1. Provisions and practices on copyright and trademark dispute in Vietnam
In accordance with the current intellectual property regulations in Vietnam, a Logo may be protected for industrial property rights (trademark protection) or copyright (type of applied art work). Trademark registration dossiers are filed before the Intellectual Property Office of Vietnam (IPVN) of the Ministry of Science and Technology (MOST), while copyright registration dossiers are filed before the Copyright Office of Vietnam (COV) of the Ministry of Culture, Sports and Tourism (MCST), however, in fact, there is still a lack of coordination between these two agencies.
According to Point 39.7 of Circular No. 01/2007/TT-BKHCN dated February 14, 2007 of the MOST on the minimum information source for assessing the protectability of trademarks, there are no specified provisions imperative to search information sources about copyright in Vietnam. Moreover, the copyright to the work (Logo) shall arise automatically since the Logo is completed and presented in a certain material form without registration, so the copyright data is unavailable at the COV.
The application dossier for a Copyright Registration Certificate also does not have a “substantive examination” procedure, whereby it is not required to check whether the work is identical or similar to another’s registered trademark in Vietnam or not.
Therefore, there are cases where the same Logo is registered by two subjects, one party is granted a Trademark Registration Certificate, the other is granted a Copyright Registration Certificate. When two parties have a dispute, the enforcement of the rights of the subjects will face many obstacles, causing them to spend a lot of time and money to pursue the case. In addition, it is difficult for enforcement agencies to review and identify infringements that may delay the handling of cases.
In the framework of this article, we will show a case that has been successfully represented and protected by Ageless on the basis of the Copyright established before the opponent filed a trademark registration application in Vietnam.
2. Ageless successfully protected our client’s legitimate interests in the dispute case between copyright and trademark
2.1. About the case
Our client – Musidor B.V. – one of the companies of the famous rock band “The Rolling Stone”, is the owner and has full and legal rights to use and exploit the image of the logowith the common name “Tongue and Lips logo”. This logo was designed by UK-based designer John Pasche in 1970 and has been used on so many music products and activities of The Rolling Stone band for decades.
“Tongue and Lips logo” is a work protected by copyright under the Berne Convention 1886 for the Protection of Literary and Artistic Works. Besides, Musidor B.V. also registered and protected the trademark for this logo in more than 50 countries around the world, but not registered yet in Vietnam.
By searching in the Intellectual Property Official Gazettes, Ageless found out a party in Vietnam had filed a trademark application containing the logo “The Tongue and Lips logo” for “rental of temporary accommodation services; accommodation bureau services; restaurant services” in Class 43.
When conducting an actual investigation, we discovered that this party had used the Logo for a hotel in Hanoi as well as in commercial activities, websites and social networking accounts such as Facebook, Instagram, YouTube, etc. without the permission of Musidor B.V.
2.2. Our actions
In order to protect the legitimate interests of Musidor B.V, Ageless has taken the following measures:
- Sending Cease & Desist (C&D) Letters to the infringer;
- Opposing against the grant of a certificate for the infringer’s trademark registration application before the IPVN;
- Representing clients to register for trademark protection “Tongue and Lips logo” in Vietnam.
First of all, on behalf of our client, we sent a C&D Letter to the infringer, requesting the withdrawal of the adverse trademark application and immediately stop using the “Tongue and Lips logo” trademark. However, the infringer is not willing to cooperate.
Immediately, we represented Musidor B.V. file an opposition before the IPVN, requesting not to grant a Trademark Certificate for the above Logo on the following grounds:
+ Firstly, according to Article 3 of the Berne Convention, because the author is a British national – a member of the Berne Convention and the expression of “Tongue and Lips logo” is applied art work so it is protected by copyright under Vietnamese law. As a member of the Berne Convention, Vietnam is responsible for copyright protection for authors and copyright holders of other countries that are party to the Convention.
The infringer’s trademark contains an image identical to the work “Tongue and Lips logo” by Musidor B.V., used for commercial activities without the permission of Musidor B.V. Therefore, they infringed the pre-established copyright of Musidor B.V.
The tough spot is the legal provisions on the conflict between trademarks and copyrights are unclear. Moreover, according to the provisions on protection conditions for trademarks, the visual signs must be “identical or confusingly similar to the images of characters and images in other people’s works that are widely known” is rejected. In many cases, the citation of copyright to oppose the trademark was rejected by the IP Vietnam.
+ Secondly, the mark “The Tongue and Lips logo” by Musidor B.V. is a well-known mark, widely used and known trademark, protected by trademarks in more than 50 countries around the world before the time the infringer files a trademark application in Vietnam.
Well-known trademarks are established on the basis of use indepentdently from registration procedures. To prove that it is a famous trademark in Vietnam is not easy. In this case, the basis of prior copyright is the main one, the collection of evidence about famous trademarks to prove that the trademark is also the work “The Tongue and Lips logo” by Musidor B.V. is widely known, has a lot of reputation, solidifies the basis of copyright.
At the same time, according to the “first to file” principle, Ageless advises Musidor B.V. to immediately file a trademark registration application in Vietnam to avoid arising unnecessary disputes with other parties. The succeed ability of this registration depends on the result of the infringer’s trademark objection.
After consideration, the IPVN accepted our objection and promulgated a Decision to refuse trademark protection to the infringer due to its confusingly similar to the applied art work “The Tongue and Lips logo” by Musidor B.V. according to Article 39.4(g) Circular No. 01/2007/TT-BKHCN.
At the same time, the infringer had to cease the actual use of the infringing trademark.
Along with that, we have also successfully assisted our clients in registering for trademark protection “The Tongue and Lips logo” in Vietnam.
3. Advice for owner of Logo
Although the above case was successful, it is undeniable that the owner had to spend a lot of time, money and other resources. Therefore, in case of having a business plan in Vietnam, the owners of Logo should consider protecting logos in both forms of copyright and trademark registration in Vietnam as soon as possible.
Should you need more information or require advice on copyright and trademark registration in Vietnam as well as other IP matters in Vietnam, Laos, Cambodia and Myanmar, please do not hesitate to contact us via email: firstname.lastname@example.org