1 TRƯỜNG ĐẠI HỌC KINH TẾ TP.HCM NGUYỄN LÊ THÀNH MINH LAW ON THE PROTECTION OF TRADEMARKS – THE ACTUAL SITUATIONS AND RECOMMENDATIONS MASTER OF ECONOMIC LAW Major code: 60 38 01 07 Instructor: Dr. Lê Văn Hưng HO CHI MINH CITY, 2016 LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 2 PROTESTATION My name is Nguyen Le Thanh Minh, student code No: 60380107. I’m a student of Master Class of Economic Law - Course 24, Faculty of Economic Law, University of Economics Ho Chi Minh City and also the author of this master thesis entitled “Law on the Protection of Trademark – the Actual Situation and Remedy” (herein referred to as the “Thesis”) I hereby declare that all contents of this Thesis is the result of my independent research under the instruction of Dr. There are some references of opinions and points of view of some authors in this Thesis.
All of these references and information sources are cited specifically, accurately and can be verified. All of the data, information used in this Thesis is completely objective and honest. LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 3 SUMMARY OF THE THESIS Trademark is a term in the field of Intellectual Property, which is a valuable asset of any Business and it should be protected and developed as any other normal assets. However, nowadays in Vietnam, there are many infringement activities to the protected trademark for the purpose of profiteering.
These activities are still going on and the number of these incidents is increasing day by day. Therefore, protection of trademarks, as well as mechanisms to protect the trademark becomes more and more important, and it shall become an effective tool which can help many enterprises to protect themselves in the harsh competitive environment of market economy. Many researches show that the infringement activities regarding the trademark are currently increasing, mainly due to a combination of both subjective and objective reasons, which limit the effectiveness of law enforcement on the trademark in reality Acknowledging this situation, the authors conducted a study, researched on each situation, the specific cause of corresponding, thereby making recommendations in order to contribute to the change of the effectiveness of law enforcement, somehow improved the current status of infringement activities regarding trademark. LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 4 Contents Abbreviations.
Reasons to choose the topic. Actual statement of the researching topic. The researching questions. Purpose, subjects and scope of studying.
Purpose of studying. Subjects of studying. Scope of studying. Methods of studying.
Scientific significance and value of the Thesis. Structure of the Thesis. 5 CHAPTER 1: THEORETICAL BACKGROUND OF TRADEMARK PROTECTION – COMPARING WITH REGULATION OF SEVERAL OTHER COUNTRIES .1 Formation and developing history of trademark .2 Current law on trademarks and protection of trademarks.1 Definitions and features of trademarks .1 Definitions of trademarks .2 Features of trademarks .2 Classification of trademarks .3 Definition on protection and enforcement of trademarks .3 Role of trademarks and trademark protection .4 Compare with regulations of several countries in the world on enforcement of trademarks 25 1.1 Regulations on enforcement of trademarks in the world .2 The mechanism on enforcement of trademarks in Vietnam. 29 CHAPTER 2 ACTUAL SITUATIONS OF LAW ENFORCEMENT ON TRADEMARK PROTECTION IN VIETNAM .1 Toward the system of competent State bodies that hold the responsibility of enforcing law on trademark protection .2 Toward the determination acts of infringement of rights to trademarks .3 Enforcement of trademarks in Vietnam through some specific cases .1 Some specific cases on acts of infringements of rights to trademarks.
42 LUAN VAN CHAT LUONG download : add luanvanchat@agmail.1 Cases under Verdict No. 704/2004/DS-ST dated 16/4/2004 of People’s Court of Ho Chi Minh city .2 The case under Verdict No. 1388/2012 / MLM-ST dated 13.2012 of People's Court of Ho Chi Minh city.2 Overall comments on the actual states of implementation and enforcement of trademarks in Vietnam .1 The archievements gaining .2 The shortcomings in implementation of the enforcement of trademarks in Vietnam 53 2. RECOMMENDATIONS TO THE ACTUAL SITUATIONS STATED .1 Recommendations to improve IP law and other relating legal documents .1 Widen the definition of trademark .2 Limit the conflicts of protection .3 Specifically regulate about the apply of criteria for evaluation of whether or not a trademark is well known.4 Improving the criteria of evaluation the seriousness of breaches in IP rights to trademark.2 Recommendations on organzing to enforce law on trademark protecting .1 About the procedure of registration for trademark protection .2 Regarding the mechanism of dealing with breaches .3 Regarding the states of cybersquatting .4 Regarding of mechanism of cooperative between the competent State bodies .1 Improving the cognition of the enterprises manager, and of community .2 Apply the principle ot determination of effectiveness between earnings and the levels of penalties to deal with violations, in order to build amounts of fine.
72 LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 6 Abbreviations Intellectual property – IP World Trade Organization – WTO Agreement on Trade-Related Aspects of Intellectual Property Rights – TRIPS Agreement World Intellectual Property Organization – WIPO Trans-Pacific Partnership Agreement - TPP LUAN VAN CHAT LUONG download : add luanvanchat@agmail. Reasons to choose the topic In modern time, the world, society in which human communities are living together tend to increasingly move towards, closer together. Countries, different regions of the world always try to jointly strive together more closely. In that context, after the period of actively negotiations with efforts, Vietnam officially became the 150th member of the World Trade Organisation (WTO), bringing many new opportunities, along with challenges for all traders and enterprises in Vietnam.
