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You are cordially invited to refer to a published study report on the protection of well-known trademark in Vietnam funded by the INTA and MoST
(Ngày đăng: 2019-11-07)

You are cordially invited to refer to a published study report

on the protection of well-known trademark in Vietnam funded by the INTA and MoST

 

Email: vinh@bross.vn

 

Introduction

 

Protection of a well-known trademark is an obligation imposed on all member states including Vietnam of the Paris Convention of 1883 and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement) attributing to the formation of the World Trade Organization (WTO).

 

The regime for the protection of well-known trademark is included in the 2005 Intellectual Property Law, in which a well-known trademark (famous trademark) is defined as a trademark widely known to consumers throughout the territory of Vietnam. However, in the past 10 years, there have been many difficulties and iadequacies related to the protection of well-known trademarks arising in both procedures for establishing and enforcing the rights to well-known trademarks[1].

 

First of all, the common phenonmenon of incorrect self-declaration[2] of an earlier trademark is well-known by the National Office of Intellectual Property of Vietnam  (NOIP) trademark examiners, based on which a later filed trademark is rejected regardless of dissimilar goods or services. Secondly, the regular situation of inaccurate equilibrium of the repute and well-knownness of all self-proclaimed well-known marks are the same. Thirdly, there is the situation of reticence and confusion when accepting and resolving disputes or requests for handling of infringement against well-known marks by the enforcement IPR agencies, which is reportedly said due to the absence of specific guidance on how to require, collect and submit relevant evidences proving the stakeholders‘ satisfication of 8-criteria rule as provided in Article 75 of the IP Law

 

The Well-known Trademark Project

 

From the above situation, the Inspectorate of the Ministry of Science and Technology (MoST) in cooperation with the International Trademark Association (INTA) implemented the study project on the protection of well-known trademark. The Project is one of the activities in the framework of the Memorandum of Understanding dated 24 March 2015 between the Inspectorate Department of MoST and INTA on establishing and performing cooperating activities in the field of intellectual property (including enforcement of intellectual property rights) between the Vietnamese Government and private enterprises by studying the laws, executing the cooperating projects and sharing experience regarding trademarks, especially well-known trademarks. The project already deployed in Vietnam from 2015 to 2016 with three main groups of activities: (i) research activities; (ii) workshop / conference and communication activities; and (iii) training activities, factual survey on the application of laws on well-known trademarks[3].

 

The project accomplished with a 190-page research report

 

Honored to be selected as one of the two researchers taking part in the research team of the famous trademark (lawyer Le Quang Vinh of Bross & Partners[4] and Dr. Phan Ngoc Tam - Ho Chi Minh City University of Law), the authors completed and produced a 190-page research report which was approved and highly appreciated by the Project Management Board and the INTA

 

During the implementation of the project, the research team must attend and pass 3 workshops and professional review roundtables with the participation of the the Project Management Board, the representatives coming from the INTA, MoST, enforcement agencies, namely the NOIP, the General Department of Customs and the Anti-Smuggling Investigation Department, the Economic Police Department C46 (now C03), the Market Management Department, courts, EuroCham and the representatives of the stakeholders of selected brand names subject to the research report that joined and funded the project such as Vinacafe, Vinamilk, Ikea, Nike, Petrolimex, Minh Phu, BMW

 

The first workshop was took place on June 16, 2016 at EdenStar Hotel, 38 Bui Thi Xuan, Ho Chi Minh City, the research team must present and listen to the review against an outline of the research report. The INTA representative was quite satisfied with the quality start and had reported on the INTA Bulletin, Vol. 71, No. 12 that is displayed on the INTA home page titled “Successful start to INTA-MOST Well-known Mark Dialogues” [5]. Here are some pictures taken at the workshop:

 

 

 

The second conference was held on September 23, 2016 at Grand Tourane Hotel, Da Nang city. The seminar welcomed the attendance of Mr. Ronald van Tuijl, INTA’s president of 2016, who came to Vietnam for his first time. At the seminar, the research team must present and listen to professional criticism related to the framework proposal for trademark protection. Here are some relevant pictures:

  

 

The third roundtable was organized on June 30, 2017 at Le Hoang Beach Hotel, 244 Vo Nguyen Giap, Son Tra District, Da Nang City. The research team reported the full text of the research result with a 190-page report, listened to scientific reviews by trademark experts from the taskforce. 

 

And finally, on the morning of November 17, 2017, the closing ceremony and announcement of the result of the implementation of the well-known trademark project was held at the Grand Plaza hotel, Hanoi. The ceremony had the attendance of Mr. Louis Chan - Representative of the INTA President Council, Mr. Seath Hays - Chief Representative of INTA in Asia-Pacific region, representatives of some state agencies and businesses and the professional asssociations. Simultaneously with the announcement ceremony, an elaborate 190-page research report was also printed and published by the Science and Technology Publishing House as shown below. Here are some pictures:

 

 

Esteemed readers with interest are cordially invited to read in full text of such 190-page research report (only Vietnamese version is available at present)[6] here:

/image/files/MOST-INTA%20-%20WKTM%20Project%20-%20Final%20Report%20Updated%2003112017%20(clean)%20-%20V02.pdf

 

Bross & Partners has had experience in assisting the clients to prepare and submit dosier and relevant evidence asking for recognition of well-known trademark in Vietnam. We also helped some clients successfully defend against well-known trademark claims in Vietnam, Cambodia[7] and Thailand[8]. Should you have any query, please contact 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 enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.

