MINISTRY OF EDUCATION AND TRAINING HO CHI MINH CITY UNIVERSITY OF LAW -----------***------------ THE MANAGING BOARD OF SPECIAL TRAINING PROGRAMS NGUYỄN NHẬT THẢO THE PROTECTION OF OLFACTORY MARKS UNDER INTERNATIONAL LAW AND LAW OF SOME COUNTRIES BACHELOR OF LAW – GRADUATION THESIS INTERNATIONAL LAW FACULTY Academic year: 2013 - 2017 HO CHI MINH CITY 2017 MINISTRY OF EDUCATION AND TRAINING HO CHI MINH CITY UNIVERSITY OF LAW -----------***------------ THE MANAGING BOARD OF SPECIAL TRAINING PROGRAMS NGUYỄN NHẬT THẢO THE PROTECTION OF OLFACTORY MARKS UNDER INTERNATIONAL LAW AND LAW OF SOME COUNTRIES BACHELOR OF LAW – GRADUATION THESIS INTERNATIONAL LAW FACULTY Academic year: 2013 - 2017 Supervisor : Ph. LÊ THỊ NAM GIANG Student : NGUYỄN NHẬT THẢO Student code : 1353801015251 Class : CLC 38B HO CHI MINH CITY 2017 ACKNOWLEDGEMENT Firstly, I am highly grateful for the Ho Chi Minh City University of Law because giving me a gorgeous opportunity to cultivate in a professional environment. Secondly, I would like to send the respectful thank for the wholehearted guidance and inspiration from my supervisor – Lecturer Le Thi Nam Giang in all the accomplishment of the thesis. Without her enthusiastic support, I could not have the productive work and innovative ideas to perform these contents.
Thirdly, I would also like to express my appreciation to my family and my friends who totally encouraged me during the process of completing the project. In the process of researching and studying, I would like to tacitly acknowledge my own scholastic limitations in the writing of this thesis. Hence, my research work might be having some shortcomings and mistakes in the implementation process, thus, I will try my best to compensate and overcome in the following researches. Nguyen Nhat Thao Ho Chi Minh City University of Law, 07/2017.
DECLARATION I hereby declare that my thesis is my original work, which has been written by me under the guidance of my supervisor. Where other sources of information have been used, they are duly acknowledged in the text and bibliography. I am responsible for all of the infringement on copyrights of the third parties that may result. Ho Chi Minh City, July 18th, 2017.
Nguyen Nhat Thao ABBREVIATIONS CJEU Court of Justice of the European Union (including its legal predecessor European Court of Justice) CTM Community Trade Mark CTMR Community Trademark Regulation EU The European Union EUIPO European Union Intellectual Property Office Member States Member States of the European Union OHIM Office for Harmonization in the Internal Market TMD Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks TMEP Trademark Manual of Examining Procedure TRIPs Agreement on Trade-Related Aspects of Intellectual Property Rights of 1994 TTAB Trademark Trial and Appeal Board of the USPTO UK The United Kingdom of Great Britain and Northern Ireland US The United States of America USPTO United States Patent and Trademark Office WIPO World Intellectual Property Organization WTO World Trade Organization TABLE OF CONTENTS INTRODUCTION. The necessity of doing research. The literature review of research. In the international law and law of some countries.
Purpose of the thesis. Delimitation of reseaching. Structure of thesis. OVERVIEW ABOUT OLFACTORY MARKS.
Definition of olfactory marks. Law of some countries. Evaluating protection background and the implications for Vietnam. Features of protecting olfactory marks.
Evaluating the possibility of protection .2 The perception of consumers about olfactory marks. The territoriality of protecting olfactory marks. 27 CONCLUSION OF CHAPTER 1. CONDITIONS FOR PROTECTING OLFACTORY MARKS AND EXCLUDED OBJECTS FROM BEING PROTECTED.