In a dynamic market economy, we have to get ourself to find a competitive advantage in order to stay in the game. In the race of this trade matter, intellectual property (IP) is an area bearing no less important role in the economy, as this is a very effective tool to promote, push development, contributions to the prosperity of each country. According to history, although each object in the field of IP carries a certain role, but considering in relationships of trading in goods, both national and international, of Vietnam in the recent time, the category of trademarks (trademarks) take a more prominent position for the development of each enterprise. This concept is closely binded to the process of goods circulation, and is one of the intellectual property assets with tremendous value, or can be considered as a major source of the business capital, in the period of extremely fierce, harsh competition from other competitors.
Trademark is a mean in which is recognized, protected and demonstrated the fruits of development, creating credibility, reputation, competitive advantage and other positive aspects of the business. Moreover, the trademark also plays a very important part in protecting the interests of consumers and social order in general. In this context, the violations related to trademarks are increasingly popular in number, with large scale and increasingly sophisticated, more complex, causing extremely serious consequences and negatives to all of the owners of the trademarks, LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 2 to consumers and to society. Therefore, the protection of industrial property rights on the trademark has always been a pressing issue, to be a priority concern, not only in Vietnam but also in almost any other countries in the world.
In the field of the protection of the law and the enforcement of law, which is currently still a new law, the work of applying the mechanism to implement and protect the trademark somewhat is effective yet completely. It can be seen that to the current situations, regarding the increasing of trademarks infringements, they certainly stems from many causes and various bases. Through this context, the author chose the topic " law on the protection of trademarks – the actual situations and recommendations", with the desire to study on the status of trademark laws, the underlying causes behind it, which will make the initial knowledge basis, from which the Thesis can then give out recommendations and corresponding to such situations, and to conquer, to understand the knowledge about legal protection of trademarks, as well as improve and enhance the effectiveness and efficiency of implementation these mechanisms further, in the scope of domestic and international point. Actual statement of the researching topic IP rights in general, as well as the protecting of the trademarks in particular is still a new field to exploit, which has been researching recently and relatively complicated toward the practical activities, as well as in theory in Vietnam.
Legal thinking on this issue has only been approached by the lawmakers of our country for around 10 years, a relatively short period of time compared to the history of formation and development of IP rights and laws on protection of IP rights in general. Regardless, it is such a new land as stated, but IP rights are increasingly more concerned with time, the number of scientific projects, seminars, articles, research papers on IPR and trademarks in particular are growing in number and quality. The study of trademarks is already mentioned in a number of scientific works, thesises and articles from scientific journals. Some works, articles published about this issue include "Some issues about well known trademark" by Nguyen Nhu Quynh LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 3 (Journal of Law, No.
2/2001), "Protection of trademark in Vietnam "by Master Le Hoai Duong (Journal of the people's Court, No. 10/2003), the scientific research projects such as" Some problems in the theory and practice of the protection of trademarks, service trademarks in the world and Improving methods of Vietnamese law on the protection of trademarks, service trademarks, "Dr. Nguyen Thi Que Anh, master thesis, "Comparison law on trademark protection in Vietnam to international treaties and laws in some industrialized countries "by Vu Thi Phuong Lan; "Protection of trademarks under the law of Vietnam" by Tran Nguyet Minh; "Some issues of the protection of industrial property rights to the trademark in Vietnam under the provisions of civil law" by Vu Thi Hai Yen; etc. Though it is an independent subject and not overlapping with such subjects, the author always willing to inherit, study the theoretical content of such scientific works, thesis, dissertations, and articles in scientific journals, and the archievements, lessons drawn from the reality that is corresponding to the topic.
The researching questions While researching and studying for this topic, the author concluded and thus introduces here some basic researching issues through these respective researching questions: What are the actual situations in respect with the mechanism of trademark protection and trademark enforcment recently? Causes that led to the violations of laws on protecting rights to trademarks What are the recommendations in order to improve and change the actual situations of breaches of laws on trademarks in Vietnam 3. Purpose, subjects and scope of studying 3. Purpose of studying The study was made in order to provide the information about the current situations of violations of trademark law, the analysis of the causes that led to the LUAN VAN CHAT LUONG download : add luanvanchat@agmail.com 4 rising of such violations. From the results obtained, the Thesis will proceed to make specific recommendations to improve the effectiveness of enforcement mechanisms to protect trademarks 3.
Subjects of studying Subjects of studying that the Thesis is intended to study are acts of infringement of law in reality, the implementation of the enterprises on self- protection, the implementation enforcement of trademark protection mechanisms, measures to deal with violations by the relevant authorities. Scope of studying With limited understanding, in the context of the subject which is very wide and complex, with many issues to be resolved, the Thesis focuses mainly on the researching of trademark infringement situations in reality in Vietnam, the trademark infringement cases which have been occurring in provinces, cities across the country.