Since a trademark is registered, the individual/legal entity recognized as the Applicant of the trademark application will be officially acknowledged as the Owner of that trademark. In other words, the trademark now officially becomes the property of the owner, and accordingly, the owner has the exclusive right to use and exploit the property of the trademark as well as take measures to protect the rights of the protected trademark.
Certain trademark owners may believe that once a trademark is registered, ownership will never be lost, and that there is no need to actively use it, and as long as the trademark remains registered and is left unaltered, it will not be invalidated/canceled. Alternatively, there are cases where trademarks are registered for many goods/services outside the scope of the goods/services that the owners actually offer, with the aim of preventing any other individual/organization from using the identical/similar trademark as/similar as theirs, even for goods/services unrelated to theirs, or, in other words, to be simply set aside to be used against future competitors. On the other hand, some owners find that they are unable to register a trademark for the specific goods/services they actually offer, so they switch to registering it for another goods/services, as long as the trademark is protected, and they are certain that this protection in any form is beneficial to their business and that the trademark cannot be invalidated/canceled. Based on such fact, under current regulations, do the ways of thinking work in protecting the rights of the trademark owners?
According to Article 95 of the current Law on Intellectual Property[1], a Certificate of trademark registration can be completely or partially terminated in several circumstances, including the following typical cases:
- The trademark owner is no longer in business and has no legal successor: This is a case that has occurred a lot due to various subjective or objective reasons. For example, a trademark is protected under the name of Company A, however, following a period of insolvency, Company A had to cease its business activities and undergo dissolution procedures. This also means that if a third party's request for cancellation is filed with the Competent State Authority and the third party is successful in proving that Company A has dissolved without a legal successor, its trademark’s validity is likely to be canceled. In fact, there have been numerous instances of such cases, leading to the expiration of many trademarks.
- The trademark has not been used by the owner or the person/organization authorized by the owner for a consecutive period of 05 years before the date of the request for cancellation, without a legitimate reason, except in cases where the use of the trademark was initiated or resumed at least three months before the date of the request for cancellation. This is likely the most common basis so far in requests for cancellation of trademark validity filed with the National Office of Intellectual Property of Vietnam. The request for cancellation is likely to be successful if the Applicant could provide grounds/evidences proving that the trademark has not been used for a consecutive five-year period from the date of granting protection, and if the owner of the trademark is impossible to prove the use of the mark by itself or by its subsidiary, affiliate companies, etc., the trademark is at high risk of being canceled its validity. Documents to prove the status of use/non-use by the owner are very diverse, as stipulated in Clause 5, Article 124 of the current Law on Intellectual Property[2], including but not limited to:
● Affixing the protected trademark to goods/services that the owner produces/provides and registers;
● Circulating, advertising, displaying, transporting goods/services bearing the protected trademark;
● Commercial indications bearing the protected trademark for registered goods/services;
● Importing goods bearing the protected trademark.
If the owner may provide any of the documents listed, even if including one or more advertisements featuring the trademark in newspapers/online media during the continuous period of 05 years, not compulsory by the owner directly, may be by a subsidiary, affiliate, or an authorized party to whom the owner has granted the right to use the trademark, then the document works for proving the use of the trademark. In such a case, the request for cancellation may be unsuccessful. Regarding the issue of proving/providing evidence of actual trademark use, while there are still some deficiencies and the fact that current regulations are somewhat lacking in detail and strictness, up to now, practice shows that as long as there is proof of use (including minimal evidence), the competent authority will consider the trademark to have been used and the request to cancel the validity in these cases is often considered to be unfounded.
Based on the legal and practical grounds listed above, the trademark owner needs to pay special attention to the following matters after successfully protecting a trademark:
- Filing and registration the trademark which is identical to the actual use of the mark in practice. For the broadest of scope of protection, it is advisable to consider filing & registration the trademark in both its negative (black & white) & color forms as designed;
- Once the trademark has been registered, ensure continuous use of the trademark or risk losing it;
- When affixing the trademark to commercial indications, it is important to place the trademark in an easily visible position to ensure that its function is to distinguish the products/services of different individuals/organizations;
- Once the trademark is protected, the owner needs to pay attention to maintaining the use of the trademark, the simplest way is to include the trademark on sales invoices/service invoices. This is simple and can be considered a completely legitimate form of trademark use;
- In case the trademark owner is a company and the company may be terminated and go through dissolution procedures, if the decision is made to retain the validity of the trademark, the trademark transfer should be recorded before the company is officially dissolved.
