1.What is a well-known trademark?
1.1. What is a trademark?
According to the provisions of Clause 16, Article 4 of the Law on Intellectual Property 2005, amended and supplemented in 2009 and 2019, a trademark is a sign used to distinguish goods and services of different organizations and individuals.
A trademark is a sign registered by a business entity to distinguish its goods or services from those of other business entities dealing in the same or similar goods. Trademarks increase the recognition of goods and services among consumers.
1.2. What is a famous trademark?
According to the provisions of Clause 20, Article 4 of the Law on Intellectual Property 2005, amended and supplemented in 2009 and 2019, a well-known trademark is a mark that is widely recognized by consumers throughout the territory of Vietnam.
Therefore, under Vietnamese intellectual property law, the scope of a well-known mark is limited to the territory of Vietnam. This means that even if a mark is famous worldwide, it must also be widely known by consumers in Vietnam to be considered a well-known mark under Vietnamese intellectual property law. In addition, to determine whether a mark is a well-known mark or not, it is necessary to consider the evaluation criteria prescribed under Vietnamese intellectual property law.
- Characteristics of well-known trademarks
Well-known trademarks have the following basic characteristics:
A visible sign that can take the form of letters, words, drawings, images, including holograms, or a combination of those elements, represented by one or more colors (as provided for in Clause 1 of Article 72 of the Law on Intellectual Property 2005, amended and supplemented in 2009 and 2019). Trademarks are designed to help consumers easily remember a good or service, so the above characteristics are essential when it comes to trademarks.
The ability to distinguish the goods and services of the trademark owner from those of other entities (as provided for in Clause 2, Article 72 of the Law on Intellectual Property 2005, amended and supplemented in 2009 and 2019).
-High popularity: Well-known brands are widely recognized by consumers in different geographical areas.
-Great economic value: Although they are intangible assets, well-known trademarks bring many economic benefits to businesses. Consumers rely on well-known brands and trust the goods and services of the enterprises. Famous brands make consumers remember the goods and services of the business when they have a need. Because of the great value of well-known brands, businesses can attract capital from investors by using their famous brands.
-Vulnerability: Well-known trademarks are vulnerable to unauthorized use because of their popularity and high economic value. Therefore, well-known marks are often used by other entities with identical or similar signs, leading to confusion about the origin of goods or giving a false impression about the relationship between the entity using such signs and the owners of the well-known trademark.
3.Criteria for evaluating famous trademarks
3.1. Recognition of a famous trademark
According to the provisions of Article 42, Section 5 of Circular 01/2007/TT-BKHCN dated February 14, 2007, which guides the implementation of Decree No. 103/2006/ND-CP dated September 22, 2006 of the Government, as amended by point a, Clause 35, Article 1 of Circular 16/2016/TT-BKHCN, a well-known mark is defined as follows:
-Well-known trademarks are protected by Vietnamese law under the provisions of Article 75 of the Intellectual Property Law 2005, as amended and supplemented in 2009 and 2019, and in accordance with the provisions of Article 6bis of the Paris Convention on the protection of industrial property.
-The rights to a well-known trademark are protected and belong to the owner of the mark without the need for registration. Trademark owners can use the documents required by law to prove their ownership of the mark and to demonstrate that the mark meets the conditions for being considered well-known.
Documents proving ownership of the mark and proving the popularity of the mark may include information on the scope, scale, extent, and continuity of the use of the mark, including demonstrating the origin, history, and duration of continuous use of the mark; the number of countries where the mark has been registered or recognized as a well-known mark; the list of goods and services bearing the mark; the territory in which the mark is circulated, the products sold or services provided; the quantity of goods and services bearing the mark that have been produced and consumed; the value of the mark’s assets; the price of the transfer or transfer of the right to use; the value of the investment capital contribution of the mark; investment expenses for advertising and brand marketing, including participation in national and international exhibitions; infringement cases, disputes, and decisions, judgments of a court or competent authority; survey data of consumers who know the brand through buying, selling, using, and advertising and marketing; ranking and evaluating brand reputation of national and international organizations, mass media; awards and medals that the trademark has achieved; assessment results of intellectual property assessment organizations.
