Email: vinh@bross.vn

The practices of “trademark disclaimer” principle in Vietnam

 “The registered trademark is wholly protected. The verbal element of ….and/or the figurative element of…. are not separately protected” is the phrase commonly appeared in many certificates of trademark registration issued by the Vietnam National Office of Intellectual Property (NOIP). Such pharse originates from the term “trademark disclaimer statement” or shortly called as “disclaimer” regularly seen in trademark registrations in many countries. According to the world practice, “disclaimer” that is often understood that an element or a sign (constituting an applied-for mark) of descriptiveness, devoid of distinctive characters is not required to omit or eliminated from the applied-for mark  because in view of whole assessement, such applied-for mark is still deemed as badge of origin (trademark function). Another significant implication of “disclaimer” is a legal limitation to the scope of protection of a registered trademark.

The below table may show you during the period of between1980 and 2019, how many types of disclaimers with regard to the Madrid system based trademark and nationally registered trademark have been decided by the NOIP:

Some Inadequacies and Uncertainties Concerning “Disclaimer” Practices in Vietnam

No “disclaimer” related-provisions are available in the IP Law and Decrees guiding the implementation of IP Law. Disclaimer issue was not mentioned until the 4^th amendment of Circular 01/2007/TT-BKHCN according to Circular 16/2016 which came into effort from 15/01/2018 (“Circular 01/2007 as revised”), wherein Item 15.7(a)(iii) provides for: “where the trademark has element that must be excluded from protection, no separate protection of such element is accepted: Notice of grant of protection shall identify clearly the intention and reason for not granting exclusive protection of such element and the applicant has 3 months from the notice to submit opinion”.

The absence of detailed provisions and practical guides for “disclaimer” has caused a lot of troubles, inadequacies, has infavourably affected to trademark examiners, applicants/right holders, competitive parties, IP right enforcement agencies, etc., Below are some most noteworthy significant troubles:

1. Before the availability of Circular 01/2007 as revised, there is no mechanism for the applicant to have the opportunity to oppose the element (component) subject to potential disclaimer under the applied-for mark as shown in the notice of grant of protection issued by the NOIP. The additional provision newly added in Circular 01/2007 as revised is a good one because it allows applicant to object the notice wherein has concluded that one or more elements of the applied-for mark must be disclaimed, thereby applicant may file a supplemental explanation or response along with substantiated proofs claiming that the potentially disclaimed element(s) cannot be disclaimed, for the purpose of enabling applicant to save his right and legal interest timely and accurately. Nevertheless, this new provision is still considered inadequate since any third party does not have chance to oppose the NOIP’s notice in which one or several potentially non-disclaimed elements may affect detrimentally to other businesses in the same industry as the notice of grant of protection is not published in the Official Gazette.

2. The finding of which element (component) of the applied-for mark must be excluded from protection (ie. merely descriptive, or devoid of distinctive characters, or lack of function of trademark) are fundamentally dependent almost totally on the experience, personal knowledge and discretion of trademark examiners, thus, there would easily lead to mistakes as the result of their subjective and emotional determination.

3. It is clear that the unequality still exists between international registration and national registration related to the issue of disclaimer in Vietnam, for instance, only national registered trademark holds disclaimer while international one does not. This inadequation also cause struggle for the enforcement process, for determining the protection limitation of international registered trademark and for awaring of the risk of trademark infringement in business. There is currently a discrimination between international registration and national registration relating to the issue of disclaimer in Vietnam, namely that only nationally registered trademars have disclaimer recorded while no disclaimer is recorded in internationally registered trademarks. This inadequacy also makes it difficult to enforce, determine the scope of protection of the international registration mark and to significantly diminish prediction in terms of risk of trademark infringement claims in the market.

4. There is no unitary principle related to dertermining which case needs to be disclaimed, which case does not, leading to the current inconsistency in the NOIP’s decisions and as the result, the law and its philosophy have been not yet applied consistently, meaning that many cases that have the same features but their disclaimers were decided differently. For example, different trademarks included the verbal elements “Gold” or “Plus” used for milk products, or “Bio” used for medicine, supplement, were disclaimed in this circumstance but in another case were not disclaimed

5. Currently, Vietnam does not have a uniform rule on how to determine the scope of protection of the previous trademark containing disclaimed component when compared it with the later filed trademark containing such disclaimed element [5] (In essence, this rule is to assess likelihood of confusion between the applied-for mark and earlier registered trademark) leading to the occurrence of many unnecessarily complicated and lengthy disputes and complaints between applicants, earlier right holders and the NOIP. For instance, in this case below the NOIP still takes the view that the element "VietCashew" under the applied-for mark (left column) is confusingly similar to the disclaimed component “Điều Việt” (English translation as VietCashew) under earlier registered trademark:

In response to the NOIP’s refusal, the applicant argued that:

(i)        The scope of protection of a previously registered trademark is effortlessly extended by accident more than the current state decided by the NOIP as “the trademark is protected entirely. The element “ĐIỀU VIỆT” (English translation as VietCashew), design of cashew nuts (for cashew nuts-related goods/services) are not exclusively protected”.

2. The fact that the NOIP contends that the word "VietCashew" can be understood in Vietnamese as "Điều Việt”, “Hạt Điều Việt” (Vietnamese cashew nuts) to conclude that there would be a potential likelihood of confusion between the earlier registered trademark and the applied-for mark would be obviously problematic and illogical because the legally decided limitation “the element “ĐIỀU VIỆT” is not protected separately” has become meaningless. In other words, such an argument would be contradictory in that if a sign has been concluded that it is not protected by itself, it cannot be automatically protected separately, a sign concluded that lack of function of trademark then it cannot be suddenly transformed into availability state of trademark function when compared it and the applied-for mark.

Should you have any query, please get in touch with us at vinh@bross.vn or 84-903 287 057

 Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including preparing Vietnamese translation of PCT applications and entering the Vietnamese national phase, filing, prosecution, enforcement, anti-counterfeiting, litigation and domain name matters.