Conditions for protecting olfactory marks. Overview about conditions for protecting olfactory marks under international law and law of some countries. Analyzing the necessary conditions for protecting olfactory marks. The excluded objects from being protected as olfactory marks.
48 CONCLUSION OF CHAPTER 2. The necessity of doing research Nowaday, trademarks play essential factors in positioning of a commodity product as well as building a reputation of the businessmans; therefore, they always try to find novel solutions to develop their trademarks in a unique and creative way, thus, building up their products or services in the mind of customers via these trademarks. In the context of traditional marks such as words, symbols are almost plethoric, the old types of trademarks gradually lose the ability to impress consumers1. To find a potential pathway, companies now know how to connect their trademarks to consumers through human senses, not only visible but also non-visible elements likely smell, and, using them as trademarks.
According to some relevant researchers, smell is a potential source because the human senses are very sensitive to these objects; in addtion, they are highly distinguishable because each type has its own characteristics, for examples: you can not confuse between durian and jackfruit although they have the similar shape, thanks for their smell. Thus, the tendency of using non-traditional marks in general and olfactory marks in particular will be very interesting in the future. At present, some of the provisions of international law and national law explicitly recognize and protect the new type of trademark, typically the law of the United States and Australia. These countries have established regulatory systems for the protection of non-traditional marks, including olfactory marks, with a number of recognized and protected applications.
However, some countries still refuse recognizing this trend because of the difficulties in identifying the olfactory marks, the assessment of infringement. 1 Brinks Gilson & Lione, Funky trademark trend continues as Procter & Gamble files trademark request for Old Spice whistle, 2014, available at: http://www.com/funky-trademark-trend-continues-procter-gamble- files-trademark-request-for, access on May 28th, 2017. 1 Specifically, in the case of Vietnam, Intellectual Property regulations in our country currently only accept the protection of tangible trademarks as per: words, symbols or combinations thereof, etc.; furthermore, most of consumers in our country are still unfamiliar with olfactory marks. In the context of international economic integration today, it is essential that Vietnam Intellectual Property law considers expanding the objects of protection to non-traditional marks.
This innovative content, on the one hand, encourages trademark's owners to create and apply new trend of trademarks, while also creating consistency in Vietnam Intellectual Property law and international trend related to the protection of trademarks. The author finds that the protection of non-traditional marks will be inevitable in the future, not just on Vietnam's accession to the TPP or not. The author believes that this topic is highly applicable in the future when olfactory marks will be developed and also responds to the current requirements and is a useful document for people wishing to do the research about the marks. The literature review of research 2.
In the international law and law of some countries Nowaday, researching about olfactory marks are growing up in the world, especially in US, India, China, Japan, Singapore and Australia. In the process of studying the thesis, the author found that there were a lot of documents about the new type of mark had been established, hereby are some relevant noteworthy legal materials: (i) Wipo Magazine, Smell, Sound and Taste – Getting a Sense of Non-traditional Trademarks, World Intellectual Property Organization, 2009. (ii) Roberto Carapeto, A Reflection About the Introduction of Non-traditional Trademarks, available at: http://www.jp/folaw/icl/assets/uploads/2016/02/c35688e10d1c61201172 065546b98301.pdf, access on July 14th 2017. Boulware, Emerging Protection for Non-traditional Trademarks: Product Packaging and Design, Baker & McKenzie LLP, available at: http://www.jp/folaw/icl/assets/uploads/2016/02/c35688e10d1c61201172 065546b98301.pdf, access on July 14th 2017.
(iv) APAA, Protection of Non-traditional Trademarks. Singapore: Trademark Committee, available at: http://www.org/pdf/APAA_63rd_council_meeting/TrademarksCom mitteeReports2014/Singapore%20Trademarks%20Committee%20SPECIAL_T OPIC%202014.pdf, access on July 14th 2017. Knauf, Shades of Gray: The Functionality Doctrine and Why Trademark Protection Should Not Be Extended to University Color Schemes, Marquette Sports Law Review, 2010. From the author's perspective, these documents primarily address the notion of non-traditional marks including olfactory marks, specifically related to the potential of developing the marks, conditions for protecting of the marks and the actual enforcement of protection in certain countries in the world as well as the differences among the laws of the countries about tthe above issues.
