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Understanding the Practices of “Disclaimer” or Disclaimer Statement” Regarding Brand or Trademark Protection in Vietnam and Noteworthy Uncertainties Thereof
(Ngày đăng: 2019-05-29)

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:

 

 

Disclaimer by the NOIP

Note/Comment

International Reg. No. 518175

Date 29/7/1987

Class 29 (milk) and others

No disclaimer recorded

(In this case, the image of a cow’s head is obviously descriptive of milk product)

Prior to 1990s, no disclaimer recorded in international registration of mark

International Reg. No 1366539

Protected by Vietnam on 7/2/2019

Class 29: Milk and dairy products.

No disclaimer recorded

(The element “Milk” independently standing from from the element “ME” should have been disclaimed)

After 1990s up to 2019, no disclaimer recorded on international registration has been seen designating/expanding into Vietnam

National Reg. 31748 (expired in 2008)

Reg. Date: 4/5/1998

Issued on: 9/8/1999

Class 29: Milk and dairy products

 

No disclaimer recorded

(This case, disclaimer of “Milk” should have been made because Milk stands alone

Before 2000, it seems that Vietnam did not disclaim the trademark containing a descriptive element

National Reg. 64419

Reg. Date: 20/4/2004

 Issued on: 4/7/2005

Class 29: sữa và sản phẩm từ sữa

Disclaimer recorded.

The registered trademark is wholly protected. The verbal elements of mamma and image of a prenant are not separately protected

Disclaimer is applied to both verbal and figurative signs if they are devoid of distinctive characters. However, the element “milk” was not disclaimed as it attaches to the prefix “Vina” to create a single word “Vinamilk”[1]

National Reg. 270480

Issued on 21/10/2016

Class 29: Milk and dairy products

 

Disclaimer recorded.

The registered trademark is wholly protected. The figurative element of a cow’s head is not separately protected”.

The device of a cow’s head is obviously descriptive of milk but its form of expression or its stylized representation is

unique enough so that it suffices to function a badge of origin in commerce

National Reg. 281944

Issued on 23/5/2017

Class 12: bike, motorbike

Disclaimer recorded.

The registered trademark is wholly protected. The verbal element of “Thế giới xe đạp” and a device of cog-wheel are not separately protected”.

Both of the signs of the gear and the words "Thế giới xe đạp” (world of bicycles)" are descriptive, but the combination of both signs in which the sign of a gear shaped as half a leaf device is still enough to make the impression to qualify as a trademark as the whole.

International Reg. 824804

Issued on 27/04/2004

Class 30: coffee

No disclaimer recorded.

(This case is confusing in determining the scope of protection because while national reg. 150500 as below is disclaimed against devices of seed of coffee and a cup, no disclaimer recorded on International Reg. 824804

 

 

[2]Initially rejected under Section 6.2c of Decree 63/1996 as amended because of lack of trademark function. Upon the evidences of extensive and wide use, the NOIP withdrew its refusal and granted protection on August 24, 2006

Certificate No. 150500

Issued on 3/8/2010

Class 30: coffee,…

Disclaimer recorded

 

The registered trademark is wholly protected. The figurative elements of “coffee cup” and “nuts of coffee” are not separately protected”.

In addition to the grain of coffee, the red cup in the mark is also disclaimed

 

National Reg. 57231

Issued on 20/9/2004

Class 03: cosmetics

Disclaimer recorded

The registered trademark is wholly protected. Only verbal element of “Romano” is protected

This is a three dimensional trademark which appears not to be clear enough to determine its scope of protection: only “ROMANO”, or the combination of Romano and device of bottle, or both Romano and device of bottle?

International Reg. 1028578

Dated 16/12/2009

Class 33

No verbal element included in the trademark

This is another three dimensional trademark which was rejected by virtue of Section 74.2b of the IP Law[3]

Pending App. No 4-2014-22436

Filing date 22/9/2014

Class 29, 35 related to cashew nuts

Prior registered trademark

National Reg. 262371

Issued on 17/5/2016

Classes 29, 30, 35 (cashew nuts).

