2 LEGAL STANDARDS AND 6 FACTORS FOR

DETERMINING LIKELIHOOD OF CONFUSION UNDER THE LAWS OF VIỆT NAM

Email to: vinh@bross.vn

2 Legal Standards Deciding Registrability of a Trademark

The Vietnamese law stipulates that a trademark is protected only when it meets three conditions: (a) is a visible sign in the form of letters, numbers, words, drawings, images, including 3D (three-dimensional) or combination of such elements are expressed in one or more colors, (b) have the function of distinguishing the trademarked goods or services from the similar goods and services of other entities, and (c) the mark does not describe the feature, utility, or character of the goods or services nor is it deceiving consumers[1].

Here are four common and typical types of marks protected under the name of a trademark (conventional mark) in Vietnam:

The three conditions of protection of aforementioned mark can in fact be reduced to two conditions of protection, which can either be understood as two-step protection standards or can be understood as two compulsory legal standards, specifically:

(a) Condition 1: A mark applied-for must have inherent distinctiveness, that is, it must not describe the function, utility, composition, properties or other attributes of the goods, services; and

(b) Condition 2: A mark applied for registration must not conflict with another person's previous trademark, that is, it must not be identical or similar to the extent that can cause confusion with an earlier trademark.

Below are 3 examples of signs applying for registration does not meet Condition 1 (devoid of non disctive character):

6 Factors Determining Likelihood of Confusion or not Confusing Similarity When Granting or Refusing to Grant Trademark Protection

The IP Law of Vietnam uses many terms "confusing", "potentially confusing" and "confusingly similar" related to the process of establishing, registering trademarks or in the course of handling disputes or infringing upon trademark rights. For example, in the process of establishing a trademark right, a mark applied for registration must be rejected if it is identical with or confusingly similar to another person's trademark already registered for the identical or similar goods or services; or the sign must also be refused if it is identical or confusingly similar to another person's trademark that has been used and widely recognized for identical or similar goods or services before the date of filing the application or priority date[2].

However, the IP Law does not define what is "confusing" or "potentially confusing" and does not specify what legal standards must be applied to determine the likelihood of confusion or not mistaken. In the context of roughly 12,000 applications (accounting for about 30% of the total 40,000 applications submitted annually as we mentioned) were rejected, most of them were rejected because they did not meet Condition 2 as presented above by the National Office of Intellectual Property of Vietnam (NOIP) that comes from grounds of refusal due to "likelihood of confusion" under Section 74(2)(e) the IP Law.

How to assess whether it is "likelihood of confusion" or "not confusingly similar" is an important decision because it directly affects the fate of your brand, ie. grant of protection or denial of protection. However, because the decision of “likelihood of confusion" or "not so similar as confusing" is clearly inclined subjectively by the examiner (examining attorney) as well as prone to arbitrary application, Circular 01/20017/TT-BKHCN as amended up to 4 times in which the latest revision as Circular 06/2016/TT-BKHCN and the Trademark Manual of Examining Procedures of 1991 are considered as the two most important documents defining a number of rules for determing whether there is "likelihood of confusion” or not

To help you easily identify, we encapsulate the above mentioned rules by evaluating 6 factors:

1. The degree of identity or similarity to the extent that can cause confusion in terms of the structure (composition) of applied-for mark compared to cited trademark
2. The degree of identicalness or similarity to the extent that can cause confusion in terms of the pronunciation (reading) of applied-for mark compared to cited trademark
3. The degree of identity or similarity to the extent that can cause confusion with respect with the content (meaning or connotation) of applied-for mark compared to cited trademark
4. The degree of identity or similarity to the extent that can cause confusion with regard to form of expression (eg. graphic, fine art, etc.) of applied-for mark compared to cited trademark
5. Are goods or services bearing the applied-for mark identical with or similar to those pertaining to the cited trademark?
6. The mark applied for registration and the cited mark must be assessed globally (entirely commercial impression), including the degree of distinctiveness of the cited mark, strong or weak elements constituted the cited trademark must be taken into account.

According to the above rule, a sign or mark for registration is considered to be confusingly similar (likely confusing) to the cited trademark if it is similar to the cited trademark in terms of structure or/and content or/and pronunciation or/and meaning (connotation) or/and appearance expressed to such a degree that consumers mistakenly believe that the two objects are one or the other is a variant of the other or those two have the same origin.

Below is a case represented by Bross & Partners in favor of a Vietnamese applicant for registration of the applied-for mark "the Beauty Shop" against the opposition by a UK company, the Body Shop International Limited, arguing that the opposed mark must be rejected due to likelihood of confusión with his previously registered trademarks "the Body Shop"

Counter-oppositions made by Bross & Partners against the opponent’s opposition were finally accepted by the NOIP with the following conclusions:

• Although the two brands share words "the" and "shop" together, the word "Body", "Beauty" makes the two brands different from each other in terms of pronunciation and meanings. The opposed mark is pronounced as /dơ-biu-ty-sóp/ while the cited trademark is pronounced as /dơ-bo-di-sóp/
• Although the two brands are arranged vertically from top to bottom, the letters are presented in different font types, and the cited trademark is shown in a stylized circle, while the opposed mark has the letter "B" that is stylized in a butterfly shape. Therefore, the two brands have different presentation and visual impression.

Should you have particular question, feel free to contact us at vinh@bross.vn or cellphone 84-903 287 057.

Bross & Partners, a renowned intellectual property law firm founded in 2008, regularly ranked/recommended as one of the Vietnam's leading intellectual property law firms by the reputable legal guides such as the Managing Intellectual Property (MIP), Jetro, World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). Bross & Partners has had intensive expertise and extensive experience enabling it to assist clients to effectively protect or defense in complex intellectual property disputes regarding trademark, copyright, related rights, patent, design and domain name in Vietnam and abroad.