valuable asset of any Business and it should be protected and developed as any other normal assets However, nowadays in Vietnam, there are many infringement activities to the protected trademark for the purpose of profiteering These activities are still going on and the number of these incidents is increasing day by day Therefore, protection of trademarks, as well as mechanisms to protect the trademark becomes more and more important, and it shall become an effective tool which can help many enterprises to protect themselves in the harsh competitive environment of market economy

Many researches show that the infringement activities regarding the trademark are currently increasing, mainly due to a combination of both subjective and objective reasons, which limit the effectiveness of law enforcement on the trademark in reality

Acknowledging this situation, the authors conducted a study, researched on each situation, the specific cause of corresponding, thereby making recommendations in order to contribute to the change of the effectiveness of law enforcement, somehow improved the current status of infringement activities regarding trademark

Contents

Abbreviations 6

INTRODUCTION 1

1 Reasons to choose the topic 1

2.1 Actual statement of the researching topic 2

2.2 The researching questions 3

3 Purpose, subjects and scope of studying 3

3.1 Purpose of studying 3

3.2 Subjects of studying 4

3.3 Scope of studying 4

4 Methods of studying 4

5 Scientific significance and value of the Thesis 4

6 Structure of the Thesis 5

CHAPTER 1: THEORETICAL BACKGROUND OF TRADEMARK PROTECTION – COMPARING WITH REGULATION OF SEVERAL OTHER COUNTRIES 6

1.1 Formation and developing history of trademark 6

1.2 Current law on trademarks and protection of trademarks 10

1.2.1 Definitions and features of trademarks 10

1.2.1.1 Definitions of trademarks 10

1.2.1.2 Features of trademarks 13

1.2.2 Classification of trademarks 16

1.2.3 Definition on protection and enforcement of trademarks 20

1.3 Role of trademarks and trademark protection 22

1.4 Compare with regulations of several countries in the world on enforcement of trademarks 25 1.4.1 Regulations on enforcement of trademarks in the world 25

1.4.2 The mechanism on enforcement of trademarks in Vietnam 29

CHAPTER 2 ACTUAL SITUATIONS OF LAW ENFORCEMENT ON TRADEMARK PROTECTION IN VIETNAM 34

2.1 Toward the system of competent State bodies that hold the responsibility of enforcing law on trademark protection 36

2.2 Toward the determination acts of infringement of rights to trademarks 39

2.3 Enforcement of trademarks in Vietnam through some specific cases 42

2.3.1 Some specific cases on acts of infringements of rights to trademarks 42

Chi Minh city 42

2.3.1.2 The case under Verdict No 1388/2012 / MLM-ST dated 13.09.2012 of People's Court of Ho Chi Minh city 44

2.3.2 Overall comments on the actual states of implementation and enforcement of trademarks in Vietnam 50

2.3.2.1 The archievements gaining 52

2.3.2.2 The shortcomings in implementation of the enforcement of trademarks in Vietnam 53 2.3.2.3 Subjective causes 54

2.3.2.4 Objective causes 60

CHAPTER 3 RECOMMENDATIONS TO THE ACTUAL SITUATIONS STATED 62

3.1 Recommendations to improve IP law and other relating legal documents 62

3.1.1 Widen the definition of trademark 62

3.1.2 Limit the conflicts of protection 62

3.1.3 Specifically regulate about the apply of criteria for evaluation of whether or not a trademark is well known 64

3.1.4 Improving the criteria of evaluation the seriousness of breaches in IP rights to trademark 66

3.2 Recommendations on organzing to enforce law on trademark protecting 67

3.2.1 About the procedure of registration for trademark protection 67

3.2.2 Regarding the mechanism of dealing with breaches 67

3.2.3 Regarding the states of cybersquatting 69

3.2.4 Regarding of mechanism of cooperative between the competent State bodies 70

3.3 Other recommendations 70

3.3.1 Improving the cognition of the enterprises manager, and of community 70

3.3.2 Apply the principle ot determination of effectiveness between earnings and the levels of penalties to deal with violations, in order to build amounts of fine 71

REFERENCES 72

Intellectual property – IP

World Trade Organization – WTO

Agreement on Trade-Related Aspects of Intellectual Property Rights – TRIPS Agreement

World Intellectual Property Organization – WIPO

Trans-Pacific Partnership Agreement - TPP

INTRODUCTION

1 Reasons to choose the topic

In modern time, the world, society in which human communities are living together tend to increasingly move towards, closer together Countries, different regions of the world always try to jointly strive together more closely In that context, after the period of actively negotiations with efforts, Vietnam officially became the 150th member of the World Trade Organisation (WTO), bringing many new opportunities, along with challenges for all traders and enterprises in Vietnam In a dynamic market economy, we have to get ourself to find a competitive advantage in order to stay in the game In the race of this trade matter, intellectual property (IP) is

an area bearing no less important role in the economy, as this is a very effective tool

to promote, push development, contributions to the prosperity of each country

According to history, although each object in the field of IP carries a certain role, but considering in relationships of trading in goods, both national and international, of Vietnam in the recent time, the category of trademarks (trademarks) take a more prominent position for the development of each enterprise This concept

is closely binded to the process of goods circulation, and is one of the intellectual property assets with tremendous value, or can be considered as a major source of the business capital, in the period of extremely fierce, harsh competition from other competitors

Trademark is a mean in which is recognized, protected and demonstrated the fruits of development, creating credibility, reputation, competitive advantage and other positive aspects of the business Moreover, the trademark also plays a very important part in protecting the interests of consumers and social order in general

In this context, the violations related to trademarks are increasingly popular in number, with large scale and increasingly sophisticated, more complex, causing extremely serious consequences and negatives to all of the owners of the trademarks,

to consumers and to society Therefore, the protection of industrial property rights on the trademark has always been a pressing issue, to be a priority concern, not only in Vietnam but also in almost any other countries in the world In the field of the protection of the law and the enforcement of law, which is currently still a new law, the work of applying the mechanism to implement and protect the trademark somewhat is effective yet completely It can be seen that to the current situations, regarding the increasing of trademarks infringements, they certainly stems from many causes and various bases Through this context, the author chose the topic " law on the protection of trademarks – the actual situations and recommendations", with the desire

to study on the status of trademark laws, the underlying causes behind it, which will make the initial knowledge basis, from which the Thesis can then give out recommendations and corresponding to such situations, and to conquer, to understand the knowledge about legal protection of trademarks, as well as improve and enhance the effectiveness and efficiency of implementation these mechanisms further, in the

scope of domestic and international point

2.1 Actual statement of the researching topic

IP rights in general, as well as the protecting of the trademarks in particular is still a new field to exploit, which has been researching recently and relatively complicated toward the practical activities, as well as in theory in Vietnam Legal thinking on this issue has only been approached by the lawmakers of our country for around 10 years, a relatively short period of time compared to the history of formation and development of IP rights and laws on protection of IP rights in general Regardless, it is such a new land as stated, but IP rights are increasingly more concerned with time, the number of scientific projects, seminars, articles, research papers on IPR and trademarks in particular are growing in number and quality

