“Trademark is Wholly Protected. No Separate Protection is Made to the Element…” or Trademark Disclaimers in Vietnam | “Trademark is Wholly Protected No Separate Protection is Made to the Element…” or Trademark Disclaimers in Vietnam

“Trademark is Wholly Protected. No Separate Protection

is Made to the Element…” or Trademark Disclaimers in Vietnam

Senior Partner Le Quang Vinh

Bross & Partners

Vietnam Reg. 318080	US Reg. 5,519,759

Class 29: Milk, ice cream, yogurt, cheese, soy milk	Nhóm 30: Cà phê, ca cao, trà
Trademark is wholly protected. The verbal elements “R”, “Grow Plus” are not protected separately.	No claim is made to the exclusive right to use “café Phin uong lien” and the representation of phin filter apart from the mark shown

How Does “Trademark is Wholly Protected. No Separate Protection is Made to the Element…” Mean?

“Trademark is wholly protected. No separate protection is made to the element…” (also widely known as “disclaimer statement”) is a conclusion made by the Intellectual Property of Vietnam (“VNIPO”) stating that the unregistrable sign (portion) though descriptive of a product (devoid of distinctive character) is not required to physically remove from the applied-for mark because the applied-for mark is, as a whole, still considered as a trademark (indicator of commerce of a particular product). For example, the signs "Grow Plus", "café PHIN uông lien" and the represeation of phin filter, that are merely descriptive of the respective milk and coffee products, are still allowed to appear in the Vietnam registration 318080 and US registration no. 5,519,759. However, both the USPTO and VNIPO concluded that those descriptive portions cannot be claimed to exclusive use apart from the registered trademark shown.

Practice of Determination of “Trademark Disclaimer” in Vietnam

Here are some examples illustrating the practice of inclusion of trademark disclaimer statement when the VNIPO grants or refuses an applied-for mark:

Registered Mark /Refused Mark	Trademark Disclaimer by VNIPO	Comments
Reg 426239 Class 30: Coffee, etc.	Trademark is overally protected. No separate protection is made to "Energy Coffee - Life-changing Coffee", "THE No.1 COFFEE!", "Paper Filter Coffee", "Energy Coffee - Life-changing Coffee", coffee bean shape coffee, coffee cup shape.	Product packaging (trade dress) may be registrable as long as it contains some distinctive portions, eg. in this case, Trung Nguyen Legend, logo
Reg 424949 Class 42: Coffee shop, restaurant	Trademark is entirely protected. No separate protection is made to the Chinese characters	The entire Chinese text (transliteration: ying: prominent, remarkable; ge: sing, sing; hun: soul) are exclusion signs without trademark function. Only the Latin transliteration put under Chinese characters are protected
Reg 270480 Class 29: milk and dairy products	Trademark is entirely protected. No separate protection is made to the figurative element of a cow’s head	Device of bullhead is descriptive of milk but its unique expression is regarded capable of creating a memorable visual impression, so it is still eligible for protection. However, the disclaimer statement “no separate protection…” included herein is probably unnecessary
Reg 281944 Class 12: bycycle, motorcycle	Trademark is wholly protected. No separate protection is made to "Thế giới xe đạp", cog-wheel device	Both of the signs of gear and words "Thế giới xe đạp” (the world of bicycles)" are descriptive, but their combination of which the sign of a gear shaped as half a leaf device is still sufficient to make the applied-for mark visually impressive to qualify as a trademark as a whole.
IRN 824804 Class 30: café	No disclaimer recorded. This case is confusing in determining the scope of protection because while reg. 150500 as the example below is disclaimed against devices of seed of coffee and a cup, no disclaimer recorded on International Reg. 824804	Initially rejected under Section 6.2c of Decree 63/1996 as amended because of lack of trademark function. Upon the submission of wide use evidence, the VNIPO withdrew its refusal and granted protection on August 24, 2006.
Reg 150500 Class 30: café etc.	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
Reg 57231 Class 03: Cosmetics	Trademark is wholly protected. Only verbal element “ROMANO” is protected	This is a three dimensional trademark (shape mark) 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 subject to protection?
IRN 1028578 Class 33: Alcoholic drink	No figurative element appearing in the mark	3D trademark is rejected by Section 74.2b of the IP Law
Reg 171511 Class 29: Milk Disclaimer: none Reg 190511 Class 29: Milk Trademark is wholly protected. "Full and balanced nutrition", "a", "R" are not protected separately.	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 Abbott’s reg. nos. 171511 and 190511 is disclaimed while reg. no. 166534 is disclaimed.

3 Practical Lessons

Three useful lessons may be learned from the practice of determination of trademark disclaimer in Vietnam:

1. “No separate protection is made to…” is a legal rule with a double meaning, specifically the VNIPO does not require you physically remove an indistinctive portion out of an applied-for mark provided that such applied-for mark has, viewed as a whole, distinctive character, and on the other hand, “no separate protection is made to…” also implies determining the scope of protection of a registered trademark by preventing the trademark owner from claiming the exclusive right to use that descriptive portion separated from the registered, and thereby it may help limit the possibility of abuse of his/her trademark right enforcement.

2. In general, all hieroglyphs (Japanese, Chinese, and Thai) are excluded from protection because they cannot be read and perceivable by the Vietnamese consumers. Where such hieroglyphs are combined with their Latin transliteration or are presented in the form of unique pictographic signs, or are accompanied by other unique figurative element, they may be globally protected with no protection of themselves.

3. “No separate protection is made to…” also implies that businesses that have chosen a suggestive mark, particularly including trade dress as his/her brand name for the purpose of easily marketing their products can still have a chance to register them successfully.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.