At the same time, these documents also point to the difficulties and challenges that the countries have to face in finalizing the legal framework for the protection of olfactory marks. However, within the scope of the author's research, no topic has specifically addressed the recommendations of protecting the olfactory marks for the current situation in Vietnam. In Vietnam Currently, the number of in-depth articles on olfactory marks in Vietnam are still limited. Within the scope of researching and studying of the author, a number of papers by local authors focusing on this mark have been found, including: 3 (i) Dam Thi Diem Hanh, The ability of distinctiveness of trademarks through the using process - Comparing the law of Vietnam against the law of the European Union and the United States of America, Journal of Procuratorial Science, Hanoi Procuratorate University, no 04 (12), 2016, page 48-56.
(iii) Pham & Associate Law Firm, Protection of olfactory marks, http://pham.vn/vi/tin-tuc-su-kien/tin-tuc-su-kien/bao-ho-nhan-hieu-mui- scent-mark-1482.aspx, access on July 10th 2017. (Translate: Pham & Associate Law Firm, Bảo hộ nhãn hiệu mùi, xem thêm tại: http://pham.vn/vi/tin-tuc- su-kien/tin-tuc-su-kien/bao-ho-nhan-hieu-mui-scent-mark-1482.aspx, truy cập vào ngày 10/7/2017). Unfortunately, at present, there is no topic focused on in-depth research and tackling issues related to the protection of the olfactory marks, they only pay attention on theoretical issues such as the protection of the olfactory marks in the world, the procedure of applying a registration. Within the scope of researching at the Ho Chi Minh City University of Law, the graduation thesis "The protection of certification marks under the United States Law and the implications for Vietnam" performed in 2015 by the bachelor Nguyen Xuan My Hien is the document that refers to non-traditional marks as well as the provisions of the US 4 law relating to this issue.
However, because the researching content is about certification mark, the thesis does not deeply go into the origin and characteristics of non-traditional marks in general and olfactory marks in particular. At the same time, the link between theories and new practices emerging in the relevant matter remains limited. Purpose of the thesis The thesis will provide fundamental knowledge about theoretical issues and basic knowledge on olfactory marks under international law and law of some countries, in which the thesis focused on clarifying the issues of origin and definition of protecting olfactory marks, protecting background, features of protecting olfactory marks, conditions and limitation of protecting the new type of marks. Through this thesis, the author aims to affirm the inevitable trend of protecting olfactory and provide a helpful document for further research on the protection of the olfactory marks as well.
Delimitation of reseaching In scope of the thesis, the author has conducted research on the following points: theory, legal grounds. Accordingly, hereby will clearly point out the limitations in these above aspects: (i) Relating to limitations on theory, the thesis concentrates on fundamental theoretical matters relating to olfactory marks protection solely under internationally legal aspects. (ii) Limitations on legal grounds including: (a) olfactory marks protection under international treaties such as Paris Convention, TRIPs Agreement, Madrid Agreement; (b) the rules of law and relevant cases of typical countries where olfactory marks have had remarkable development including: EU, UK, US, Australia, Singapore. The nations are chosen to narrow the study because the Intellectual Property law of these countries has had 5 breakthrough stage in protecting this kind of mark.
In addition, the US, Singapore and Australia hold a number of registered olfactory marks as well as have effective regulations for governing the use of new type of marks. (iii) Limitations of time and material sources: this thesis will mainly focus on the international law and law of some countries with outstanding characteristics, registrations, management systems. Then the writer will analyze the shortcomings of Vietnamese Intellectual Property law in order to discern the implications.