Nowadays, the well-known trademark is a type of intangible asset of tremendous value and gives a competitive advantage for companies than their rivals. The customers may be willing to pay more money for product that its trademark has become well known and them still happy. This is the reason why the businesses are also increasingly interested in development, protection and enforcement of well-known trademarks.
In Vietnam, a well-known trademark would be protected in accordance with the Intellectual Property Law and Article 6bis of the Paris Convention. A well-known trademark is protected, irrespective of whether they are registered or not. However the owners have to prove the well-known characters and their trademarks satisfy the conditions for being considered well-known. If a well-known trademark is recognized under a civil proceeding or under a recognition decision of the National Office of Intellectual Property, NOIP, that well-known mark shall be recognized in the national list of well-known trademarks. However, due to lacking of detail guideline and specific criterion, no trademark is recognized on the list. The lack of the list and specific rules for determining whether a mark is well known has given not only the administrative authorities but also the owner difficulty and inconsistency in this regard.
To remedy this situation, The Vietnam Ministry of Science and Technology (MOST) in cooperation with INTA is starting up “The Well-Known Trademark Project”. This is the first time a project is meant to build links for cooperation between government and the private sectors. The project reviews Vietnam’s well-known trademark legislation and application thereof in practice for compliance with International commitments and best practices. One of the ultimate targets is to amend and supplement to the defect current legal provisions on well-known trademarks and improve enforcement effectiveness toward this type of trademark.
The project will be processed in three stages: the “Research Stage” (Stage 1), the “Discussion Stage” (Stage 2) and the “Training Stage” (Stage 3). Currently, the Project is begun to implement. MOST will select the 15 trademarks to conduct research among applied trademarks involved in the project. After being selected, the owners of 15 trademarks shall be provided information and evidences to prove their trademarks are well-known. Researchers will study, analyze the provisions of Vietnam legal together with the practice on the well-known trademark.
In todays marketplace, well-known trademarks bring huge commercial value for trademark owners. Especially protection for well-known trademark in Vietnam is not confined to use of similar trademarks used for goods or services identical or similar, but also to use in relation to goods or services which are not identical or dissimilar to the well-known trademark if the use of such mark may affect the distinctiveness of the well-known trademark or the mark registration is aimed at taking advantage of the reputation of the well-known trademark (Under article 74.2.i, IP Law).
Although being in the research stage, the selected marks have oppotunity to become 15 first precedent example in the well-known trademark in Vietnam under official procedures. This is an optimistic sign for the protection of well-known trademark in Vietnam.
In addition, it should be noted that the enforcement authorities in Vietnam still limit in dealing with the infringement of rights to well-known marks which have not yet recognized on the national list. Hopefully that the project shall promote enforcement authorities bolder in these activities.
Furthermore, with diverse participants include Vietnam IP organizations, management and enforcement, IP law firms (INTA members) and trademark owners, the project is expected to improve legislation and practices with respect to well-known trademark in Vietnam. Since the solid legal system, the enterprises will more interested in building and development their well-known trademarks. Therefore, the economy as well as of science and technology in Vietnam will be better.