The study of trademarks is already mentioned in a number of scientific works, thesises and articles from scientific journals Some works, articles published about this issue include "Some issues about well known trademark" by Nguyen Nhu Quynh

(Journal of Law, No 2/2001), "Protection of trademark in Vietnam "by Master Le Hoai Duong (Journal of the people's Court, No 10/2003), the scientific research projects such as" Some problems in the theory and practice of the protection of trademarks, service trademarks in the world and Improving methods of Vietnamese law on the protection of trademarks, service trademarks, "Dr Nguyen Thi Que Anh, master thesis, "Comparison law on trademark protection in Vietnam to international treaties and laws in some industrialized countries "by Vu Thi Phuong Lan; "Protection

of trademarks under the law of Vietnam" by Tran Nguyet Minh; "Some issues of the protection of industrial property rights to the trademark in Vietnam under the provisions of civil law" by Vu Thi Hai Yen; etc Though it is an independent subject and not overlapping with such subjects, the author always willing to inherit, study the theoretical content of such scientific works, thesis, dissertations, and articles in scientific journals, and the archievements, lessons drawn from the reality that is corresponding to the topic

2.2 The researching questions

While researching and studying for this topic, the author concluded and thus introduces here some basic researching issues through these respective researching questions:

 What are the actual situations in respect with the mechanism of trademark protection and trademark enforcment recently?

 Causes that led to the violations of laws on protecting rights to trademarks

 What are the recommendations in order to improve and change the actual situations of breaches of laws on trademarks in Vietnam

3 Purpose, subjects and scope of studying

3.1 Purpose of studying

The study was made in order to provide the information about the current situations of violations of trademark law, the analysis of the causes that led to the

rising of such violations From the results obtained, the Thesis will proceed to make specific recommendations to improve the effectiveness of enforcement mechanisms to protect trademarks

3.2 Subjects of studying

Subjects of studying that the Thesis is intended to study are acts of infringement of law in reality, the implementation of the enterprises on self-protection, the implementation enforcement of trademark protection mechanisms, measures to deal with violations by the relevant authorities

3.3 Scope of studying

With limited understanding, in the context of the subject which is very wide and complex, with many issues to be resolved, the Thesis focuses mainly on the researching of trademark infringement situations in reality in Vietnam, the trademark infringement cases which have been occurring in provinces, cities across the country

The thesis limits the scope of its researching in the trademark protection mechanisms, so the approach of the article is focused towards the trademark infringement and protection mechanisms, how to deal with trademark violations

4 Methods of studying

The thesis applies the knowledge learned on the basis of the methodology of Marxism - Leninism, the opinions on legal Government, innovation policies on international integration of the Communism Party, as well as knowledge in the legal documents of the Republic of socialist Vietnam

The Thesis uses some methods such as analytical methods, comparision and aggregating of information collected in reality, historical research methods, as well as comparision to some other legal systems around the world to understand the position

of the IP legal system in Vietnam

5 Scientific significance and value of the Thesis

This topic’s studying, first of all, is to equip knowledge for the author’s own, with the desire of contributing a small fraction of the knowledge to the world’s legal

knowledge, with the aim to further improve law on trademark in general, and in particular in IP field If possible, the thesis may contribute in helping to study somewhat for merchants, enterprises in Vietnam in the competitive economy market

of today, in order to limit the risk, protect trademark from being violated, as well as trademark protection mechanisms in accordance with the current laws

6 Structure of the Thesis

The Thesis consists of: The Opening session, Referrences and the main 3 Chapters:

CHAPTER 1 THEORETICAL BACKGROUND OF TRADEMARK PROTECTION – COMPARING WITH REGULATION OF SEVERAL OTHER COUNTRIES

CHAPTER 2 ACTUAL SITUATIONS OF LAW ENFORCEMENT ON TRADEMARK PROTECTION IN VIETNAM

CHAPTER 3 RECOMMENDATIONS TO THE ACTUAL SITUATIONS STATED

CHAPTER 1: THEORETICAL BACKGROUND OF TRADEMARK

PROTECTION – COMPARING WITH REGULATION OF SEVERAL

OTHER COUNTRIES

1.1 Formation and developing history of trademark

1.1.1 From the prehistory to the middle Ages

Trademarks’ very first appearance and introduction were from a really long time ago along the history phase of Intellectual property Protecting intellectual property’s rights in general, as well as protecting trademarks in specific, came into life and developed since then, for around 600 years until now

In fact, the ancestors of trademarks had already appeared in the early Stone Age when social life was still far from convenience, let alone the fact that those first human clans still focused mostly on improving farming and raising cattles, domestic fowls At the time, the farmers, especially the ones from the far lands of the West, in order to distinguish their own cattle herds, realized that they can use those hot iron bars, which were burned to an extremely high temperature, to carve several signs, letters, numbers onto the skin of the cows, pigs… in the herd In Madagascar, the farmers cut the ears of their cattles, instead, to make a sign of their own herds And if

we travel back in time, to around 3000 years ago from today, the craftmen, from all over of India, China…, while creating their own products, with their own specific characteristics of features, designs, had named and carved their trademarks directly onto the surface of the products before putting them into circulating in the market or exporting However, those first kinds of trademark were not really that popular in general, and also did not have the great influence onto the merchants, the craftsmen, due to the fact that the economic factor was not highly appreciated

1.1.2 The period of the Renaissance

In the late years of XIX century, the definition of trademark was, for the first time, introduced and generalized into the legal system of the United Kingdom of Great Britain, along with the court system which held the responsibility of settling cases on trademark – relating disputes here Since then, intellectual property rights, as well as the issue of trademark protecting in specific, were popularly and broadly put into the legal system of many countries, as well as into international treaties in all over the world

The industrial revolution began initially in the United Kingdom of Great Britain, perhaps around the middle of XVIII century, and after some time, thereby witnessed the astonishing developing of the category of modern trademark The exigencies of putting this definition into practice was due to the results of huge changes inside the producting and distributing progress at that time For the reason that there was such great improvements of the large – scale production, mainly from big factories, along with the market that the goods was circulated into, it led to the demand for a renovation of the definition of trademark, which is always be considered

as a symbol of prestige and reputation of the manufacturers Thereafter, many popular trademarks made their appearances around the late of XIX and the early of XX century For instance, the “Sunlight” trademark of W.H Lever, properly was the first trademark to apply modern marketing techniques, particularly with respect to daily comsuming products, and was built around the middle of XIX century Other popular trademarks also made their debut to the public at this time were “Singer” (1851),

