Refusal of Trademark Based on Likelihood of Confusion with Famous Trademark
An application for registration of mark “Cá Sấu Hoaca” (its English translation of Vietnamese characters is Crocodile) by a Vietnamese company is partially rejected by NOIP, particularly the word “Cá Sấu” is concluded to be confusingly similar to the earlier well known marks , and Crocodile under IR Nos. 437001, 638122 and 723443 designated Vietnam amongst other countries covering multiple classes such as 25, 29, 31 under the Nice Classification in the name of Lacoste. However, in another case, an applied-for mark “Cá Sấu” (its English translation is Crocodile) designating non-alcoholic drink, beer, alcoholic in classes 32 & 33 is also rejected by NOIP because of likelihood of confusion with the earlier registered mark like the above case. Nevertheless, unlike Section 74(2)(i) famous trademark based refusal ground applied by NOIP in the first case, the second case is objected based on Section 74(2)(e) of IP Law providing that no mark is registered if it is or consists of signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member.
Can Well-known Trademark be Revoked Due to Non-use?
Upon successfully persuading the applicant for the second case that a famous trademark may be still subject to non-use cancellation regarding non-used goods bearing it, Bross & Partners filed non-use cancellation actions in part (class 32 & 33) against the marks before NOIP and readily pending counterarguments from Lacoste. However, due to no response made by Lacoste in the prescribed time limit, recently NOIP handed down Decision 2534/QD-SHTT declaring termination of partial validity of marks under IR Nos. 808033 and 437001.
Position on Well Known Trademark Protection is Divided
As a signatory to both Paris Convention for the Protection of Industrial Property (Paris Convention) and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), Vietnam has transposed its well known mark protection obligation to Article 6bis Paris Convention and Article 16 TRIPs to IP Law of 2005 as revised, thereby well known mark is defined as a mark widely known by consumers throughout the territory of Vietnam.
Section 74(2)(i) sets forth no protection of an applied-for mark is approved if it contains signs identical with or confusingly similar to another person's mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark.
The principle for establishment of right over well known mark following Article 6(3)(a) IP Law stipulating that industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures. However, Article 6(6) Decree 105/2006/ND-CP as amended providing the guidance on implementation of IP Law makes clarification well known mark protection shall be merely determined based on the substantiated evidence showing the wellknowness of a particular mark as result of satisfaction of 8 criteria of Article 75 providing for the following criteria shall be taken into account when considering whether or not a mark is well known:
(a) The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.
(b) The territorial area in which goods or services bearing the mark are circulated.
(c) Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.
(d) Duration of continuous use of the mark.
(e) Wide reputation of goods or services bearing the mark.
(f) Number of countries protecting the mark.
(g) Number of countries recognizing the mark as a well known mark.
(h) Assignment price, licensing price, or investment capital contribution value of the mark.
Regardless of the above principle, Article 75 well known mark determination rule is never probably used by NOIP. Instead, NOIP usually proclaims some senior marks that is alleged to be famous as relative refusal ground as per Section 74(2)(i) to reject junior marks even though good or service bearing them are neither identical nor similar. However, most recently this point of view seems to be changing since some examiners assume that no famous trademark is existed as long as it has been not yet recognized as famous trademark according to a decision or judgment by authority or court.