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How to trademark?

As we may know, the Trademark’s main function is to help customers to distinguish products (goods or services) of one owner from identical or similar products of another owner. When customers are satisfied with one product, they are willing to re-buy or re-use such products in the future. For that reason, the producers have to find the way to distinguish their products from others 
 Making a decision to create and choose one trademark, it is advisable for the owner to pay attention to 06 following significant notes:



1. To make sure if the elements/signs, which are chosen, meet all legal requirements  to be considered and protected as a trademark


To be functional as a trademark, in accordance with available regulations, signs must (i) have inherent distinctiveness and (ii) distinguish from the prior filed/registered mark for similar/identical goods/services because Vietnam adopts first-to-file principle.
For example: The following signs are not accepted for protection as a Trademark: 
- A sign is identical to a social organization, i.e. WHO, APEC, etc.

   












Application No. 4-2009-15176 (Source: IP Digital Library)

- Or a sign contains an image or name of one country:

 




Application No. 4-2008-14917 (Source: IP Digital Library) 

 - Or sign is identical to a geographical name:
   










Application No. 4-2014-24197 (Source: IP Digital Library)
(Hoi An is an ancient town in Vietnam)

2. Conducting a pre-filing trademark search to ensure the chosen Trademark is not identical or confusing similar to any prior filed/registered trademark  


As mentioned in Item 1 above, Vietnam regulations adopts first-to-file principle. Hence, if later-filed marks are considered as confusingly similar to any prior filed/registered mark for similar/identical goods/services, they would be rejected by the National Office of Intellectual Property of Vietnam (NOIP).
For example: Lanvie vs Lavie
 
is considered as confusingly similar to prior registration for 

 
                            Application No.  4-2011-07707
                       Trademark Registration No.111095


3. Ensuring the Trademark is easy to read, easy to write, easy to pronounce, easy to remember and applicable to all means of advertisement. 
For example:
The mark “AKDMKS” under Application No. 4-2004-07771 is considered as difficult to pronounce and remember, thus, cannot protected as a trademark in Vietnam.

4. Checking the registrability of the domain name corresponding to the chosen Trademark

For example: 
Trademark:                                                                              Domain name
 is corresponding to  www.vietthink.com.vn

5. Checking the registrability of the company name which is corresponding to the chosen Trademark. 

For example:
Trademark:                                                                 Company name
  is corresponding to www.vietthink.com.vn


6. Ensuring the trademark does not disregard others or other beliefs or religions or their cultural heritage, and ensuring the trademark implies no negative meaning both in mother language and in any language spoken in the countries that your company potentially targets to. 

The matter is also mentioned in Item 1 above, this is called “inherent distinctiveness” in accordance with regulations in Vietnam. In case the chosen Trademark falls in the case, it will be rejected based on absolute ground.

For example: Reebok®, a running shoes company, launched one model of shoes for women in 1995 labelled “SUCCUBUS”. Clearly at that time could no one in the company know “SUCCUBUS” means “an evil in a female form who exhausts man by sexual intercourses while they are sleeping”.  As a result, Reebok suffered a severe damage by launching this brand new products and had to revoke all products and images labeled “SUCCUBUS” out of the store and replace them by other products in a new brand name. 
General Motors launched new products in a brand name Chevy Nova in South America, while they did not know “no va” means “the car cannot run” in Spanish. After the company found out the reason why no car was sold, they had to change the brand name to Caribe or Caribbean in Spanish-speaking markets. 

In conclusion, the selection and creation of a trademark initially are used to be thought to be a simple step but in fact it is a process that requires a thorough study and investment in a strategy to build a company’s brand name. If one trademark is selected, a big amount of money will be paid for marketing purposes including advertisement and printing. Therefore, one trademark, if not registered by easy selection or may be considered as infringement to other registered trademarks, will lead to not only financial damage but also loss of time and effort for building another trademark. Whereas, a trademark, if carefully selected, will help minimize the risks in the market, thus laying firm foundation to step by step build up a valuable brand name of the company.

Hoang Thuy Anh
Deputy Manager of IP Division 
Vietthink Law Firm & IP Agent




Last updated: 05/29/2019
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