“Vaseline” (1878), “Coca Cola” (1886), “Kodak” (1888), and “Kellogg’s” (1915)

1.1.3 Modern time

In 1891, the Madrid Agreement was ratified in Spanish Until the date of 18/01/2002, the Agreement had attracted up to 52 countries to gather for contracting Regulations of the Agreement in the recent time help to bring chances for the establishing of a mechanism, in which national and international registration for a trademark is allowed, and besides, every member countries of the Agreement shall all

have the duty of recognizing this registration The Agreement does not set up a mechanism of unique protection on trademark in all of the member countries, but only simplifies the registrating process for trademark protection simultaneously in different countries, giving the advantages for the registrants to be able to register for the protection of their trademarks in different countries, while do not require them to directly register at every of those countries This is a huge progress for the registrants, since as a result, registration fees are reduced significantly with respect to the registrants, the registration procedures are simplified more than ever

Vietnam participated in and contracted this Agreement since the date of 11/07/2006 In general, this Agreement actually brings many advantages, not only for the registrants, who are the owner of their trademarks, but also for the State administrative body for trademark protection registration and the registrars of the countries, and the intellectual property representatives

Generally, in the recent time, many countries in the world tend to work on simplifying the registration procedures for trademark protection

1.1.4 Summarized history on legal protection of trademark in Vietnam

In 08/03/1949, the Democratic Republic of Vietnam entered two important international Agreement in regards to trademark protection, which are the Paris Convention in 1883 and the Madrid Agreement in 1891 with regards to the trademark international registration, thereafter two of which was inherited by the Government of Socialist republic of Vietnam in 1976 It was also in the following year that Vietnam officially became a new member of World Intellectual Property Organization (WIPO), marking a new improving turning point with respect to the legal system of Intellectual property in our country

The first legal document in regards to the field of industrial property rights is the Decree No 197/HĐBT dated 14/12/1982, on trademarks Before 1982, our country’s law had already started to have regulations on the Intellectual property issue, which specifically was Decree No.175-TTg on the registration of trademarks In

the meantime, in the Southern area of Vietnam, some subject matters in regards to industrial property rights, including trademarks, was protected according to Law No.13/57 dated 01/08/1957 and Law No.14/59 dated 11/09/1959 on preventing fake goods manufacture

The law on Intellectual property here in Vietnam had just actually met its dramatically developing turning point since the late period of year 1986 – the one year marking a new renovation process in our country Many legal document in regards to this field of law was promulgated, such as Regulation on industrial designs, dated 13/05/1988; Ordinance on foreign technology assignment into Vietnam, dated 5/12/1988; Decree No.49/HĐBT, dated 04/03/1991 on guiding the implementation of provisions of the Ordinance on foreign technology assignment into Vietnam; Ordinance on Industrial property protection, dated 11/02/1989; Decree 84/HĐBT dated 20/03/1990 on guiding the implementation of provisions of the Ordinance on Industrial property protection… Those legal documents had partly governed Intellectual property protection, then again were still containing many limitations and shortcomings, which led to the fact that their provisions still hadn’t yet met the requirements of the protection mechanism in such time of market economy1

Vietnam officially participated in the World Trade Organization (WTO) on the

11th of January, 2007 to become the 150th member of this community Lots of analysis were made, mostly in order to clarify the great disadvantages following this event, but

on the other hand, in reality, it can obviously be seen that many significant advantages are also brought up and help to progress the strong developing of our country’s economy

Toward the facing challenges ahead of the road, it should be more strictly complied with the international provisions and commitments on Intellectual property rights’ protection generally, as well as trademarks protection in specific Those

provisions are indispensable, as when Vietnam participated in the massive international trading playground of WTO, which helps to secure the global and regional commercial outlets, while on the other hand, push the domestic mechanism

of trademark protection to be more and more completed, get to improve considerably the quality and the effectiveness of trademarks owning from all of the corporations and the domestic, let alone foreign investors

Up to the present time in Vietnam, legal issues as stated with respect to trademark protection have still been a brand new field, and inasmuch as the recent context whose tendency is all about integration and globalization, following with foreign investors who bring along with them into Vietnam many globally popular trademarks, surely the economic value of Intellectual property rights on trademarks is being raised from time to time and taken for granted of their value, importance toward the development and survival of every corporation As can be seen, the legal system

of Vietnam on the field of Intellectual property in general, as well as the protection of trademarks in specific, was always been updated, changed and developed with efforts; this can be seen through the fact of promulgating lots of legal documents and new provisions in order to be fit with the reality of social relationships on trademarks Notwithstanding, in fact, the status quo of law violations, breaching intellectual property rights on the protection of trademarks is always exist, in view of both domestic and international field Thereafter, in Chapter II of this essay, it shall be more clarified these issues, as well as bring a more complete view of proposals, solutions for it afterwards

1.2 Current law on trademarks and protection of trademarks

1.2.1 Definitions and features of trademarks

1.2.1.1 Definitions of trademarks

The very first pioneering definitions of trademark introduced by the legal system of Vietnam is stipulated in Regulation on goods’ trademark, which promulgated together with Decree No 197/HĐBT dated 14 /12/1982 of the Council

of Ministers, whereby Clause 1 of Article 3 states: “goods’ trademark protected by law are any signs granted as, could be words, images, drawings, dints… or the combination of those factors, demonstrated by one or more combined colors.” To begin with, as can be seen through analyzing this first trademark definition, the signs that could be used as a goods’ trademark at this time were very limited and narrow, comparing to the recent’s definition of trademark Those signs were consisted of just words, images or the combinations of words and images This limitation continued to

be remained in the definition trademark by Article 785 of the Civil Code 1995, which regulated: “Trademarks are signs used to distinguish between the goods, service of the same type of different manufacturing factories Trademarks can be words, images or the combination of those factors, demonstrated by one or more colors.”

