International trademarks protection

International trademarks protection – legal lessons for Vietnamese enterprises

We would like to introduce an article by Lawyer Le Quang Vy and Paralegal Le Kieu Phuong Cac, titled “International Trademark Protection – Legal Lessons for Vietnamese enterprises” was published on the Vietnam Lawyer electronics magazine on 12 June 2021.

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(LSVN) – Intellectual property rights (“IPR”) is a legal term used to refer to the rights of the subject to intellectual property, including copyright and related rights to copyright, industrial property rights and rights to plant varieties [1]. Depending on different intellectual property objects, the prerequisites for protection, scope and content of IP rights for each intellectual property object will be different. For a mark that is a sign used to distinguish goods and services of different subjects, the owner of the mark will have industrial property rights, including the right to use and the right to allow others to use the mark, prevent others from using the mark and dispose of the mark. In addition to the IP Law with regulations on the protection mechanism of IPR within the territory of Vietnam, Vietnam has also joined bilateral and multilateral international treaties to facilitate the protection of Vietnamese enterprises’ IP rights in general, and industrial property rights for trademarks in particular, in many countries around the world.

When do IP rights arise?

The IP Law divides two groups of arising IP rights (1) naturally arising; (2) arising on a registration. For the group of naturally arising rights, it is copyright and related rights. This means that the IPR of a literary, artistic and scientific work arises since the author creates the work in a certain material form. The law does not require authors to register for a certificate of copyright or related rights to be protected, but the registration procedure is only for the purpose of the author escaping from the burden of proof when a copyright dispute occurs.

In contrast, the group of rights arising on the basis of registration includes industrial property rights such as: inventions/utility solutions, industrial designs, design and layout of semiconductor integrated circuits, trademarks, geographical indications, and the law only protect IP rights when these objects are registered with the State management agency in charge of industrial property (the National Office of Intellectual Property of Vietnam) in accordance with the specified forms and conditions. The protection title for the mark (or certificate of trademark registration) is valid for protection throughout the territory of Vietnam from the date the National Office of Intellectual Property issues a decision to grant the Certificate of protection and takes effect up to the end of ten years from the date of application, and can be renewed many times, each ten years. Industrial property rights to a well-known mark are established on the basis of widespread use that makes the mark well-known without having to carry out registration procedures at the National Office of Intellectual Property.

In multilateral international treaties, such as the Agreement on Trade related aspects of Intellectual Property rights (TRIPS Agreement), the Madrid Agreement on international trademark registration in 1891, as amended in 1979 and the Protocol relating to the Madrid Agreement of 1989, or under bilateral international treaties to which Vietnam is a member, such as the Vietnam-US Trade Agreement (BTA) dated 13 July 20000, industrial property rights to trademarks were also established on the basis of recognition by state management agencies through trademark registration in the requested country.

How can Vietnamese trademarks not be registered for possession in the international market?

The registration of trademark protection is the legal basis to identify the owner of the right to the mark under which the enterprise is doing business to avoid any competition with other businesses. Protected trademarks are valuable IP assets that exist like other tangible or intangible assets of an enterprise. IP assets are also valued, transferred, licensed to use (Trademark License), leased, etc. among the subjects. It can be said that IP assets are considered as a barometer to assess the reputation of enterprises in the market. Therefore, without registration, the trademark will not be protected by law. This will keep the mark always in a state that can be registered for possession at any time.

With the aforesaid importance, Vietnamese businesses need to be aware that Vietnam is actively participating in the international market through a series of bilateral and multilateral trade agreements. Owning a brand with a good image and reputation will be a competitive advantage over its competitors. Therefore, in order to prevent their trademark from being registered for possession, enterprises need to conduct international registration of trademarks in two ways:

Method 1: Register under the Madrid Agreement and the Madrid Protocol through the World Intellectual Property Organization (WIPO).

To register under this form, the mark intended for international registration must ensure that (i) the organization or individual owning the mark bears the nationality of a country that is a member of the Madrid System; (ii) the mark is of Vietnamese origin; (iii) the basic registration application has been filed with the National Office of Intellectual Property of Vietnam or has been granted a certificate of trademark registration by the National Office of Intellectual Property [2].

Trademark registration at the International Bureau is valid for 10 years, renewable (Article 6.1 of the Madrid Protocol) and is protected in the countries where the international applicant or the owner of the international registration according to international requirements (Articles 3bis & 3ter of the Madrid Protocol). It should be noted, however, that the registration office in the Member State for which an international application is requested has the right to refuse protection of a mark when the mark has been registered directly with the home office under the Paris Convention for the Protection of Industrial Property (Article 5.1 of the Madrid Protocol).