The trademark is wholly protected. The verbal sign “ĐIỀU VIỆT” and the device of cashew nuts are not protected separately (for cashew nuts)

The mark VietCashew was refused by reason of likelihood of confusion with the registered mark Điều Việt. Upon appeal, the NOIP maintained its rejection by second refusal

App. No. 4-2004-09174

Filing date: 6/9/2004

(National Reg. 76000 granted on 11/10/2006 after  review)

Class 35, 40, 41 (publishing and trading books).

App. No. 4-2004-06236

Filing date: 25/6/2004

Notice of grant: 9/11/2005[4]

Class 35:  Trading books

Trademark is wholly protected. The words “Sách Việt” (English translation is Vietbook) is not protected separately)

Similar to the mark VietCashew above, in this case, NOIP also rejected Vietbook because of the earlier filed mark Sách Việt but there was a difference that is NOIP withdrew its rejection after a review was submitted

 National Reg.  171511

Class 29: milk

Disclaimer: Nil

 

National Reg. 190511

Class 29: milk

Disclaimer recorded. Trademark is wholly protected. "Full and balanced nutrition", "a", "R" are not protected separately

National Reg 166534

Class 29: milk

 

Trademark is wholly protected. The verbal elements “R”, “GOLD”, “IQ”, “MAX” and “3” are not protected separately

The text element “GOLD” is used for milk products but none of the 2 trademarks of Abbott is disclaimed while Certificate No. 166534 is.

Although the word Gold is used for the same milk product, Abbott’s trademarks are not disclaimed while Gold under Reg 166534 was subject to disclaimer.

App. No. 4-2008-15894

Filing date: 25/7/2008

Class 30 & 43 (coffee)

First rejection of 13/8/2009

Second rejection (confirmation of refusal) of February 2, 2010

 

National Reg. 44471

Trademark is wholly protected. The verbal element “HIGHLANDS COFFEE” is not protected separately

The rejected application was filed during the time the holder – Viet Thai International Coporation – had successfully registered the trademark Highlands Coffee & design /Reg. 44471 in which “Highlands Coffee” is not exclusively protected

App. No. 4-2012-02380

Filing date 17/2/2012

Class 30 & 43 (coffee)

National Reg. 231207

Issued on 10/9/2014

 

Trademark is wholly protected. The verbal element “COFFEE” is not protected separately

This trademark (identical with the rejected mark under App. No. 4-2008-15894) re-filed in 2012 by the new owner – Blue Sky Holdings Limited – was approved by the NOIP (Highlands became proprietary mark)

 

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 4th 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.

 

  1. 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.

 

  1. 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.

 

  1. 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

 

  1. 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:

 

Applied-for Mark

Earlier Registered Trademark


App. No. 4-2014-22436

Class 29, 35 (Cashew nuts and services regarding trading in cashew nuts, etc.)

NOIP rejected

Review in progress

 

National Reg 262371

Class 29 (Cashew and other products)

Disclaimer recorded: 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.

 

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”.

  1. 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.

 

 


1 Similar to Vietnam, other countries also do not disclaim the descriptive elements when they are united with the non-descriptive elements to generate a unitary mark such as Vinamilk trademark under the International Reg. No.0985886

2 Section 6 Decree 63/1996/CP as amended: these following signs cannot be protected by the Government as trademarks:

c) Signs indicated time, place, methods, kind, quantity, quality, feature, ingredient, useage, describing function and origin of goods/services.

3 Section 74 IP Law: The capacity of distinctiveness of trademark

2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

b) Conventional signs or symbols, pictures or common names in any language of goods or

services that have been widely and regularly used and known to many people

[4] On 25/12/2008 the NOIP officially rejected due to non-payment of granting fee.

 

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