Thereafter, in 2001, a trading Agreement of Vietnam – United States is contracted This trading Agreement is bilateral, between Vietnam and another country, thenceforth was the first Agreement ever to recognize and regulate Intellectual property rights in a seperated Chapter (Chapter II), together with 18 Articles, in which Article 6 mentioned specifically about kinds of goods’ trademark Clause 1 of Article 6 in this Agreement stated the definition of trademarks as:

“Trademark is consisted of any signs or any combination of signs that can be used to distinguish one’s goods or service from another’s goods or service, including words, human names, images, numbers, combinations of colors, image – relating factors, or shapes of goods or shapes of goods’ package Trademark is divided as service trademark, collective trademark and certification trademark All in all, it can be seen that the Trading Agreement of Vietnam – the United States, while bringing up the trademark definition, had basically emphasized more on the distinguishable characteristic of these signs and widened the range of provision, comparing to the Civil Code 1995, as these trademarks were when divided into different types as mentioned, such as service trademark, collective trademark and certification trademark

In a wider point of view, Clause 1 of Article 15 in TRIPS Agreement (Agreement on Trade – Related aspects of Intellectual Property rights) states that:

“any signs or combination of signs that can be used to distinguish one corporation’s goods or service from another’s goods or service, can all be used to make trademarks for the products Those signs, especially the words, including names, letters, numbers, demonstrating images and combinations of colors, as well as any combinations of those signs, must have the capability to be registered as a goods’ trademark” In respect to the World Intellectual Property Organization (WIPO), there states its definition that “a goods’ trademark is any signs that can be used to distinguish one corporation’s goods or service from other competitive opponents2

At the time of the National Assembly Legislature X, Session 10, in the 29th of November 2005, Law on IP, year 2005 was promulgated by the National Assembly, and that is the first time Vietnam’s legal system had ever had a specific law on IP According to Clause 16, Article 4 of Law on IP 2005 (amended in 2009, henceforth called IP Law), trademark is considered “any sign used to distinguish goods or services of different organizations or individuals” This definition is not regulated specific signs of trademarks, as stated before in the Code of Law 1995, while being more generalized and embraced on feature The range of trademark in the IP law is also wider than its precedent laws

Although there are similarities to share in the definition of trademark in Vietnamese IP Law, in comparison with the mentioned definitions of those international Agreements and WIPO’s definition, but it should be noted that the definition’s ranges between them are not the same Therefore, this article will mainly analyze and clarify the definition, as well as the condition for protection of trademarks

in accordance with the provisions of Vietnamese IP Law

According to IP Law, trademark is considered as a type of intellectual property

of every corporation, recognized and protected by the government in accordance with

2

Cẩm nang Sở hữu trí tuệ - Tổ chức sở hữu trí tuệ thế giới

the provisions of Vietnamese laws However, the registration for trademark protection

is not compulsory, but only encouraged toward the owners of trademarks, since the ones to do so shall receive the protection of the government, if such right is claimed,

in order to ensure their legally benefits on the market Trademarks are usually demonstrated on goods package, directly onto the products so that the consumers shall easily recognize such products on the market

1.2.1.2 Features of trademarks

IP Law has the mentioned regulation that trademarks are any signs used to distinguish goods or services of different organizations or individuals Thus, following this definition, it can be seen that there are 2 basic features of trademark in accordance with Vietnamese law, which are:

Visual signs: According to the recent provisions of law3, signs registered as trademarks must be “visual signs” Therefore, the first condition, as well as the first feature of trademarks, in order to be protected, must be visual signs, which can be demonstrated through different types of means, such as letters, words, drawings, images, and even 3D images, or the combinations of these factors, shown in one or more colors

Thus, as shown above, visual signs can be seen nowadays everywhere, on every products of coporations, such as the bitten apple signs of Apple trademarks, or the word Samsung on every products of Samsung company, which will be mentioned

in detail later

This first condition of protection for trademark can be used as an important factor to help us distinguish the definitions of “trademark” and “brand”, two of which are usually confused by corporations due to the lack of legal knowledge, and sometime even mistaken as those are just one The first and the obvious difference can

3

Clause 1 Article 72 IP Law, Point a, part 39.2, part 5 Chapter 1 Circular 01/2007/TT-BKHCN dated 14/02/2007 of Minister of the Ministry of Science and Technology, amended by Circular No 13/2010/TT-BKHCN dated 30/7/2010, Circular No 18/2011/TT-BKHCN dated 22/07/2011, Circular No 05/2013/TT-BKHCN dated 20/02/2013 in guiding implementing regulations of Decree No 103/2006/NĐ-CP dated 22/09/2006 of the Government

be seen from a legal view, as in Vietnam, there have not yet been any single definition

of “brand” putting into the legal system in general and the system of IP law in specific On the other hand, trademarks, as can be seen, are regulated by the IP law, as

in Clause 16 Article 4 of IP law Thus, only trademarks can be considered as a subject matter to be protected by Vietnamese IP law Brand, nonetheless, is a subject that is recognized by the consumers, built by corporations, and is the expectations of the customers of a corporation’s products This can be kind of special in comparison with the legal system of other areas, such as the Great Britain or the United States, as brands are also protected in such countries’ law; the owners of registered trademarks can then have the ability of sueing anyone illegally damaging their brand, through the Courts system

The second feature used to distinguish the two mentioned definitions above, is actually the visual signs feature of trademarks Generally, trademarks are words, images…etc or combinations of those factors, shown in different colors Meanwhile, brand can be seen more like the status or the icon of a corporation’s goods or services

by the view and thought of a customer, which demands a longshot of efforts and improvements to build up to, and recognized by the consumers For instance, in view

of the Honda brand, customers usually think of stabilization, simple appearances but luxurious, while for Toyota, it is often thought of its convenience, power saving, suitable for family or company transporting

In conclusion, brand is a way of understanding and consideration of a specific corporation and its goods, icon and reputation, usually by the society of Vietnamese customers, and is not legally regulated in any official legal documents It is an abstract subject that shows the value, quality, reputation…etc of the products of a corporation, while trademark, on the other hand, is a specifically subject matter which can be felt and visuable by customers’ senses, and is officially stipulated by legal documents, especially the IP law

As mentioned above, range of signs to be protected by law in Vietnam is more narrow, in comparision with provisions of TRIPS Agreement, or in other point of view, provisions of Regulation of Trademarks in the Community of Europe and Law

on Trademark in the United States (the Lanham law) – areas of well known traditions

of law on IP In TRIPS Agreement, Directive 89/104/EEC3 of the Community of Europe 1988, Regulation 40/94 of the Community of Europe 19934, and in Lanham law, it is all stated that “any signs” that can be used to distinguish goods or services, can be registered as trademarks through the competent State bodies The regulation of

“any signs” as such, widens the range and makes the definition of trademark to become flexible 5 Therefore, the mentioned provisions, which are wider in comparision with the one in Vietnamese IP law, not only have the visual signs, but also “untraditional signs” such as sound, smell, taste…etc for protection

Distinctiveness of trademarks:

The second feature for a sign to be considered as a trademark, is the distinctiveness of trademarks This is one essential condition for any trademarks to be protected by law, but not every entities follows the rule In fact, many companies, looking for immediate huge profit goals, are often willing to design their trademarks

in ways of most similar to other popular, high reputation trademarks on the market, so

as to bring confusions and mistaken decisions to customers, hence the companies’ profit gains Those behaviours are the ones of the kinds of law violating behaviour on trademark, which will be analyzed further in Chapter 3 of this essay

It can be seen that, distinctiveness is always a basic feature of trademark, that conversely if any signs cannot fulfill this feature, they obviously cannot be registered

as trademarks The condition of distinctiveness is always regulated in IP law, as well