-In case a well-known mark is recognized, leading to a decision on the handling of infringement of rights to that famous mark according to the provisions of Point d, Clause 1, Article 129 of the 2005 Intellectual Property Law, as amended and supplemented in 2005, 2009, or 2019, or leads to a decision not to protect other trademarks as prescribed at point i, clause 2, Article 74 of the Intellectual Property Law 2005, as amended and supplemented in 2009, or 2019, that well-known mark will be recorded in the List of well-known trademarks kept at the National Office of Intellectual Property for reference information serving the establishment and protection of intellectual property rights.
3.2. Criteria for evaluating famous brands
According to the provisions of Article 75 of the Intellectual Property Law 2005, amended and supplemented in 2009 and 2019, the criteria to be considered when evaluating a well-known brand are:
The number of consumers who have come to know the brand through buying, selling, or using goods or services bearing the mark, or through advertising.
The first criterion to evaluate a well-known trademark is the number of consumers who know the mark throughout the territory of Vietnam. However, the law does not specify how large the number of consumers must be. Therefore, proving this criterion is still quite difficult for trademark owners.
According to the provisions of Clause 1, Article 3 of the Law on Protection of Consumer Rights in 2010, “consumers are those who buy and use goods and services for the purposes of consumption and daily life of individuals, families, or organizations.” Accordingly, related consumers are consumers who share or have similar needs and interests in the use of goods and services for consumption and daily activities of individuals, families, or offices. Therefore, relevant consumers may know the brand through the purchase, sale, or use of goods and services bearing the mark, or through advertising. Thus, the more consumers are aware of the brand, the higher the popularity of that brand. The number of unrelated people who know the mark is not a criterion for assessing the popularity of the brand.
The territory in which the goods or services bearing the mark have been circulated.
From the concept of a well-known mark, it can be seen that the territorial scope to evaluate a well-known mark is based on the number of areas in the territory of Vietnam where goods and services bearing the mark have been circulated.
In order to bring goods and services to circulate freely on the market, one of the necessary conditions is the registration of product circulation. Therefore, goods and services bearing the trademark that have been circulated are the goods and services bearing the mark that have been granted a lawful product circulation license.
Revenue from the sale of goods or provision of services bearing the mark, or the quantity of goods sold, and the amount of services provided.
In order for a mark to become a well-known mark, it is necessary to evaluate the revenue from the sale of goods or the provision of services bearing the mark, the quantity of goods sold, and the amount of services provided. The larger the sales volume, the more goods are sold, and the more services are provided, proving that the goods and services are preferred by many consumers, and the popularity is high. The above evaluation criteria are intended to reinforce the value that a well-known mark brings to the owner of the mark.
-Period of continuous use of the trademark.
A well-known trademark is one that must be used for a long time and continuously. The non-continuous use of the mark means that the trademark owner has stopped using the trademark for a period of time, making the popularity of the trademark low, leading to a decrease in consumer recognition of the brand. At this time, the competent authorities will assess the period of time the mark has not been used, consider the cause of the interruption, and then decide whether the mark is still a well-known trademark or not.
Wide reputation of goods and services bearing the mark.
A trademark is considered a well-known trademark only if it has built trust with consumers. Therefore, when considering the criteria for evaluating famous marks, it is necessary to pay attention to the reputation of goods and services bearing the mark.
Number of countries protecting the mark.
This criterion is also interesting to know how many countries the trademark owner has registered for trademark protection and the number of countries that have protected the mark from which to assess the level of popularity of that trademark.
Number of countries recognizing the mark as well-known.
With the number of countries recognizing the mark as famous, it proves that the mark has a higher degree of prestige.
-Transfer price, license price, and value of investment capital contribution of the mark.
This is one of the important criteria to evaluate a trademark as a well-known trademark. A reputable brand will gain the trust of consumers, thereby increasing the economic value of that brand. The higher the popularity of the brand, the higher the price will be, and the more economic value it will bring. Therefore, the larger the transfer price, the license price, and the value of the investment capital contribution, the greater the brand coverage in the market as well as the reputation among consumers.
- Legal basis
– Law on Intellectual Property 2005, amended and supplemented in 2009, 2019;
– Circular 01/2007/TT-BKHCN dated February 14, 2007 guiding the implementation of Decree No. 103/2006/ND-CP dated September 22, 2006 of the Government;
– Circular 16/2016/TT-BKHCN dated June 30, 2016 of the Ministry of Science and Technology;
– Law on Protection of Consumer Rights 2010.
