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Many brand owners are a little bit confused about when deciding whether to apply for color trademark protection in color or black & white[1] in Vietnam. Some of our analyses below may help the right holder to decide for themselves whether to register a trademark in color or black and white.

Is the Vietnamese IP Law Silent?

The IP law and subordination legislation do not mention or suggest brand owners should protect color or black-and-white marks. However, before finding the right answer to this confusing question,  two questions that are more important should be:

(a) Which one has the better scope of protection: color or black-white marks? and

(b) Is the color or black-and-white trademark (assuming registration has been granted) vulnerable to revocation due to a violation of the 5-year continuous use obligation in commerce?

Point d, Clause 1, Article 95 of the IP Law stipulates that a registered trademark if not used by the owner or by a person authorized by the owner within 5 consecutive years before the date of filing of the request for invalidation by the third party on the basis of non-use then such registered trademark may be removed from the trademark register. Whereas Article 124(5) of the IP Law defines only three forms in which a registered trademark is considered "use": (a) attaching a protected mark on goods, goods packaging, business facilities, service facilities, and transaction documents in business operations; (b) circulation, sale, advertising for sale, stockpiling for sale of goods bearing protected trademark; (c) import of goods/services bearing protected trademark.

Hence, the law does not say whether the registered trademark that was in color, of which use according to one of the three forms indicated above in practice is in the black-and-white status, is it obviously considered to be in use or not?. However, in view of the literal wording of the above definition "use" above, the use of that registered trademark may be still be interpreted in a narrow sense, in particular it may be considered not to be the act of "affixing the protected mark on the goods,… ”, if one suspects that the distinctive character of the registered mark is no longer available where it is not used in the market in a color state as registered, which can lead to risk at being invalidated by third party despite the right holder defended himself.

Examination Practice and Comments

To be able to help illustrate better, let's look at the case of an applied-for mark “GS safety & effect” as shown in Table 2 below. Assuming the trademark was applied for registration in black and white, it is likely that it would be totally rejected because the applied-for mark does not have the function to indicate the origin of commerce because (a) "safety & effect" is totally devoid of distinctive character, and (b) GS is a set of 2 letters that cannot be pronounced like a word and therefore does not meet the protection criteria for trademarks (Vietnam grants no protection of marks consisted of two letters unless the two-letter mark has acquired secondary meaning at the time of filing) 

Table 1

In fact, by making the right decision, ie. applying for GS Safety & Effect (Table 2) in color (not black and white) helped this brand owner gain protection after Bross & Partners on behalf of applicant successfully appealed against the NOIP's refusal stating that the applied-for mark was not capable of distinguishing from the cited marks containing GS in the Table 1

Table 2

For color marks upon registration, it should be noted that the color elements are always recorded on the registration, which means that the mark is also protected for the color shown on that registered trademark. Thus, some views suggest that black-and-white trademark registration offers a better scope of protection than a trademark registration because the right holder can still use the registered trademark in any color version then it would be still considered to be using such registered trademark is incorrect because in fact this view has confused and equated the above two legal issues which inherently have different legal meanings.

Some Recommendations

In short, there is no single and unique rule that can be applied to every situation. To determine whether to seek protection of a color or black and white trademark, it is necessary to rely on the “look-and-feel” approach and the case by case basis, but in general it is advisable to answer the following questions in advance:

1. Does the color in the brand/trademark have any important attribute that determines the characteristics of identity of the goods/services or identity of brand or of uniqueness to enable to distinguish from other competitors' commercial source? If the answer is yes, you should register a color mark. If the answer is no, you can apply for a black-and-white trademark.

2. Like question 1, if the color included in the brand is an important attribute that determines the distinguishing characteristic of goods/services but it may be used under different color versions. (unstable use of one color in the market), how to minimize the risk of trademark invalidation due to non-use? The answer is that brand owners should register both color and black and white brands/trademarks into independent applications.

Should you have particular question, feel free to contact us at vinh@bross.vn or mobilephone 84-903 287 057.

Bross & Partners, an intellectual property law firm founded in 2008, regularly ranked as one of the Vietnam's leading intellectual property law firms by reputable legal profession assessment organizations such as the Managing Intellectual Property (MIP), World Trademark Review (WTR1000), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia Leading Lawyers, Asia IP and Asian Legal Business (ALB). Bross & Partners has extensive expertise and expertise to assist clients to protect or defense in complex intellectual property disputes in Vietnam and abroad.