4

Article 2 of Directive 89/104 and Article 4 of Regulation 40/944 of EC stipulates that: “a community trademark shall consist of any signs demonstrating clearly and specifically, especially words, including names, images, letters, numbers, appearances of goods or goods package, provided that such signs are distinctive from different goods or services

5

David Kitchin (2005), Kerly’s Law of Trade Trademarks and Trade Names, Nxb Sweet & Maxwell, p.13

as many laws on IP of many countries in the world In Great Britain, the Court here demand a trademark to have the ability of “distinguish goods and service of different entities, while in the US, “the first condition to be considered by the Court in order to determine whether a trademark can be protected or not, is the trademark itself carries

or not signs that help distinguish it from other goods, service 6 In Vietnamese IP Law, this matter is regulated in Clause 1 Article 74, in which “A trademark shall be deemed

to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of this article”

1.2.2 Classification of trademarks

Just as with any other intellectual properties, the classification of trademarks has important meanings, not only on theory views, but also in practical side To begin with, the classification of trademarks can affect the determination of specific provisions in order to apply to each specific type of trademarks, thus help the clear distinction of trademarks from other subjects of industrial property, such as industrial designs, trade names, geographical indications…etc In other point, the classification

of trademarks has the goal of clarify the specific features of types of trademarks in practice, help affect to the thinking of customers on the trademarks, the features while using it, and especially to the process of registration of that trademark It should be noticed that different type of trademarks may demand different processes of registration for protection of trademarks In fact, trademarks are often classified in different system of IP law in different countries in the world

To classify trademarks, we can base on many different factors and basis If

based on the signs to be protection, we can divide trademarks into different

categories, such as words, letter signs, number, images…etc Signs of words, letters require the ability of pronouncing, with or without possible meanings

6

Sheldon W.Halpern, Craig Allen Nard và Kenneth L Port (2010), Fundamentals of United States Intellectual Property Law: Copyright, Patent, Trademark (tái bản lần thứ ba), Nxb Kluwer Law International, p 329

The classification based on this factor help us to determine the range that signs can be protected by the legal system and assess the openness of regulations of trademarks This helps reflex the wide or narrow range of the protection of trademarks that is regulated by countries in their laws In another point of view, this also reflexes the improving level of the economy in those countries For instance, in Vietnam, IP law has yet to recognize trademarks of sound, taste, smells, in other words untraditional trademarks, while in country like the US, countries of the European Community, those trademarks are legally recognized and equally protected as with other common trademarks of images, letters…etc

Image 1 Trademarks of words

The above trademarks are considered trademarks of words, which are combinations of letters, words, that can be pronounced, with or without meaning Furthermore, there are many popular trademarks of words nowsaday, such as Samsung, Sony, Nokia, Lennovo, ASUS…

There are trademarks of images in the category as well According to the name

of this kind of trademark, we can easily know that those are signs comprising of images, drawings, combinations of different colors, structures in order to make an attractive trademark to the customers through sight sense

Belows are examples of recent popular trademarks of images

Image 2 Trademarks of images from Apple, Ecko United và Nike

The last type of trademarks on this category is combined trademarks, which means the combination of both the words and images trademark from above, putting all together in one trademark This can be considered the most popular type of the three nowsaday, thanks to its multi-functions and high attraction to customers through hearing sense (the pronounces of words, letters in the trademarks) and sight sense (the combined images)

Image 3 Combined trademarks from Honda, BMW and BHD

After all, one issue should be noticed after studying those sign – based of trademarks, is that whether or not any signs used by corporations can be recognized as

a legally trademark Regulating this issue, IP law put into practice the provision of signs that shall not be protected by this law, as well as the government of Vietnam, as trademarks, specifically in Article 73:

“The following signs shall be ineligible for protection as trademarks:

1 Signs identical with or confusingly similar to national flags or national emblems

2 Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations

3 Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam

or foreign countries

4 Signs identical with or confusingly similar to certification seals, check seals

or warranty seals of international organizations which require that their signs must not

be used, unless such seals are registered as certification trademarks by such organizations

5 Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services

Moreover, based on features of trademarks, they can be classified as the following

order:

- Collective trademark (Clause 17 Article 4 IP law) means a trademark used to distinguish goods or services of members of an organization which is the owner

of such trademark from trademarks of non-members of such organization

- Certification trademark (Clause 18 Article 4 IP law) means a trademark which

is authorized by its owner to be used by another organization or individual on the latter's goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such trademark For instance: ISO standard 2000, Trademark of Vietnam’s high quality products, certification trademark of DAS and UKAS

- Integrated trademarks (Clause 19 Article 4 IP law) means identical or similar trademarks registered by the same entity and intended for use on products or services which are of the same, similar or interrelated type This is a brand new definition in IP law, which is only mentioned in the law of Vietnam The IP Agreement does not recognized this kind of trademark, and many countries, especially the US, share this fact

- Well known trademark: According to Article 6bis(1) of the Paris Convention,it

is allowed for the member countries of the Convention to refuse or deny the registration, forbid the use of trademark which is the copycat, translating or having the probability of causing confusion to trademarks of the country registered by the State bodies or the trademark using country, considered as a well know trademark in that country of the entity who is given by the Convention the advantage of using that trademark on the same or similar goods This protection can be enforced even without registration Following this regulation, Vietnamese IP law also stipulates this definition of trademark,

in which Well known trademark means a trademark widely known by consumers throughout the territory of Vietnam (Clause 20 Article 4 IP law) The method of determining well known trademarks is regulated in Article 75 IP law, on the criteria for evaluation of whether or not a trademark is well known

1.2.3 Definition on protection and enforcement of trademarks

Protection of trademarks is an IP right, a recognizing of law toward the

function of trademarks Protection of trademarks requires the subject to sastify

specific conditions, as stated in Article 72 IP law, in the feature of trademarks session,

2 It is capable of distinguishing goods or services of the trademark owner from those of other subjects

As mentioned in the earlier sessions, while they can be protected in several areas and countries in the world, “untraditional trademarks” are not protected in Vietnam

On the enforcement of trademarks: the establishing of IP right to a trademark

is to enforce the rights of that owner of trademark One company would have to get through a long progress of reality in order to build up a great image of an iconic trademark among the view of customers Nevertheless, following the sufficient condition, the enforcement of right to a trademark shall help the owner of that trademark to improve it firmly In fact, this progress may meet several obstacles, as many other business entities shall want to violate the owner’s right to his registered protection of trademark At such times, the registration of trademark protection does not completely make the trademark owner invulnerable from the violations of trademarks, but shall be a firm legal basis to, based on that, the the owner can take measures permitted by law to protect their trademarks Depend on the characteristic and the level of the violating behaviour, the owner can decide to whether defend by themselves 7or be entitled to request the State bodies for protection rights 8

