Famous Trademark Protection Practices in the US, EU, Japan, China and Vietnam: similar or different although these countries all bound by the Paris Convention and TRIPs Agreement?

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Well-known trademark definition in the international law and national law

Legal concept “well-known trademark” is not defined in the Paris Convention, TRIPs Agreement and WIPO Joint Recommendation of 1999[1]. It appears that there are very few jurisdictions in the world defines what “well-known trademark” (“famous trademark”) is in their national legislation.

Even the world’s most populous country as China also does not define what well-known trademark is in its Trademark Law of 2001 but it only gives a definition of well-known trademark in the subordinate legislation. For example, Order No. 5 guiding the implementation of the 2001 Chinese Trademark Law defines that a well-known trademark is the trademark known widely by the relevant section of public and earning a high level of reputation in China. By the enactment of the 2013 Trademark Law,  in Order No. 66 guiding the implementation of the 2013 Trademark Law, the factor “reputation” had been removed, acording to which well-known trademark is trademark known widely by the relevant section of public in China.

In contrast, India makes a long definition of well-known trademark in sub-paragraph (zg) Article 2 of the Trademark Act of 1999: “well known trade mark, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

For Vietnam, definition of well-known trademark is found in Article 4(20) of the 2005 IP Law stating a well-known trademark means a trademark that is widely known by consumers throughout the territory of Vietnam. 

The terms "well-known mark", "famous mark", "notorious mark", "mark with reputation", "reputed mark", "renowned mark" are used inconsistently, but according to the AIPPI survey, the term well-known mark is most commonly used. "Famous mark" is often used by the US, Japan, Hungary, Egypt, Korea, Mexico, Turkey while Canada uses both famous and well-known without identifying the difference. "Mark with reputation", "reputed mark" is commonly used by EU member states, "notorious" is used in Switzerland, Germany.[2] However, all of the above terms basically have the same connotation to describe the state known by a great deal of consumers along with a positive reputation implication. ("well-known" means: widely or generally known, “famous”: known about by many people, notorious: famous or well known, typically for some bad quality or deed).[3]

Practices of Well-known Trademark Protection in US, EU, China and Vietnam

US: a claim preventing well-known trademark from being diluted by blurring would prevail if the senior trademark recognized as a famous one must have been known by the public at large through the case Coach Services, Inc. v. Triumph Learning LLC

When resolving a lawsuit against the TTAB wherein the plaintiff (the opposer/senior trademark owner) required that the court recognize the COACH trademark as well-known, and accused the defendant (the applicant/junior trademark owner) of infringing his well-known trademark, the Federal Court of Appeals considered that the senior trademark “COACH” is recognized by the public at high level through the media but most of the evidences submitted came after the date on which the junior trademark was filed, so the TTAB’s decision is correct when it denied the opposition action which replied upon both of the likelihood-of-confusion claim and dilution claim. The rule by the Fed. Cir. brought a key message that no dilution claim can be prevailed if the reputation of senior trademark has “niche fame” only. This means that the US protects and recognizes a well-known trademark against claims to dilution by blurring or dilution by tarnishment only when the senior trademark is so famous that it has become the “household name” with the US consumer.[5]

European Union: a claim preventing well-known trademark from being diluted by blurring requires a change in economic behavior through the case Intel Corporation Inc v. United Kingdom Limited case (Case C-252/07)

When questioned by the High Court of Justice (EJC) in the case of Intel Corporation's failure to cancel the word mark INTELMARK registered in the UK in connection with “marketing and telemarketing” services in class 35, the European Court of Justice (CJEC) stated that the attached evidences proving that consumers can recognize the link between the two trademark INTEL and INTELMARK are not sufficient to support the decision stating that whether INTELMARK takes advantage of reputation or prejudices INTEL's distinctive character and prestige or not. It is required that the evidence proving a change in consumer’s economic behavior be provided. [6]

Japan: Likelihood of confusion is still the key issue in determining scope of protection of well-known trademark through the case Intel Corporation Inc vs. KK IntelGrow

In response to the cancellation action filed by Intel Corporation against the junior mark INTELGROW (depicted in Japanese characters as shown above), the JPO considered that INTELGROW is neither likely to cause confusion with Intel, nor infringes Article (1)(xi) in consideration of their appearance, pronunciation and meaning because (a) Intelgrow is pronounced as a continuous sound "intelgrow" instead of producing an "intel" sound, (b) INTELGROW is distinctive from Intel as to structure and expression, it cannot thus cause confusion as to appearance, and (c) INTELGROW has no meaning so that the two trademarks could not be compared in terms of meaning

