If a well-known mark is not registered, can it be protected in Vietnam?

If a well-known mark is not registered, can it be protected in Vietnam?

I posted to learn about some regulations related to intellectual property rights and have questions that I would like to ask you to answer. Specifically, let me ask: Is a famous unregistered mark protected? Hope to receive a response soon. Sincerely thank!

Answer: Regarding this issue, Point a, Clause 3, Article 6 of the 2005 Intellectual Property Law has the following provisions:

3. Industrial property rights shall be established as follows:

 (a) Industrial property rights to an invention, industrial design, layout design, mark or geographical indication shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member. In the case of a well known mark, industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures;

 (b) Industrial property rights to a trade name shall be established on the basis of lawful use thereof;

 (c) Industrial property rights to a trade secret shall be established on the basis of lawful acquirement of the trade secret and maintaining confidentiality thereof;

 (d) The right to prevent unfair competition shall be established on the basis of competitive activities in business.

=> Thus, according to this regulation in Vietnam, industrial property rights to famous marks are established on the basis of use, regardless of registration procedures.

To better understand this issue, we also provide you with some additional information about famous marks as follows:

A famous mark is understood as a mark widely known by consumers throughout the territory of Vietnam. According to this regulation, famous marks are evaluated based on the following criteria:

1. The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

2. The territorial area in which goods or services bearing the mark are circulated.

3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

4. Duration of continuous use of the mark.

5. Wide reputation of goods or services bearing the mark.

6. Number of countries protecting the mark.

7. Number of countries recognizing the mark as a well known mark.

8. Assignment price, licensing price, or investment capital contribution value of the mark.

In addition, in a lawsuit for infringement of intellectual property rights over a famous mark, the plaintiff or defendant needs to prove that he or she is the owner of the famous mark. This proof will be based on the criteria for evaluating a famous mark mentioned above and explaining the process of use to make the mark famous in Vietnam.

Above is the answer about famous mark registration.

What is criteria for evaluation of whether or not a mark is well known in Vietnam?

I have learned about some famous marks in the world and have a question about what criteria our country's intellectual property law is based on to evaluate a mark as famous, so I would like to ask you. Hope to receive an answer soon. Sincerely thank!

Answer: A famous mark can be understood as a mark widely known by consumers throughout the territory of Vietnam.

Therefore, in Article 75 of the Intellectual Property Law 2005, there are provisions on the criteria to be considered when evaluating a mark as famous as follows:

The following criteria shall be taken into account when considering whether or not a mark is well known:

1. The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

2. The territorial area in which goods or services bearing the mark are circulated.

3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

4. Duration of continuous use of the mark.

5. Wide reputation of goods or services bearing the mark.

6. Number of countries protecting the mark.

7. Number of countries recognizing the mark as a well known mark.

8. Assignment price, licensing price, or investment capital contribution value of the mark.

Above is an answer to the criteria considered when evaluating a mark as famous.

Is the term of protection for well-known marks and marks the same in Vietnam?

I heard that famous marks do not need to go through registration procedures to still be protected. So is the protection period the same as the protection period for a mark?

Answer: In Clause 16 and Clause 20, Article 4 of the 2005 Intellectual Property Law, it is stipulated:

16. Mark means any sign used to distinguish goods or services of different organizations or individuals.

20. Well known mark means a mark widely known by consumers throughout the territory of Vietnam.

In Clause 6, Article 93 of the Intellectual Property Law 2005, there is a regulation on a certificate of registered mark shall be valid from the grant date until the end of ten (10) years after the filing date and may be renewed for many consecutive terms, each of ten (10) years.

As for famous marks, in Article 75 of the Intellectual Property Law 2005, the following criteria are considered when evaluating a mark as famous:

1. The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

2. The territorial area in which goods or services bearing the mark are circulated.

3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

4. Duration of continuous use of the mark.

5. Wide reputation of goods or services bearing the mark.

6. Number of countries protecting the mark.

7. Number of countries recognizing the mark as a well known mark.

8. Assignment price, licensing price, or investment capital contribution value of the mark.

The time limit for a famous mark is until this mark no longer meets the above evaluation criteria in Vietnam. This shows that the term of protection of famous marks and marks is not the same.

Above is the consulting content.

Best regards!