On the relation between protection of trademarks and enforcement of trademarks: It shall be understood that the enforcement of trademarks is the

combination of behaviours that the trademark owner shall do in order to ensure the value of their trademark and fight against the violation of trademark, which already included the protection of trademark in it In fact, since trademark is a special property, the trademark owner cannot really “own” their trademark In terms of nature, the most important thing in the IP right to a trademark is the exclusive usage and exploiting the subject Hence, enforcing IP rights to a trademark also means to

7 Article 198 of IP Law

8

Article 202 of IP Law

ensure the rights to exploit and use the trademark of the owner who holds his legal right, so that when exploiting and using it, the owner shall not meet any obstacles from a third entity In other words, the characteristic of the enforcement of sufficient conditions for the trademark owner to perform their rights is preventing the behaviours of violating the usage, exploiting of trademarks of the owner from the third party

Protection of trademarks and enforcement of trademarks are, although two differents processes, share a close binding between them However, these are still two different contents from the two definitions Protection of trademark is the method that the Government, by the permitted law, establish the IP right to trademarks, determine the trademarks violating behaviours and regulate measures for dealing with such behaviours Protection and enforcement of trademark is some legal performances on trademarks, through forcing the entities to comply and follow to the law, whether they want to or not Talking about protection and enforcement of trademarks is also to mention about the processes, procedures that the entities shall have to follow, as well

as the dealing methods, the punishments provided by the State bodies applying when there are violations

In a nutshell, enforcement of IP right to trademarks is, by means of law, the Government determines the behaviours considered violating the IP right of trademark and regulate the dealing methods for such behaviours, in order to protect the legal rights and benefits of individuals, legal entities or ther entities in the field of Industrial property

1.3 Role of trademarks and trademark protection

In the recent time, when the market economy takes the decisive roles in Vietnam, trademark is a definition which should not be ignored by companies in the developing period of their goods and service In some manners, trademark is a tool that helps the the customers to simplify and quickly take decisions of whether to purchase a specific products or not, clarify the origins, the reputation of such products

or services, or to put it differently, it is the reputation and prestige of the manufacturers that help the customers to determine which is the entity holding the responsibility for those products’ quality In general, a trademark with prestige and stability shall be a priceless property among all of the common properties of the company, which helps them a lot in attracting consumers and keep their loyalty to the company’s products We can hereby divide the role of trademarks and trademark protection toward the owning companies and the consumers

i Toward the companies

In reality, in the recent period, considering on the economic point of view, trademark is seen as an icon of the economy, since it is what a company shall have to build up and complete with efforts in a specific period, in order to create some advantages for its own, or even some unique features, recognization for the company

in the increasing commercial playground which does not stop getting more and more competitive from time to time, especially after Vietnam became the 150th member of WTO in 2007 Besides, in order to develop and build up trademarks to be popular and valuable, the companies should, not only focus mainly on their products, but also build up a whole large – scale system of stragety, including marketing, advertising, organizing the distributing net…etc

A trademark with decisive role as analyzed above shall carry a high value in itself, hence have the owner of it create a huge profit at hand Therefore, to get the full understanding of their trademark’s importance, companies might want to evaluate their trademark on the market This could help customers to avoid confusions of products’ infos on the recent market full of competition, since they always want to catch up with the value of trademarks instantly and timely, and furthermore, help the protecting the stability of the trademarks of companies from harsh, no mercy challengings of other competitive companies, or in other words, companies with similar products or interrelated types on the market

We can take a look at the following example to have a completed understanding on the importance of trademarks toward the developing and surviving

of companies:

The infamous Coca – cola company from all over the world, up to now, introduced many beverage products and widely favorited by most customers We can make a list of loads of trademarks of such particular products, which are very common nowsaday, for instance Classic Coke, Diet Coke, Cherry Coke, Zero Coke…Nonetheless, the value of Coke trademark is not just simply contained in the name, or the products’ logo, but also in a combination of invisible properties, such as the special and unique process ingredients owned by Coca – cola company, the quality

of the products, the prestige that it brought up through a long period of history To put

it simple, those values are the comprising of Coca – cola’s brand, which is closely binded with trademark, affects and decides the value of trademark According to Interbrand, an infamous brand assesssment, Coca – cola’s brand was assessed around 65.3 billions USD, and considered a global brand

The immediate success of Coca – cola’s brand is thanks mostly to its combination of various strageties on legal protection toward invention licenses, trade secrets and also trademarks Regardless, no other invisible properties was highly prioritized for protection than its own trademark, and hencefoward, its value is assessed approximately over 70 billions USD Along with the development of Coca – cola, there are always tons of bad intentions of copying, recreating the trademark on the basis of a similar products of other competitive companies , in order to create confusions of trademark toward customers, especially in the continuos developing period of the global commercial However, understood the great importance of its trademark, Coca – cola mobilized a full, enormous force of legal staffs in the company to bear the responsibility of protecting the integrity of trade name and trademark, along with many other intellectual properties Lawyers with major in

trademark of Coca – cola are all over many areas of the world, such as in North America, South America, Europe, Africa, Asia

It can be seen that, with the full preparation and trademark protecting strageties, Coca – cola has always kept its trademark stable, untouchable and hence the increasing in value, along with the quality and prestige of the products

ii Toward consumers

Thanks to its function of distinctiveness, trademark gradually became the main tool for consumers to use, in order to easily take decisions on what type of each goods and service to be pursued, coping up with the demands, favorites, the level of quality that they expect The consumers, for example, who ask for a high rate car shall think

of Lexus or Fortuner trademark of Toyota, as in reality, these trademarks are built for the icon of the type of modern, fashionable and nice appearance car Through this example, as can be seen, trademarks carry an important meaning of helping consumers to distinguish products and orientation of usage, choosing products, while also save time and costs for consumers in the process of choosing their favorite products or services, based on their purposes and favorites, create a comfort thinking for consumers when pursuing, develop a better quality cultural of sale

1.4 Compare with regulations of several countries in the world on enforcement of trademarks

1.4.1 Regulations on enforcement of trademarks in the world

Henceforth, after having a potential view of the enforcement of trademarks in general and in Vietnam, the next step we want to do is to have a comparision with similar regulations of different countries in the world on trademark enforcement Such law comparison is to exploit the enormous knowledge and understanding of foreign laws, in other words to create a firm basis for our domestic developing legal system

To begin with, let’s go over some basic contents on trademarks, as well as the conditions for protection by the Government in the world