 

 


[1] Excerpt from the presentation that Lawyer Le Quang Vinh - Bross & Partners was invited to contribute opinions to the Conference on summarizing 10 years of implementing the Intellectual Property Law organized by the NOIP on December 22 and 23, 2016.

[2] Two out of the countless examples can be named comprising: junior mark Bellagio/application no. 4-2009-25326 covering motorbikes and accessories thereof in class 12 was refused under Article 74.2 (e) of the IP Law because the NOIP assumed the junior mark is confusingly similar to the senior mark – the famous trademark Piaggio under international registration no. 336048; or the junior mark MORI LEE/application no. 4-2010-20207 applying for wedding dress, wedding dress and wedding dress rental services of classes 35 & 45 was rejected based on Article 74.2 (g) of the IP Law that the NOIP found that the senior mark LEE in the name of the H.D. Lee Company is widely known to consumers

[3] According to the document of the well-known trademark project coordinated by the Inspectorate of the Ministry of Science and Technology and the International Trademark Association (INTA).

[4] For more about Bross & Partners, please visit us at: http://bross.vn/

[6] The English versions of some parts of a 190-page research report are available and viewable, namely:

  1. FRAMEWORK PROPOSAL FOR WELL-KNOWN MARK PROTECTION: http://bross.vn/newsletter/ip-news-update/FRAMEWORK-PROPOSAL--FOR-WELLKNOWN-MARK-PROTECTION
  2. JAPANESE PERSPECTIVE OF WELL-KNOWN TRADEMARK PROTECTION VIEWED FROM THE JAPANESE SUPREME COURT’S OVERRULING IN CASE H10 (GYO-HI) NO. 85: http://bross.vn/newsletter/ip-news-update/Japanese-perspective-of-wellknown-trademark-protection-viewed--from-the-Japanese-Supreme-Court8217;s-overruling-in-Case-H10-GyoHi-No-85
  3. Viewpoint of the European Union on determining the scope of protection of famous trademarks looked back from the case of Intel Corporation Inc vs. United Kingdom Limited (Case C-252/07): http://bross.vn/newsletter/ip-news-update/Viewpoint-of-the-European-Union-on-determining-the-scope-of-protection-of-famous-trademarks-looked-back-from-the-case-of-Intel-Corporation-Inc-vs-United-Kingdom-Limited-Case-C25207
  4. THOUGH RECOGNIZED AS A WELL-KNOWN MARK AND DEFENSIVE MARK IN JAPAN, INTEL CORPORATION STILL LOST IN THE LAWSUIT INTEL CORPORATION VS. KK INTELGROW AND THE JAPANESE COURT’S INTERPRETATION RELATING TO FAMOUS TRADEMARK PROTECTION LEGISLATION: http://bross.vn/newsletter/ip-news-update/Though-recognized-as-a-wellknown-mark-and-defensive-mark-in-Japan-Intel-Corporation-still-lost-in-the-lawsuit-Intel-Corporation-vs-KK-Intelgrow-and-the-Japanese-court8217;s-interpretation-relating-to-famous-trademark-protection-legislation
  5. AIRBUS DEUTSCHLAND GMBH FAILED TO PREVENT A CHINESE COMPANY FROM DILUTING ITS GLOBAL FAMED BRAND AIRBUS IN CHINA: http://bross.vn/newsletter/ip-news-update/Airbus-Deutschland-GmbH-failed-to-prevent-a-Chinese-company--from-diluting-its-global-famed-brand-Airbus-in-China

[7] Tại Campuchia, bạn đọc có thể tham khảo vụ việc do Bross & Partners là đại diện pháp lý bảo vệ thương hiệu Dielac Pedia của Vinamilk: http://bross.vn/newsletter/ip-news-update/Vinamilk-gianh-chien-thang-trong-vu--khieu-kien-doi-huy-bo-hieu-luc-nhan-hieu-Dielac-Pedia-tai-Campuchia-Cambodia

[8] Tai Thái Lan, Bross & Partners hỗ trợ Công ty cổ phần phân bón Bình Điền bác bỏ thành công phản đối của Carabao Dang Energy Drink liên quan đến thương hiệu Đầu Trâu. Xem thêm: http://bross.vn/newsletter/ip-news-update/Phan-bon-Binh-Dien-gianh-chien-thang-trong-vu-Carabao-Dang-Energy-Drink-phan-doi-cap-nhan-hieu-%E2%80%9Chinh-Dau-Trau%E2%80%9D-vi-ly-do-xam-pham-nhan-hieu-noi-tieng-Carabao-dung-cho-nuoc-tang-luc-tai-Thai-Lan-Thailand

 

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