VIETNAM NATIONAL UNIVERSITY SCHOOL OF LAW TRỊNH QUỐC ĐẠT STUDENT CODE: 18062013 PROTECTING WELL-KNOWN TRADEMARKS UNDER VIETNAMESE LAW GRADUATION THESIS Major: Law High quality program Course: QHL-2018-L Hanoi, 2022 VIETNAM NATIONAL UNIVERSITY SCHOOL OF LAW TRỊNH QUỐC ĐẠT STUDENT CODE: 18062013 PROTECTING WELL-KNOWN TRADEMARKS UNDER VIETNAMESE LAW GRADUATION THESIS Major: Law High quality program Course: QHL-2018-L SUPERVISOR: DR. NGUYỄN BÍCH THẢO Hanoi, 2022 2 TABLE OF CONTENTS UNDERTAKINGS. 5 LIST OF ABBREVIATIONS. Reasons for selecting the research topic.
Object and purpose of research. Contributions of thesis. Structure of thesis. 11 THEORETICAL FOUNDATIONS FOR PROTECTING WELL-KNOWN TRADEMARKS.
Overview of trademark. Definition of trademark. Function of trademarks. Characteristics of trademark.
Classification of trademarks. Overview of well-known trademarks. Definition of well known trademark. Characteristics of well-known trademarks.
Significance of well-known trademark protection. Mechanism of protection of well-known trademarks in international law and national laws of some countries. Sub-concluding remarks. 37 3 THE LEGAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION IN VIETNAM.
Definition of well-known trademark under Vietnamese law. Criteria for identifying well-known trademarks. Grounds for establishing rights to well-known trademarks. The scope of protection of well-known trademarks.
The term of protection for well-known trademarks. Rights of well-known trademark owners. Enforcement of rights to well-known trademarks. Determination of infringements against well-known trademarks.
Sanctions to handle infringements of rights to well-known trademarks. Sub-concluding remarks. 68 THE CURRENT STATUS OF WELL-KNOWN TRADEMARK PROTECTION AND RECOMMENDATIONS TO IMPROVE THE LAW ON PROTECTION OF WELL- KNOWN TRADEMARKS IN VIETNAM. The current status of well-known trademark protection in Vietnam.
The current status of well-known trademark infringements in Vietnam. Some disputes related to well-known trademarks in Vietnam. Achievements and shortcomings in protection of well-known trademark in Vietnam. Some drawbacks and recommendations to improve Vietnamese law on protection of well-known trademarks.
Sub-concluding remarks. 89 4 UNDERTAKINGS I hereby declare that this is my independent research work. The results of the graduation thesis have not been published in any other works. The data in the thesis is honest, has clear origin, and is cited in accordance with regulations.
I accept responsibility for the accuracy and truthfulness of this thesis. Thesis author Trịnh Quốc Đạt 5 LIST OF ABBREVIATIONS Intellectual Property Office of Vietnam the NOIP Paris Convention for the Protection of The Paris Convention Industrial Property Agreement on trade related aspects of the TRIPs Agreement intellectual property rights Article X Clause Y Article (X) (Y) 6 INTRODUCTION 1. Reasons for selecting the research topic Nowadays, countries are paying more and more attention to the protection of intellectual property rights because intellectual property contributes to promoting creativity for the development of society. Among them, trademark protection is considered one of the most important issues.
In a world where global marketing and commercial activities are booming, it is increasingly easy for businesses to create a global brand. Vietnam is a strong developing country, attracting a lot of foreign investors, including leading enterprises in the world. We can easily see that many world well- known trademarks have appeared in Vietnam such as Apple, Mercedes, Samsung, McDonald’s,. These well-known trademarks are great assets of businesses.
and play an important role in the business development of those enterprises. Therefore, the need to protect trademarks, especially well-known trademarks, is very urgent to create a healthy and effective investment environment, ensuring the interests of trademark owners. Understanding the importance of trademark protection, legislators and policy makers in Vietnam have been very active in developing and promulgating legal documents to more effectively protect intellectual property rights. However, it is possible that because this is a relatively new issue in Vietnam, the legal regulations are still inadequate, and trademark infringement still occurs on a large scale in many different forms.
Given the great importance of well-known trademark protection in the development of the national economy, I have selected the topic "Protecting well-known trademarks under Vietnamese law" for my graduation thesis with the desire to study the current legal provisions of Vietnam as well as international law, from which to draw lessons and make recommendations to improve the domestic law on protection of well-known trademarks. Literature review The issue of well-known trademark protection is an issue attracting great attention from researchers all over the world. There have been many seminars related 7 to this issue such as: Conference on TRIPS Agreement, Conference on new industrial property objects in Vietnam. Many textbooks and scientific works such as: "Textbook of Intellectual Property Law" (Ho Chi Minh City Law University) by Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor); "Intellectual Property Rights" by Le Net, Vietnam National University Press, Ho Chi Minh City, 2006; Textbook of Intellectual Property Law (Hanoi Law University) by Vu Thi Hai Yen (editor); .include a part addressing well-known trademarks.
