WHAT TEST OR STANDARD IS USED BY VIETNAM TO DETERMINE A TRADEMARK INFRINGEMENT? | WHAT TEST OR STANDARD IS USED BY VIETNAM TO DETERMINE A TRADEMARK INFRINGEMENT 1390

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It is widely recognized that likelihood of confusion is one of the most essential legal features of trademark laws of all countries in the world because the determination of likelihood of confusion always plays a decisive role for IP enforcement authorities to conclude whether or not there is a trademark infringement. Vietnam is the same, particularly when an individual or an entity is granted a certificate of registration of a trademark or a brand name, this means he or she (known as the right holder) has been recognized by the State that the former is entitled, based on Section 123 of the IP Law, to either exclusively use or permit others to use such registered trademark in commerce as shown in that certificate.

Identification of Types of Acts of Infringement

Apart from acts of infringement of well-known trademark that is not mentioned herein below, the right holder must successfully prove that based on Section 129 of the IP Law acts of unlawful use of a registered trademark by a suspected infringer shall fall into one of three following circumstances:

(a) Use of allegedly infringing mark identical with registered trademark for goods/services identical with those designated in such certificate; or

(b) Use of allegedly infringing mark identical with registered trademark for goods/services similar to or related to those designated in such certificate, if such use is likely to cause confusion as to the origin of the goods/services; or

(c) Use of allegedly infringing mark similar to registered trademark for goods/services identical with, similar to, or related to those designated in such certificate, if such use is likely to cause confusion as to the origin of the goods/services

Accordingly, the acts made by the alleged infringer shall always attach to the so-called “act of use” then they are governed by Section 129 mentioned above. Whilst by Section 124 act of illegal use of protected trademark or brand made by a suspected violator shall be deemed as act of use when and only when such use drops onto one of three types of acts:

(a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities; or

(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark; or

Principle for Determination of Trademark Infringement

While in the US, judges in each of its 13 federal courts of appeal has their own test for finding likelihood of confusion, for instance, a 8-factor test is adopted by the 1^st Circuit[1], 2^nd Circuit[2] and 5^th Circuit[3] or test based on the 13 DuPont factors[4] currently applied by the Federal Court and the Trademark Trial and Appeal Board (TTAB), Vietnamese judges or other IP right enforcement authorities has no authority to interpret any laws adopted by the Congress, which leads to the fact that only when a particular law is passed as well as the availability of subordinate legislation guiding the law, IP enforcement bodies are able to enforce the laws.

With this different legal characteristic, you may be surprised at knowing that the IP Law does not incorporate any specific rule or test or standard for determining either act of infringement or constituent elements of infringement. Instead, the principle for determination of trademark infringement is available in very important Decree 119/2010/ND-CP of December 30, 2010 amending Decree 105/2006/ND-CP providing for implementation of the IP Law with respect to protection of IP rights (Decree 105 as revised). According to Decree 105 as revised, act of use invoked in paragraph above must satisfy all of four factors:

Factor 1: An allegedly infringing mark under consideration falls within a registered trademark
Factor 2: There is an infringing element in an allegedly infringing mark under consideration
Factor 3: Persons or entities conducting the act of infringement is neither the right holder nor person or entity that is permitted to use such registered trademark, except for defenses to trademark infringement claim by Section 125(2)[5] IP Law
Factor 4: The act subject to determination or consideration occurs in Vietnam (an act under consideration shall also be deemed to have been committed in Vietnam if it was

committed on the internet and aimed at consumers or people using information in Vietnam).

Amongst above 4 factors, factor 2 plays most important role where you want to initiate a civil lawsuit or submit a request for administrative remedy or even denouncing criminal liability against the alleged infringer.

It is worth noting for the right holders that while “act of use” is the subjective factor in the mind of alleged infringer then allegedly infringing mark pertaining to the “act of use” has shown its objective nature. Therefore, the input of determination of infringement element shall be any particular marks or signs affixed on goods, goods packages, business facilities, means of service provision or transaction documents in business activities and in the meantime those marks or signs must be identical with or similar to the registered trademark.

To determine whether or not there is an allegedly infringing mark is or contains an infringement element, a comparison between an allegedly infringing mark and the registered mark as well as goods/services attached to the marks in question must be made. This means that both of the required 2 conditions must be satisfied:

The allegedly infringing mark/sign is identical or confusingly similar to the registered mark within the scope of protection; The allegedly infringing mark/sign shall be deemed to be identical to a protected mark if it has the same composition and method of presentation (including colors); a allegedly infringing mark/sign shall be regarded as confusingly similar to a protected mark if it has several features identical or similar to those of the protected mark to such an extent that it is not easy to distinguish between them in terms of composition, method of pronunciation, method of phonetic transcription of signs, letters, meaning or the method of presentation and colours, thereby causing confusion to consumers when they select goods or services bearing such mark

The goods/services bear an allegedly infringing mark/sign which is identical or substantially similar or has a relationship in terms of function and utility with, and has the same distribution channel as, the protected goods/services.

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] The First Circuit (the United States Court of Appeals for the first circuit) uses eight Pignons factors for determining likelihood of confusion in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981): (1) the similarity of marks; (2) the similarity of the goods (or, in a service mark case, the services); (3) the relationship between the parties’ channels of trade; (4) the juxtaposition of their advertising; (5) the classes of prospective purchasers; (6) the evidence of action confusion; (7) the defendant’s intent in adopting its allegedly infringing mark; and (8) the strength of the plaintiff's mark

[2] The Second Circuit weighs Eight Polaroid Factors in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961): (1) strength of the trademark; (2) similarity of marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may bridge the gap by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market

[3] The Fifth Circuit considers eight factors in Am. Rice Inc. v. Producers Rice Mill, Inc.,

518 F.3d 321, 329 (5th Cir. 2008): (1) strength of the plaintiff’s mark; (2) similarity of design between the marks; (3) similarity of the products; (4) identity of retail outlets and purchasers; (5) similarity of advertising media used; (6) the defendant’s intent; (7) actual confusion; and (8) degree of care exercised by potential purchasers.

[4] The Federal Circuit uses the 13 DuPont factors in re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), which is also used by the USPTO and its TTAB, comprising:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. `impulse' vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, `family' mark, product mark).

(10) The market interface between applicant and the owner of a prior mark. . . .

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

[5] Three defenses to trademark infringement claim that may be accepted subject to case by case basis and quality of evidence consist of: (1) circulating, importing, exploiting utilities of products which were lawfully put on the market including overseas markets, except for products put on the overseas markets not by the mark owners or their licensees. In other words, Vietnam accepts the market grey or exhaustion doctrine (also known as first sale doctrine); (2) using marks identical with or similar to protected geographical indications where such marks have acquired protection in an honest manner before the date of filing the application for registration of such geographical indication; (3) using in an honest manner people's names, descriptive marks of type, quantity, quality, utility, value, geographical origin and other properties of goods or services