Toward trademarks regulated by the legal system of the European Community in general, the condition for their protection is stipulated in Council Regulation (EC) No 207/2009 of 26 February 2009 The regulation requires that “all trademarks shall be comprised of any signs, or more specific names, designs, letters, numbers, colours, appearances of goods or the whole goods package, or sound, in which they can:

 distinguish goods or service of different corporations; and

 Be recognized by the representatives of the Trademark registration body of the European Union, in way of allowing the administrative and community to determine clearly and accurately the subject of the issue on the protection of its owner

So, through the Council Regulation (EC) No 207/2009 of 26 February 2009 stated, it can be seen that the most obvious difference of trademark protected by countries in the EC from the similar regulations in Vietnamese IP law is the legally protection of the “untraditional trademarks” In reality of this field of protection in

EU, the single color trademark was first registrated for the color of lilacs in 1999 In the same year, EU for the first time allowed registration of tennis court’s grass smell The trademark of smell in particular, following EU’s regulation, requiring signs demonstrated by charts or graphics is a hard obstacle for a smell sign to be protected

as a community trademark Even when the trademark owner submits, along with the paper, the smell samples, descriptions, as well as the smell ingredient, it might still not be considered a trademark sastified the mentioned conditions Thus, up to the recent years, there is almost no community trademark approved

Recently, there are some other countries with regulations or commitments on smell trademark protection, but in fact there is also almost no smell trademarks is registrated for protection there This definition still has so many shortcomings, that even the Trans-Pacific Partnership Agreement (TPP) comes up to the regulation level

of requiring the members to “protect with efforts” this kind of trademark It shows that the protection of this smell trademarks still contain some issues, not only in the

protection registrating procedures, but also in theory of whether a smell trademarks can accomplish its basic function as a trademark Theoretically, we can see that smell trademarks can cause up arguments on how it can determine the true characteristic of the smell, while toward consumers, and sometime even the administrative body, it could be hard for them to use their own capacity to distinguish clearly among this type

of signs That is, not to mention, from the fact of bad intentions corporations on copying smell trademarks of high prestige, quality smell trademarks on the market, it could get more challenging in the determination of trademarks for dispute settlement

In reality, the Registration body of EU, OHIM, did deny to protect the trademark of manmake strawberry smell from the pharmacy company Eli Lilly, with the provided reasons that any manufacturers shall have the right to add the manmake strawberry smell into their products for easier usage, hence this smell sign did not have the required distinctiveness, but only help consumers to avoid the actual annoying smells

of the products Thus, the strawberry smell trademark might not have the ability to accomplish its basic distinctive function

Toward the area of America, the Lanham law 1946 is the one in charge to regulate this field of trademark Besides, trademarks in the area are also regulated by international Agreements and precedents relating to trademarks United States Patent and Trademark Office (USPTO) is the offical administrative body of trademark registration Different from many countries until now, trademark protection in the US

is depended on the base of usage To be protected, trademark shall have to sastify the conditions on distinctiveness, while having the ability to determine the origin of trademark, and does not violate public’s order, the morality of society

Regardless, on the issue of using untraditional trademarks, US can be considered as the one country putting basis for the regulations on protection of such trademarks History showed that in 1990, US became the first country to recognize smell trademarks, particularly the fresh smell trademark of Plumeria perfume used for sewing and embroidery Furthurmore, this country also recognized series of special

untraditional trademarks, such as in 1978, history was made as the first sound trademark was recognized and registered for protection , submitted by the infamous NBC company; in 1964, introduced the protection of 3D trademark of the fast food from McDonalds

In brief, the conclusion is that trademarks and trademark protection according

to Vietnamese law, in comparision with some areas in the world, share many similarities in definition The most obvious difference is the regulations of

“untraditional trademarks”, as mentioned above The definition of trademark, up to now, in accordance with TRIPS Agreement, US and EU law is open definitions, in which allows any signs with the capacity of distinctiveness goods or service, can be registered and protected, instead of just traditional signs such as words, images or the combination of them The biggest difference of the two type of signs, is the “visual factor” regulated in TRIPS, and since Article 15 of this Agreement stipulated that the member countries might bring into their domestic law this visual condition for trademarks to be able to protected, Vietnam chose to do so, hence does not recognize untraditional trademarks, until now This is understandable and also reasonable for us, since the context of Vietnam is still the background of a developing country, along with the economy – society conditions that are still limited and weak according to the history of IP field, and the experience of IP law’s enforcement is not that various, thus, does not have the sufficient conditions, as well

Although there has yet any regulations on protecting untraditional trademarks

as mentioned, but things are likely to change in the future, as Vietnam decided to participate in TPP This Agreement especially demands more requirements on trademark protections, which is particularly stated in session C, from Article 18.18 to Article 18.28, and regulations on untraditional trademarks, especially sound trademarks and smell trademarks It is understood that TPP forces its members to recognize “invisible signs”like sound and smells, as a subject of protection for trademark in their domestic laws This regulation of TPP also let loose the probility of

taste and tactile trademarks It is stated in Article 18.18 that toward the trademarks that can be registered for protection, Vietnam must allow the registration of sound trademark protection in 3 years, since the effective day of TPP Toward smell trademarks, TPP does not provide a specific time for Vietnam to perform its commitment, but according to Article 18.18, we shall still have the duty of making a mechanism with efforts for entities in Vietnam to be able to register for smell trademark protection

1.4.2 The mechanism on enforcement of trademarks in Vietnam

Theoretically, Clause 3 Article 6 of IP law and Article 6 of Decree No.103/2006/NĐ-CP, detailing and guiding the implementation of a number of articles of The Law on Intellectual Property regarding industrial property, regulated that industrial property right to trademarks is established based on the the decision of granting protection title by the competent State body, complying to the procedure of registration or recognization of international registration, in accordance with the international Agreement that Vietnam is a member of Particularly on well known trademark, industrial property rights to it is established on the basis of usage, but not

It can be understood that, if one corporation want to own its trademark in a most completed way, the trademark should be registered for protection at the competent State body Basing on the documents submitted of that corporation, the State body processes to verify the files, including verifying the form and the content

of the papers, thereafter giving decision on whether to grant or not the protection title

to the considered trademark The State body holding the responsibility for the process

of registration for trademark protection, along with other intellectual properties such

as inventions and other subject matter of industrial property, is the Department of Intellectual property, organizing and objectives in accordance with Circular No 01/2007/tt-bkhcn guiding the implementation of the Governments 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

The enforcement, registration for protection of industrial property such as inventions, designs of semi-conducting closed circuits, industrial designs, and especially trademarks, shall be established on basis of the decision of Department of Intellectual property on granting protection title to the subscriber When disputes come up, the owner of the industrial property’s subject has the right to use the protection title for proof of legal rights to Department of Intellectual property