In addition, the issue of protection of well-known trademarks has been mentioned in many scientific journals such as: Some inadequacies in the protection and enforcement of rights to well-known trademarks of Nguyen Nhu Quynh (Vietnam Science and Technology Magazine No. 11 in 2016); Completing the legal framework for protection of well-known trademarks in Vietnam - Some solutions of Dr. Phan Ngoc Tam (Vietnam Science and Technology Magazine No. 3 in 2019); Protection of well-known trademarks in Vietnam - Some inadequacies and experiences from abroad by Nguyen Trong Luan (Journal of the State and Law No.
2/2021); Well-known trademarks and protection of well-known trademarks by 'defensive mark' tool in Japan by Vu Thi Phuong Lan (Journal of Jurisprudence No. Besides, there are also many Master's Thesis, Doctoral Dissertation of Law has researched on the topic of well-known trademark protection such as: Master's thesis of Law "Protection of well- known trademark under the provisions of Vietnamese law" by Nguyen Thi Van; Doctoral dissertation of Law "Well-known trademark protection - A comparative study between the laws of the European Union and Vietnam" by Phan Ngoc Tam;. However, the above studies only research on certain aspects of well-known trademark protection or on well-known trademark protection in other countries without a systematic research on protecting well-known trademarks under the current law in Vietnam. Nowadays, well-known trademark protection is an extremely important issue for the development of the economy.
Therefore, this thesis is completely topical and has practical scientific significance. The thesis analyzes specifically the current legal provisions of Vietnam on the protection of well-known trademarks, combined with the study of international instruments and the laws of other countries in this field. From there, it proposes to improve the mechanism of protection of well-known trademarks in Vietnam. 8 The thesis "Protecting well-known trademarks under Vietnamese law" is an independent thesis, however, the completion of this research topic is based on the collection and acquisition of knowledge and experience from relevant scientific works which have been published.
Object and purpose of research - Research object: The research object of this thesis is the theoretical and practical issues of the protection of well-known trademarks in accordance with Vietnamese law, and with reference to the protection of well-known trademarks of some countries in the world and the provisions of relevant international commitments - Research purposes: On the basis of inheriting and developing previous studies, the author clarifies and analyzes the content of current regulations on protection of well-known trademarks in Vietnam, with reference to international laws and laws of other countries, from which to evaluate, find shortcomings and make recommendations to improve Vietnamese law. Research methods The thesis is conducted based on the methodology of Marxism - Leninism to analyze legal issues in connection with economic and social issues. With respect to concrete research methods, the thesis uses a combination of methods such as historical method, comparative method, analytical method, synthesis method, and statistical method. The thesis is mainly based on doctrinal research, analyzing the legal documents of the State, the international instruments, and judicial decisions on well- known trademarks.
Research scope The thesis comprehensively researches the current legal provisions on protection of well-known trademarks in Vietnam and relevant international instruments, and consults the laws of some countries in the world. Contributions of thesis This thesis has achieved the following results: - Clarify some theoretical issues about trademarks and well-known trademarks - Analyze Vietnam's current legal regulations on protection of well-known trademarks. 9 - Evaluate the current status of well-known trademark protection in Vietnam, its successes and shortcomings, and make recommendations to improve Vietnamese law on protection of well-known trademarks with reference to the laws of other countries and international commitments. Structure of thesis In addition to the Introduction, Conclusion and List of References, the content of the thesis consists of 3 chapters: Chapter 1: Theoretical foundations for protecting well-known trademarks Chapter 2: The legal framework of well-known trademark protection in Vietnam Chapter 3: The current status of well-known trademark protection and recommendations to improve the law on protection of well-known trademarks in Vietnam 10 CHAPTER 1 THEORETICAL FOUNDATIONS FOR PROTECTING WELL- KNOWN TRADEMARKS 1.
Overview of trademark 1. Definition of trademark In fact, trademarks have been used for a long time to distinguish the goods and services of different traders and manufacturers. According to archaeologists somewhere between 5000 and 4000 BC primitive man used signs or symbols to mark their animals or property so as to identify their rights over them1. In Roman time, manufacturers embossed or stamped their goods with their own symbols to identify their products and distinguish them from others.
Nowadays, trademarks have become a valuable form of intellectual property all over the world. According to WIPO “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”2. The Trips Agreement regulated that “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.
It can be seen that the definition of trademark in the Trips Agreement is quite broad, a trademark can be "any sign" or "any combination of signs", as long as it is capable of distinguishing the goods of different ones. Thus, a trademark is not necessarily composed of one sign, but can be composed of many different signs. Besides, in more detail than the definition of WIPO abovementioned, this definition indicates some signs that can become trademarks such as personal names, letters, numerals, figurative elements and combinations of colours. 1 Phan Ngoc Tam, Doctoral Dissertation of Law , Well-known trademark protection.
A comparative study between the laws of the European Union and Vietnam, page.27 2 Available at https://www.int/trademarks/en/#:~:text=What%20is%20a%20trademark%3F,protected%20by%20intellectu al%20property%20rights 3 Article 15, Agreement on trade related aspects of intellectual property rights (TRIPs) 11 Meanwhile, according to European Union trademark law: "A trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings". In general, this definition still shows that the function of a mark is to distinguish goods and services of different subjects, but there is an expansion in the list of signs that can become a trademark compared to the definition of trademark under the Trips Agreement such as the shape of goods or of their packaging. Under the Vietnamese legal system “trademark is any sign used to distinguish goods or services of different organizations or individuals”4.