Not only in Vietnam but globally, the cancellation of the validity of a trademark based on the grounds of not being used continuously and actually used in practice for 03 (three) or 05 (five) consecutive years, applied depending on the regulations in each country, is also quite common, even for trademarks that can be considered well-known trademarks.
A typical case in which McDonald’s lost its rights to the trademark “Big Mac” for the goods ‘chicken sandwiches’, ‘foods prepared from poultry products’ and ‘services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’ in Europe following the European Court of Justice’s judgment T58/23[3] on the grounds that it failed to provide sufficient documentation proving the genuine use of the trademark. The legal dispute began in 2015 when Supermac’s (Holdings) Ltd (Supermac’s) attempted to register its name as a trademark for restaurant services in Europe (EU). McDonald’s International Property Co. Ltd (McDonald’s) filed an opposition against Supermac’s application on the basis that the trademark was confusingly similar to the trademark “BIG MAC” which has been already protected in EU under registration number 62638[4].
However, on April 11, 2017, Supermac’s filed an application for revocation of the trademark “BIGMAC” in EU based on several grounds, including the ground that this trademark had not been genuinely used in EU for the registered goods/services. On January 11, 2019, the Cancellation Division held that the documentation provided by McDonald’s was insufficient to prove that the trademark “BIG MAC” had been genuinely used, so it issued a Decision agreeing with Supermac’s and accordingly, issued a Decision to revoke McDonald’s “BIG MAC” for all products/services as requested by Supermac’s in EU and the effective date of the revocation is April 11, 2017.
On March 8, 2019, McDonald’s filed an appeal against the aforementioned Decision with the Board of Appeal and submitted a substantial amount of additional evidences, including consumer surveys (demonstrating knowledge of the BIG MAC sign), receipts and data from cash registers (showing sales figures), sworn screenshots of television advertisements and outdoor advertisements from advertising agencies (to prove circulation of advertising materials), screenshots of videos posted by third parties on YouTube, Google Analytics reports (demonstrating the number of viewers of McDonald’s website), and financial audit reports (demonstrating the number of BIG MAC-branded products sold). However, after reviewing the documents/evidences, the Board of Appeal partially upheld McDonald’s appeal. Specifically, the Board of Appeal decided to revoke the rights to the “BIG MAC” trademark in EU only for the following products and dismissed the appeal with regard to the remaining goods and services (Contested Decision):
- Class 29: Foods prepared from meat, pork, fish and poultry products, meat sandwiches, chicken sandwiches.
- Class 30: Edible sandwiches, meat sandwiches, chicken sandwiches.
- Class 42: Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods.
Subsequently, on December 12, 2022, Supermac’s filed an action before the General Court of the European Union (GCEU), by which it seeks the partial annulment and the alteration of the Contested Decision.
On June 05, 2024, the GCEU ruled that McDonald’s has not proven that the mark has been put to genuine use as regards the goods ‘chicken sandwiches’ (Classes 29 and 30), ‘Foods prepared from poultry products’ (Class 29) and ‘Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’(Class 42). Consequently, GCEU partially annulled and altered the Contested Decision, limiting the protection conferred on McDonald’s by the Trademark.
The above judgment also indicates that in addition to no longer being recognized as the owner of the “BIG MAC” trademark for the goods ‘chicken sandwiches’ (Classes 29 and 30), ‘Foods prepared from poultry products’ (Class 29) and ‘Services rendered or associated with operating and franchising restaurants and other establishments or facilities engaged in providing food and drink prepared for consumption and for drive-through facilities; preparation of carry-out foods’ (Class 42), McDonald’s is impossible to continue franchising such the limited goods/services bearing the “BIG MAC” trademark throughout its restaurant system from the date of entry into force of the GCEU judgment.
Another practical lesson from the giant tech company Apple Inc. (Apple) is that the trademark “Think Different” in Europe has been canceled due to the non-genuine-use of this protected trademark[5].
Apple, previously, was granted protection for the trademark “THINK DIFFERENT” with the European Union Intellectual Property Office (EUIPO) under registration numbers (i) 671321 dated September 6, 1999 in Classes 09 & 16[6], (ii) 845461 dated November 18, 1999 in Class 09[7] and (iii) 4415063 dated May 8, 2006 in Classes 09 & 38[8] (Contested marks).