As well as other civil relationships or administrative, criminal relationships, behaviours breaching industrial property rights to trademarks shall all be dealt with in complience with legal regulations These regulations can be seen in IP law, in which states that the remedies to deal with the breaches of rights on trademarks include: (1) civil remedies; (2) administrative remedies; (3) criminal remedies; (4) urgent measures, measures to control intellectual property related imports and exports, preventive measures and measures to secure enforcement of an administrative penalty

in accordance with the provisions of IP law

(1) Civil remedies are used when right holders initiate a lawsuit to the competent court in order to demand the one violating to compensate, stop the violating behaviours This remedy shall be used by the right holder, not the State

Considering on characteristics, industrial property right to trademarks is a type

of civil right Thus, the dealing with the industrial property right to trademarks violating behaviours, firstly and directly, would have to have the purpose of protecting legal rights and benefits of right holders Therefore, in long terms, dealing with behaviours violating rights on trademarks by civil remedies should be given prominence to, since the disputes relating to intellectual property rights often occur between individuals, organizations, thus the civil remedies are reasonable Civil remedies shall be applied to deal with violating behaviours due to the trademark owner’s or the organizations’, individuals’ demands, even if that behaviour is currently dealt by administrative or criminal remedies The procedures to demand for applying civil remedies, the powers, are in accordance with law on civil procedure

Based on each specific cases, the Court can apply different remedies, such as: i) Compulsory termination of the infringing acts; ii) Compulsory public apology and rectification; iii) Compulsory performance of civil obligations; iv) Compulsory payment of damages for loss; v) Compulsory destruction, distribution or use for non-commercial purposes of goods, raw materials and materials, and facilities used principally for the production or trading of goods which infringed intellectual property rights, provided that such destruction, distribution or use will not affect the exploitation of rights by intellectual property right holders

(2) Administrative remedies are used when there are violating behaviours, and the competent bodies such as inspectorates, market management offices, customs offices, police offices and people's committees at all levels take decisions of applying this type of remedies The remedies are mainly monetary fine, which can be applied along the other remedies such as confiscation means, destruction of violating goods

Particularly, based on the legal basis of Article 211 of IP law, Acts of infringement of industrial property rights which shall be subject to administrative penalties are:

(a) Acts of infringement of intellectual property rights which cause loss and damage to consumers or society;

(b) Failure to terminate an act of infringement of intellectual property rights although the intellectual property right holder has issued a written notice requesting termination of such act;

(c) Producing, importing, transporting or trading in intellectual property counterfeit goods stipulated in article 213 of this Law, or assigning others to do so;

(d) Producing, importing, transporting or trading in articles bearing a trademark or geographical indication which is identical or confusingly similar to a protected trademark or geographical indication, or assigning others to do so

Counterfeit trademark goods means goods or their packages bearing a trademark or sign which is identical with or indistinguishable from a trademark or

geographical indication currently protected for those very goods, without permission from the trademark owner or organization managing the geographical indication It should be noticed that according to this Article, the basis to determine whether a trademark is considered identical with or indistinguishable from other trademarks can

be found in the structures, contents, pronounces, meanings and forms of demonstration Signs are considered indistinguishable with the considered trademark

if such signs are almost similar with the trademark on structure (For instance, assuming there are the B’Mart trademark and the indistinguishable trademark from B’Mart might be similar in pronounces, such as “Bi’Mart, Be’Mart, Bee’Mart…, in meanings, such as “B’Store, B’Market…)

(3) Criminal remedies are applied by competent State bodies when discovering violating behaviours on intellectual property, considered the behaviours are dangerous to society and sastify all factors involving criminal elements, shall be investigated, prosecuted or initiated to trial in accordance with law on criminal and law on criminal procedure This remedy is usually applied to behaviours in breaching legal rights of trademark owners, causing serious results to their business activities, to the order of society Whereby, individuals perform behaviours breaching IP rights to trademarks involved in criminal elements shall be examined for penal liability, according to the Criminal Code 1999, amended in 2009 9 The criminal legal mechanism for protecting these Industrial property rights is applied to crimes such as manufacturing and/or trading in fake goods; manufacturing and/or trading in fake goods being food, foodstuffs, curative medicines, preventive medicines; manufacturing and/or trading in fake goods being animal feeds, fertilizers, veterinary drugs, plant protection drugs, plant varieties, animal breeds; infringing upon industrial property rights 10 To sum up, the common forms of punishment for those crimes are monetary fine, confiscation of part or whole of property, ban from holding certain

posts, practicing certain occupations or doing certain jobs from one to five years; custodial reform; termed imprisonment Thus, those are the strictest punishments that one might take for such breaches of IP law, being dangerous, serious for the community

non-(4) Urgent measures, measures to control intellectual property related imports and exports, preventive measures and measures to secure enforcement of an administrative penalty are comprised of:

(a) Suspension of customs procedures for goods suspected of infringing intellectual property rights;

(b) Inspection and supervision to detect goods showing signs of infringing intellectual property rights

These measures are often applied to support the mentioned remedies, used to determine to amount of breaches of violating trademarks toward the damaged trademarks, thereafter examine and apply the next proper remedies to deal with the violation

CHAPTER 2 ACTUAL SITUATIONS OF LAW ENFORCEMENT ON

TRADEMARK PROTECTION IN VIETNAM

IP Law came into practice in the background of codification and completing the former regulations of intellectual property 11 This law’s existence is to serve the purpose of harmonizing with the international Ageements in which Vietnam participated Thus, as can be seen, the common reasonings in regulations of trademarks, as well as the the conditions of trademark protection, in manner of the subject of industrial property in IP law, are pretty sufficient, adequate to the Agreements as mentioned After a period of executing, regulations on intellectual property, as well as law on trademark in specific, has from time to time blended into the society, life, and the development of the economy, helped protect legal rights and benefits of the Government, the trademarks creators, the owner of trademarks, pushed the activity of trademark protection onto new levels Regardless, in the time of integrating, while applying provisions of conditions on trademark protection, there are still many shortcomings, limitations and negatives, taking advantage of gaps in the legal system of intellectuall property by individuals, entities with purpose of negative lucrativeness, which affects legal rights and benefits of the Government, trademark owners and corporations who did, do and will participate in the massive, competative, harsh commercial playground, both domestic and abroad Besides, it can be seen that there is not really any perfect and completed legal system, and so the legal system on intellectual property of Vietnam is not an exception Nonetheless, through the history flow of the country, of a moving and non – stop improving humanity, geographical conditions, natures of the economy, society surely would never stay unchanged, as in accordance with Marxism – Leninism, and so they led to many affected factors, such

as legal elaboration of a specific law More particularly, it is the current legal system

11 Regulations on industrial designs dated 13/05/1988, Ordinance on assignment of foreign technology into

Vietnam dated 5/12/1988, Decree No.49/HĐBT dated 4/03/1991 guiding implementing Ordinance on assignment

of foreign technology into Vietnam, Ordinance on protecting industrial property rights