Comment on the Proposed Amendments of

the preamble of Article 74(2) in the Draft Law amending the IP Law[1]

Email: vinh@bross.vn

The preamble clause 2 Article 74 of the current IP Law stipulates that "a mark shall be considered indistinguishable if it is a sign in one of the following cases". Now such preamble is intended to be amended as “a mark is considered lack of distinctive character, if at the time of filing or priority date in the case of priority claim, that mark applied-for registration falls under one of following signs".

We assume that the Drafting Committee’s proposal is not reasonable because of the following reasons:

1. It is agreed that not all signs can be registered as a trademark, but only any sign that has the function of distinguishing products bearing that mark from other’s trademark used for the same products would be considered as a trademark. On the other hand, a trademark right cannot be granted if the applied-for mark deceives the consumer about origin, or characteristics of product or is contrary to the social order. Thus, Article 73[2] and Article 74 of the current IP Law are the legal bases for refusal of protection of the applied-for mark that falls into one of the circumstances described in Articles 73 and 74. In other word, the two mandatory legal criteria that must be assessed before granting protection to a trademark are: (a) inherent distinctiveness (that is, it must neither mislead nor describe the functions, uses, ingredients, properties or other attributes of the goods or services); and (b) an applied-for mark must not cause any likelihood of confusion (conflict) with pre-existing other’s trademark.[3]

2. The meaning of Article 73 is that the law considers that an applied-for mark has no trademark function (sign of protection exclusion) at the time when it has been submitted (lack of distinctive character), which is distinct from the meaning of Article 74 implying that an applied-for mark has distinctive character (self-distinctiveness) but it cannot be approved protection by reason of a conflict with the others’ exclusive rights existed in the form of registered trademark, trade name, geographical indication, industrial designs, and even unregistered trademark which are widely used and recognized.

3. Since a trademark right is established at the time of grant but not on the basis of filing date or priority date, the distinctive character of an applied-for mark specified in Article 73 and Article 74 is completely different from each other. In theory, grounds of rejection in Article 73 are called as absolute grounds for refusal while grounds of refusal in Article 74 are called as relative grounds for refusal. Based on the logic, it would be incorrect if the phrase "if, at the time of filing or priority date in the case of priority claim" is put into the preamble Article 74(2) because the difference as to legal nature of Article 73 and Article 74.

For the reasons above, we propose (a) to eliminate the phrase "if at the time of filing or priority date in the case of priority claim" in the preamble to clause 2 Article 74; and, (b) at the same time, to move all circumstance specified at points a), b), c), d) and dd)[4] of clause 2 of Article 74 to Article 73.

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