Refuting Intel Corporation’s lawsuit against the JPO’s negative decision, the Intellectual Property High Court ruled in favor of JPO's decision. With regard to Article 4(1)(xix), the Japanese Trademark Law prohibiting the registration of a trademark that is identical or similar to a well-known trademark against a Japanese consumer or overseas, the Court stated that because the usage of INTELGROW is not likely to obstruct or cause harm to Intel's reputation, esteem and charisma; INTELGROW were also neither registered with the purpose of making illegal profits nor causing damage to others, so the Court concluded that the JPO did not make any mistakes when it determined the case. In addition, the fact that Intel Corporation invoked the fact that it has successfully registered INTEL as a defensive trademark, does not necessarily mean that the senior mark Intel has become well-known for all such protected goods and services.[7]

China: Recognized as famous trademark but which point of time it had become well-known is the decisive factor for victory or failure through case Airbus Deutschland GmbH v. Shenyang Yongfeng Food Co.

Airbus' long-lasting litigation journey in China ultimately did not bring the positive result as Airbus expected being it succeeds in cancellation action against the junior trademark. Beijing Intermediate Court No. 1 stated that AIRBUS is protected as a well-known trademark under the Paris Convention and such protection covers dissimilar goods or services. However, the Court rejected the argument of Airbus Deutschland and allowed the defendant’s junior mark to proceed to the registration stage because the Court found that Airbus Deutschland failed to prove that the AIRBUS mark became famous in China before the filing date of the opposed junior mark, in particular prior to July 1998, although knowing that AIRBUS appeared in China before July 1998, there was no evidence proving that such trademark was known in China so widely that famous by that time.[8]

Vietnam: Recognition of well-known trademark by a court merely replied upon the professional opinion [9] delivered by another administrative authority through the case Interbrand vs. Interbrand Corporation

In 2010, Interbrand Group, a UK group established in 1974 renowned for global brand consultancy, most known for its Best Global Brands Rankings (the “Plaintiff”), sued Interbrand Joint Stock Company (InterBrand JSC), a Vietnamese company before a Hochiminh city-based court (the “Defendant”) for illegally using the term “INTERBRAND” in InterBrand JSC business activities including internet advertisement, unlawfully using INTERBRAND as its trade name and appropriating, illegally using the ccTLD domain names interbrand.com.vn  and interbrandvn.com.vn, and accused InterBrand JSC of infringing its famous trademark INTERBRAND.

In its official letter no. 5467/SHTT-TTKN, the Intellectual Property Office of Vietnam (VNIPO)[10]  responded to the Court’s inquiry, saying that INTERBRAND is a well-known mark in Vietnam since 2006 and its reputation is widely known through the press and media.

However, the Court made a mistake because it failed to review the guidance for applicability of Section 6(3)(a) of the IP Law in terms of the protection of unregistered famous trademark. Section 6(3)(a) is further clarified at Article 6(6) Decree 105/2006/NĐ-CP which makes reference to Section 75 of the IP Law. Not applying Section 75 but purely based on the VNIPO’s professional opinion to determine the INTERBRAND mark as a well-known trademark is that the court took a reasonable opportunity away from the defendant so that he could defense and counter-argue the evidence proving the well-knownness of the plaintiff's trademark. It is essential to remember that the right to a well-known trademark in this case must be the right to a unregistered well-known trademark (if the plaintiff's mark attained well-known status before March 21, 2006 - the date on which the defendant's trademark was filed, and this date is also temporarily presumed to be the date from which the defendant commenced using the junior trademark) but not the right to the plaintiff's trademark registration certificate no. 146017 issued on May 6, 2010.[11]

Bross & Partners has had experience in assisting the clients to prepare and submit dosier and relevant evidence asking for recognition of well-known trademark in Vietnam. We also helped some clients successfully defend against well-known trademark claims in Vietnam, Cambodia and Thailand. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, is ranked as Tier 1 by the Legal 500 Asia Pacific. Bross & Partners is constantly recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), AsiaLaw Profiles, Asia IP and Asian Legal Business. Bross & Partners, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.