Vietnam: Is it considered as an act of infringement of rights to the protected mark that is Aquafina bottled water when naming AquaTina or AquaNewa bottled water?
What are the regulations on distinctiveness of marks in Vietnam?
Pursuant to Article 74 of the 2005 Intellectual Property Law on the distinctiveness of marks in Vietnam as follows:
- A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of this article.
-. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
+ Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
+ Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
+ Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
+ Signs describing the legal status and business sector of business entities;
+ Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
+ Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
+ Signs identical with or confusingly similar to another person's mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
+ Signs identical with or confusingly similar to another person's mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
+ Signs identical with or confusingly similar to another person's mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
+Signs identical with or similar to another person's trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
+ Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
+ Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
+ Signs identical with or insignificantly different from another person's industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.
Is it considered as an act of infringement of rights to the protected mark that is Aquafina bottled water when naming AquaTina or AquaNewa bottled water?
According to Article 129 of the 2005 Intellectual Property Law, acts of infringement of rights to marks, trade names and geographical indications are as follows:
- The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:
+Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;
+ Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;
+Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;
+ Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners.
- All acts of using commercial indications identical with, or similar to, trade names of others which were used earlier for the same or similar type of goods or services, which cause confusion as to business entities, establishments or activities under such trade names shall be deemed to be infringements of the right to the trade name.
- The following acts shall be deemed to be infringements of the right to protected geographical indications:
+ Using protected geographical indications for products which do not satisfy the criteria of peculiar characteristics and quality of products bearing geographical indications, although such products originate from geographical areas bearing such geographical indication;
+ Using protected geographical indications for products similar to products bearing geographical indications for the purpose of taking advantage of their reputation and popularity;
+ Using any sign identical with, or similar to, a protected geographical indication for products not originating from geographical areas bearing such geographical indication, and therefore misleading consumers into believing such products originate from such geographical areas;
+ Using protected geographical indications of wines or spirits for wines or spirits not originating from geographical areas bearing such geographical indication, even where the true origin of goods is indicated or geographical indications are used in the form of translations or transcriptions, or accompanied by such words as "category," "model," "type," "imitation" or the like.
Thus, in case the use the name "AquaTina" or "AquaNewa" bottled water causes confusion, misleading impressions as to the relationship between users of such signs and owners of Aquafina mark, this act is eligible for the acts of infringement of rights to the protected marks.
What are the penalties for acts of infringement of rights to marks in Vietnam?
According to Article 13 of Circular 11/2015/TT-BKHCN stipulating the penalties for acts of infringement of rights to marks as follows:
The identification of acts infringing upon rights to marks must comply with Articles 5 and 11 of revised Decree No. 105/2006/ND-CP and the following guidance:
- Grounds for assessing confusability of a sign with a protected mark include:
+ Scope of protection in whole and in each component of the mark; similarity between the sign and the mark in whole and in distinctive components, especially those making strong impression on consumers;
+ Relevance of the goods or service by function, utility or composition; practice and custom of sale, purchase, distribution, selection and use of the goods or service; conditions, methods and places of display, distribution, marketing, promotion and sale and purchase of the goods or service;
+ Characteristics and level of attention of consumers when selecting, purchasing and selling the goods or service;
+ Other criteria such as practical use and protection of similar marks for the same goods; effect of other elements suggestive of the relation between the goods or service in question and the protected goods or service;
dd/ Evidence of consumer confusion consequences may be used to support the assessment of confusability of the use of the sign but does not constitute a compulsory condition for making a conclusion on confusability of the use of the sign.
- Identification of elements infringing upon rights to marks:
+ In case of use of a sign identical to a mark for a goods or service identical to that stated in a mark registration certificate or certificate of internationally registered mark protectable in Vietnam or the Official Gazette of international registration of marks of the World Intellectual Property Organization, it is unnecessary to examine the possibility of consumer confusion about the goods or service bearing the mark;
+ In case of use of a sign identical to a mark for a similar or relevant goods or service; use of a sign similar to a mark for a goods or service identical or similar or relevant to that on the list of goods and services bearing marks as stated in a mark registration certificate or certificate of internationally registered mark protectable in Vietnam or the Official Gazette of international registration of marks of the World Intellectual Property Organization, it is necessary to examine the possibility of consumer confusion about the goods or service bearing the mark.
- Identification of elements infringing upon rights to well-known marks:
+ In case of use of a sign identical or similar to a well-known mark or sign in the form of definition or transcription from a well-known mark for any goods or service, including also goods or service neither identical nor similar nor relevant to that on the list of goods and services bearing well-known marks, it is necessary to examine the possibility of confusion about the origin of goods or service or the relation between the user of such sign and the owner of the well-known mark;
+ In case the use of a sign identical or similar to a well-known mark specified at Point a. Clause 3 of this Article cannot cause a confusion about the origin of a goods or service but causes a misleading impression on consumers about the relation between the user of such sign and the owner of the well-known mark, it shall also be regarded as an act infringing upon industrial property rights;
+When filing a request for handling of an infringement against a well-known mark, a rights holder shall provide evidence that such mark is well known in Vietnam according to the criteria prescribed in Article 75 of the Law on Intellectual Property, regardless of whether or not it has been registered for protection in Vietnam;
+ Before deciding to carry out procedures for handling the infringement, the agency competent to handle infringements shall base itself on the criteria prescribed in Article 75 of the Law on Intellectual Property to consider whether or not a mark is well known in Vietnam. It may exchange professional opinions with the National Office of Intellectual Property and/or consult an advisory council.
In case a well-known mark in Vietnam is recognized according to the civil procedures or under a recognition decision of the National Office of Intellectual Property, the infringement- handling agency may base itself on relevant documents to consider the recognition of the mark regarded as well-known in Vietnam if the recognition of well-known marks by the above-said agencies at the time of infringement handling request is still appropriate.
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