On October 14, 2016, Swatch AG filed 03 requests for revocation for all trademarks mentioned above in the name of Apple claiming that the Contested marks had not been put to genuine use for the goods for goods in Class 09 (Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines, telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols, all recorded electronically or embodied in computer software; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods) (Class 09) in EU.
On March 24th, 2017, Apple submitted evidences proving the genuine use of the trademark, including a witness statement from the director of its legal department containing information on the history of the undertaking, the launch of the advertising campaign entitled ‘THINK DIFFERENT’ in 1997, the awards received for that campaign as well as the advertising expenditure and sales figures from the years 1994 to 2016 relating to the trademark; articles from the website ‘www.macrumors.com’ and articles from the magazines Forbes (2012, 2015), The Telegraph (2012) and Time (2015) and in several other articles relating to Apple; numerous articles published from 1997 to 2016 containing information about Apple including the advertising campaign ‘THINK DIFFERENT’, parodies of ‘THINK DIFFERENT’, and the Broadway musical comedy ‘Nerds’; annual reports in 2009, 2010, 2013 and 2015.
After many official communications/exchanges, on August 24, 2018, the Cancellation Division revoked the Contested marks in respect of all the goods concerned in Class 09, with effect from 14 October 2016.
On October 17, 2018, Apple filed 03 appeals against the aforementioned decisions of the Cancellation Division and provided additional evidences showing the genuine use of the mark. However, according to Appeal Board, the evidences provided by Apple were merely individual pieces of evidences that did not demonstrate the genuine use of the trademark for goods in Class 09 as registered. Moreover, the trademark has just only been appeared on packaging in a relatively small position, next to the technical specifications/description, which was not distinctiveness enough to be use as a trademark to distinguish the mark from others for the goods in Class 09 (was not functioned as a trademark). Therefore, the Fourth Board of Appeal dismissed the appeals filed by Apple. In other words, the “THINK DIFFERENT” trademark has been revoked for all goods in Class 09 in EU due to the reason of not being genuine used. Based on the result, Apple lose its exclusive rights to use the sign “THINK DIFFERENT” for the goods in Class 09 such as phones, computers, etc. and this is considered as a significant loss for Apple after this lawsuit.
LESSONS LEARNED
1. Regarding trademark registration
- Filing and registration the trademark which is identical to the actual use of the mark in practice. For the broadest of scope of protection, it is advisable to consider filing & registration the trademark in both its negative (black & white) & color forms as designed;
- Choosing to register a trademark for the goods/services which are being provided at the time of filing trademark application or in near future by its owner. It is not advisable to choose a very broad range of goods/services because of the meaningless of the action in a long-term significance. For instant, such registration may serve as a market deterrent, but ultimately, there may be a risk that the validity of the mark is canceled based on 5-year non-use for the mark in whole which will cause difficulties for the owner;
- Once a trademark is registered, ensure to continuous using of the trademark and save the evidences of use or risk losing it;
- When affixing the trademark to commercial indications, be sure to put the trademark in a position that is easily visible to ensure the trademark’s function is to distinguish the goods/services of different individuals/organizations;
- In case the trademark owner is a company and the company may be terminated and go through dissolution procedures, if the decision is made to retain the validity of the trademark, the trademark transfer should be recorded before the company is officially dissolved.
2. Regarding the use of trademarks in practice after being protected
- Once a trademark is protected, it is naturally the obligation and benefit of the owner to maintain the validity of the trademark. Use it or lose it principle should be paid attention by the owner;
- When a trademark has been protected, the owner is advisable to maintain the use of the trademark by a simplest way which is to affix the trademark on sales invoices/service invoices. This option is although simple but can be considered a very legitimate form of trademark use;
- In Vietnam, up to now, there has not been currently detailed regulations on how to use a trademark to be recognized as genuine use for the registered goods/services. However, in the process of actual trademark use, the evidences of use should demonstrate the location, time, scope and nature of the trademark use. Regarding the scope of use, it is important to show the volume of commerce of overall use, as well as the duration of frequency of trademark use. Providing advertising materials should also be accompanied by evidences of the distribution of goods or provision of services, especially evidences of sales and revenue from the sales, distribution and provision of goods/services bearing the marks./.
Duong Thi Van Anh
Vice Director of Vietthink Law Firm LLC.