Method 2: Register your trademark directly with the Intellectual Property Office of each country through an intellectual property representative in the country you want to register (also known as the Designated Country). The owner wishing to register a trademark in another country must go through an industrial property representative recognized by that country. Unlike the previous method, the trademark is not required to be filed for trademark registration at the National Office of Intellectual Property of Vietnam before international registration.

Registration in the designated country will depend on the laws of the designating country, the opinion of a third party on the grant of a Trademark Protection Certificate in the host country, as well as whether the mark meets the statutory requirements to be protected in terms of IP rights such as distinctiveness, possibility of being confusingly identical or similar to other marks, etc.

What is the solution when the trademark is registered for possession?

A fact arises due to many different reasons: Vietnamese enterprises only stop at registering for domestic trademark protection without really paying attention to protecting their exclusive trademark ownership in the international market – specifically the countries where Vietnamese enterprises are doing business or looking to invest in business in the future. Meanwhile, the protection of a trademark is limited to the territory of the country where protection is registered, but does not automatically apply to all other countries in the world. This has resulted in many product marks of Vietnamese origin having lost their right to be protected in many other countries around the world, mainly because enterprises in the host country have earlier registered trademarks with Vietnamese origin.

Typically, there are a number of cases such as Trung Nguyen’s distributor in the United States – Rice Field filed an application to protect Trung Nguyen Cafe’s trademark with the United States intellectual property authorities (USPTO) and the World Intellectual Property Organization (WIPO) in 2000 when the parties were in the process of negotiating cooperation; or the case that the Vinamit product brand of Duc Thanh company has been registered for trademark protection in Chinese by its partner in China. Most recently, ST25 rice has been filed by T&L Global Foods Supply PTY LTD for trademark protection in Australia and some other businesses require trademark protection in the United States, while in Vietnam, ST25 rice has been granted a plant variety protection certificate by the Department of Crop Production, Ministry of Agriculture and Rural Development of Vietnam, according to Decision No. 45/QD-TT-VPBH dated 06 March 2020 of Director of the Department of Crop Production, Ministry of Agriculture and Rural Development grants the Plant Variety Protection Certificate No. 21VN.2020 to Ho Quang Tri Private Enterprises and the ST25 rice breeder, Mr./Ms. Ho Quang Cua, Tran Tan Phuong, Nguyen Thi Thu Huong.

So how to get back the registered trademark? Usually, based on the granted Trademark Protection Certificate and on the basis of the laws of the country in which the trademark is registered for possession. Enterprises need to file an objection to the intellectual property management agency of the host country to prevent the grant of protection for the mark (if the trademark is still in the application examination stage) or the right to request the invalidation of trademark protection (if it has been protected.) The enterprise has an objection and must provide documents and evidences to prove that its claim is grounded for consideration and is approved. Specifically in the case of Trung Nguyen coffee, among the most important evidences is the company’s business license issued in 1996, Trung Nguyen’s trademarks and signboards have been widely used in Vietnam. A list of nearly 400 coffee shops that exist and operate under the franchise of Trung Nguyen and its overseas markets. There is also evidence of annual net revenue from the sale of the company’s products and business books from 1997 to 2001 [3]. In addition, in addition to requesting an objection or requesting the cancellation of the aforesaid protection title, Vietnamese enterprises need to carry out parallel procedures for filing a request for registration of trademark protection to thoroughly resolve the case, guarantee your intellectual property rights.

Trademarks are often registered for possession in the international market by enterprises in the host country that are their own partners or by enterprises of the host country that have the same business line as them. Therefore, more than anyone else, it is Vietnamese businesses that need to be aware of the importance of trademark protection in particular and intellectual property protection in general in the international area, because this brings huge economic benefits such as exclusive rights to own a trademark, including the right to use the mark in the host country. In addition, Vietnamese enterprises also have the right to transfer the right to use the mark through the license agreement (License Agreement), ensuring the legal value to create added economic value for the trademark, especially creating a balanced position when negotiating and competing with enterprises doing business in the same service industry in foreign countries.

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[1] Article 4.1 of the 2005 IP Law (amended in 2009)/

[2] http://www.noip.gov.vn/nhan-hieu

[3] Reference source: http://www.doanhtri.net/tin-nhac-lai-hai-vu-tranh-chap…, last accessed at 10:45 am on June 8, 2021

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