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 trademarkTo 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:
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Application No. 4-2008-14917 (Source: IP Digital Library) |
- Or sign is identical to a geographical name:
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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
|
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 TrademarkFor example:
Trademark: Domain name
| is corresponding to | www.vietthink.com.vn |
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 AnhDeputy Manager of IP Division
Vietthink Law Firm & IP Agent