[1] Article 95 of The law on intellectual property amending and supplementing a number of articles 2022: Cancellation of validity of protection titles
1. The validity of a protection title shall be terminated in whole or in part in the following cases:
a) The owner fails to pay the stipulated validity maintenance or extension fee;
b) The owner declares relinquishment of the industrial property rights;
c) The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;
d) The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for cancellation of validity, except where use is commenced or resumed at least three (3) months before the request for cancellation;
dd) The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;
e) The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;
g) The geographical conditions decisive to reputation, quality or special characteristics of products bearing a geographical indication have changed resulting in the loss of such reputation, quality or characteristics of products.
h) The use of a protected mark for goods or services by the mark owner or by a person authorized by the mark owner causes consumers to misunderstand the nature, quality or geographical origin of such goods or service;
i) The protected mark becomes the common names of the goods or services registered for such mark;
k) The foreign geographical indication is no longer protected in the country of origin.
2. Where the owner of an invention patent or a utility solution patent fails to pay fees and charges to maintain its validity within the stipulated period, upon the expiration of such period, the protection title will be automatically invalidated from the date commencing the first effective year for which fees and charges for maintenance are not paid.
Where the owner of protection title of a mark or industrial design fails to pay fees or charges for extension of validity within the stipulated period, upon the expiration of such period, the protection title will be automatically invalidated from the date commencing the next period of validity for which the feed and charges for extension are not paid.
The State administrative body in charge of industrial property rights shall record the invalidation of a protection title in the National Industrial Property Registry and publish it in the Official Gazette of Industrial Property.
3. Where the owner of a protection title declares waiver of the industrial property rights specified in sub-clause (b), clause 1 of this Article, the State administrative body in charge of industrial property rights shall consider and decide the invalidity of such protection title.
4. Organizations and individuals have the right to request the state administrative body in charge of industrial property rights for invalidation of a protection title for the cases specified in subclauses (c), (d), (dd), (e), (g), (h), (i) and (k) clause 1 of this Article provided that the fees and charges must be paid.
5. Based on the results of considering the request for invalidity of a protection title for the cases specified in clauses 3 and 4 of this Article, and opinions collected from related parties, the state administrative body in charge of the industrial property rights shall notify its refusal of invalidity of the protection title or its decision to invalidate the protection title in whole or in part.
6. For the cases specified in sub-clauses (c), (d), (dd), (e), (g), (h) and (i), clause 1 of this Article, the protection title shall be invalidated from the date on which the state administrative body in charge of industrial property rights issues a decision to invalidate the protection title.
For the case specified in sub-clause (k), clause 1 of this Article, the protection title shall be invalidated from the date on which the geographical indication is no longer protected in the country of origin.
Where the state administrative body in charge of industrial property rights issues a decision to invalidate a protection title in accordance with clause 3 of this Article, the protection title shall be invalidated from the date on which the State administrative body in charge of industrial property rights receives a written declaration from the owner of such protection title.
7. The provisions of clauses 1, 2, 3, 4, 5 and 6 of this Article shall also apply to the invalidity of international registration of marks and industrial designs.
[2] Clause 5 Article 124 of The law on intellectual property amending and supplementing a number of articles 2022: Use of industrial property objects
5. Use of a mark means the performance of the following acts:
(a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;
(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;
(c) Importing goods or services bearing the protected mark.
[3] Details of the case published related to ruling number T 58/23 of the Court of Justice of the European Union regarding the case.
https://curia.europa.eu/juris/document/document.jsf;jsessionid=D91371C3643028D30A6AC54AC4872CC3?text=&docid=286812&pageIndex=0&doclang=en&mode=lst&dir=&occ=first&part=1&cid=4952871
[4] Details of the "Big Mac" trademark under registration 62638 that has been protected in Europe under the name McDonald’s.
https://euipo.europa.eu/eSearch/#details/trademarks/000062638
[5] Details of the annulment of Apple's THINK DIFFERENT trademark in Europe.
https://curia.europa.eu/juris/document/document.jsf;jsessionid=F50268739366481494CD6F719464E759?text=&docid=260447&pageIndex=0&doclang=en&mode=req&dir=&occ=first&part=1&cid=8619586
[6] Details of the first "THINK DIFFERENT" trademark protected in Europe for Classes 09 & 16.
https://euipo.europa.eu/eSearch/#details/trademarks/000671321
[7] Details of the second "THINK DIFFERENT" trademark protected in Europe for Class 09.
https://euipo.europa.eu/eSearch/#details/trademarks/000845461
[8] Details of the third "THINK DIFFERENT" trademark protected in Europe for Classes 09 & 38.
https://euipo.europa.eu/eSearch/#details/trademarks/004415063