1. Trademark disclaimer in Vietnam and its role
Trademark disclaimer in Vietnam or “disclaimer statement” is generally understood as an element that plays no separate function but can be contained in a trademark if the whole mark acquires the status of inherent distinctiveness.
Given that a disclaimer is not separately protected in its own right, it has an essential meaning in the determination of the scope of trademark protection in Vietnam. Additionally, being aware of the disclaimers of a prior registered trademark, the holder of an intended-to-file trademark would be assured that he may possibly add such terms to his trademark without it being put in jeopardy by that prior mark. Therefore, it is quite important to identify if a trademark includes any disclaimers.
2. How to identify disclaimers when applying for trademark in Vietnam
In Vietnam, given the absence of the relevant regulation regarding the definition of a disclaimer, the IPVN Examiner and trademark holders could base it on Article 74.2 of the Vietnam IP Law (When a sign shall be deemed to be indistinctive), to determine possible disclaimers for a trademark. Accordingly, the potential trademark disclaimer in Vietnam may be:
- Simple shapes and geometric figures, numerals, letters, or scripts of uncommon languages;
- 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;
- Signs describing the legal status and business sector of business entities;
- Signs indicating the geographical origin of goods or services.
The followings are some stark examples for trademark disclaimer in Vietnam
3. Who decides the trademark disclaimers in Vietnam?
According to point 15.7 of Circular No. 16/2016/TT-BKHCN dated June 30, 2016, if the trademark has elements ineligible for separate protection (the disclaimer), the Notice of invitation to pay the trademark grant fee shall specify that the application is granted, explain ineligibility for separate protection (the disclaimer), and that the applicant may express his or her opinion within 03 months. That means the disclaimers are decided by the IPVN Examiners and the trademark Applicants may appeal if their expectation is not in line with the Examiner’s viewpoint.
In fact, The Applicant may give their own opinion of trademark disclaimers in Vietnam, if any, at the stage of filing, that will be considered only as a reference by the Examiner later on. However, given that the Applicant are not required to express their opinion of the disclaimer at the beginning, they may wait for the Examiner’s Notice of disclaimer(s) before taking further action, if necessary.
In case you require more information or require advice on trademark in Vietnam, Laos, Cambodia and Myanmar as well as other IP matters, please do not hesitate to contact us via email: firstname.lastname@example.org
More information about trademark protection in Vietnam can be found HERE