What signs are ineligible for protection as trademarks?
Pursuant to Article 73 of the 2005 Law on Intellectual Property (as amended and supplemented by Clause 21, Article 1 of the 2022 Law Amending the Law on Intellectual Property), signs ineligible for protection as trademarks include:
- Signs identical or confusingly similar to the national flag, national emblem, or national anthem of the Socialist Republic of Vietnam or of foreign countries, or to international anthems;
- Signs identical or confusingly similar to symbols, flags, emblems, abbreviations, or full names of state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations, or socio-professional organizations of Vietnam or of international organizations, unless permission is granted by such agencies or organizations;
- Signs identical or confusingly similar to the real names, aliases, pen names, or images of leaders, national heroes, or famous figures of Vietnam or foreign countries;
- Signs identical or confusingly similar to certification marks, inspection marks, or warranty marks of international organizations that have prohibited their use, unless the organizations themselves register such marks as certification marks;
- Signs that mislead, cause confusion, or deceive consumers regarding the origin, features, utility, quality, value, or other characteristics of goods or services;
- Signs consisting of the inherent shape of goods or shapes required by the technical characteristics of the goods;
- Signs containing copies of works, unless permission is obtained from the owners of such works.
When is a mark eligible for protection?
Pursuant to Article 72 of the 2005 Law on Intellectual Property, as amended by Clause 20, Article 1 of the 2022 Law Amending the Law on Intellectual Property:
Article 72. General conditions for marks eligible for protection
A mark is eligible for protection if it meets the following conditions:
1. It is a visible sign in the form of letters, words, drawings, images, three-dimensional shapes, or a combination thereof, represented in one or more colors, or a sound mark capable of graphic representation;
2. It is capable of distinguishing the goods or services of the mark owner from the goods or services of other entities.
Accordingly, a mark is eligible for protection when it meets the following conditions:
- It is a visible sign in the form of letters, words, drawings, images, three-dimensional shapes, or a combination thereof, represented in one or more colors, or a sound mark capable of graphic representation;
- It is capable of distinguishing the goods or services of the mark owner from the goods or services of other entities.
When is a mark considered or assessed as a well-known mark?
Pursuant to Article 75 of the 2005 Law on Intellectual Property, as amended by Clause 23, Article 1 of the 2022 Law Amending the Law on Intellectual Property:
Article 75. Criteria for assessing well-known marks
The consideration and assessment of whether a mark is well-known shall be based on some or all of the following criteria:
1. The number of relevant consumers who have recognized the mark through the purchase or use of goods or services bearing the mark, or through advertising;
2. The territorial scope within which goods or services bearing the mark have circulated; 3. Sales revenue from goods or services bearing the mark, or the volume of goods sold or services provided;
4. Duration of continuous use of the mark;
5. Widespread reputation of the goods or services bearing the mark;
6. Number of countries where the mark is protected;
7. Number of countries recognizing the mark as well-known;
8. Price of assignment, price of licensing, or investment contribution value of the mark.
Accordingly, the consideration and assessment of whether a mark is well-known are based on a selection of some or all of the following criteria:
- Number of relevant consumers who have become aware of the mark through the purchase or use of goods or services bearing the mark, or through advertising;
- Territorial scope of circulation of the goods or services bearing the mark;
- Sales revenue from goods or services bearing the mark, or the volume of goods sold or services provided;
- Duration of continuous use of the mark;
- Widespread reputation of the goods or services bearing the mark;
- Number of countries where the mark is protected;
- Number of countries recognizing the mark as well-known;
- Price of assignment, price of licensing, or investment contribution value of the mark.