Protection of Black & white trademark versus colour trademark in Vietnam?

24/05/2022 - 1094 views

In terms of trademark registration, which is the better option, a black and white trademark or a colour trademark in Vietnam?  This long-debated issue arises from the belief that the advantages of a black and white trademark exceed those of a color trademark. 

It mainly concerns two factors: (1) the scope of trademark protection and; (2) the possibility of avoiding a non-use cancellation when using the trademark in Vietnam with colour in practice while it is registered in black and white.

 

1. Does a black & white mark have a broader scope of protection compared to a colour trademark in Vietnam ?

When it comes to the scope of trademark protection, some argue that protection of a black and white mark automatically results in the protection of its colour variations. However, the current IP law and regulation in Vietnam have no provision for asserting such an inference.

Logically, a trademark is registered as it is presented, including its colour. Throughout the processes during which a trademark goes through from its filing to granting stages, the Applicant is required to provide trademark samples and the descriptions of its consistent colours. It is mandatory to provide the exact trademark colour(s) in the Application so it is officially confirmed by the Intellectual Property Office of Vietnam (IPVN) in the trademark certificate.

Following this rule that a trademark is registered as it is shown, trademark colours certainly matter. Consequently, a certificate of protection for a black and white trademark does not cover its colour variations.

 

2. Could a black & white trademark avoid a non-use cancellation in Vietnam if only its colour version(s) is used in practice?

According to Vietnamese IP law, a registered trademark will be vulnerable to a cancellation (invalidation) request by a third party if it has not been used for 5 consecutive years after its registration date. In fact, there is a frequent situation where a trademark is actually used in colour rather than the black & white one that was registered. Trademark holders frequently query if such use could be presented as a justification to avoid the cancellation of the black & white trademark.

In terms of trademark use, Article 5.c (2) of the Paris Convention for the Protection of Industrial Property stimulates: Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark. Consequently, if trademark colour does not play any role in trademark distinctive characters, the evidence of the use of the colour trademark in Vietnam could enable the registered black and white mark to defeat the cancellation request.

Nonetheless, Vietnam IP law and registration do not clarify to what extent creative differences are to be considered as altering the distinctive character of the registered trademark. Given the lack of relevant regulation, it is considered on a case-by-case basis and additionally depends on the Examiners’ objective opinions.

Through the previous cases we have handled, it is can be inferred that:

  • The use of the colour trademark in Vietnam may be considered as the use of the registered black and white mark if the colour mark is just monochrome, for example, the use of may be deemed as the use of
  • The use of colour trademark in Vietnam may not be considered as the use of the registered B&W mark if the former is multicoloured, especially if such combination of colour makes it remarkably different from its black and white variation, for example, the use of would not be deemed as the use of

Generally, for avoiding any possible risk, trademark holders are highly recommended to file applications for all versions of the colour trademark in Vietnam that are put into use. The “better option” should be only considered on a case-by-case basis after consulting local attorneys and IPVN’s practice.

More information about trademark practice in Vietnam can be found HERE.

Should you have any further questions about intellectual property matters in Vietnam, Laos, Cambodia and Myanmar, please kindly contact us via our email address info@ageless.vn.

 

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