MINISTRY OF EDUCATION AND TRAINING FOREIGN TRADE UNIVERSITY MASTER THESIS IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM Specialization: International Trade Law and Policy NGUYEN THI HONG NHUNG Hanoi, 2020 Luan van MINISTRY OF EDUCATION AND TRAINING FOREIGN TRADE UNIVERSITY MASTER THESIS IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM Major: International Economics Specialization: International Trade Policy and Law Code: 8310106 Fullname: Nguyen Thi Hong Nhung Supervisor: Assoc. Le Thi Thu Ha Hanoi, 2020 Luan van CERTIFICATION I hereby certify that the thesis with the title “identicalness and similarity in examining trademarks in Vietnam” is my own research and does not reproduce any other materials. The data indicated in the thesis is clear, accurate and collected from the confident sources of information. The Author Nguyen Thi Hong Nhung i Luan van ACKNOWLEDGEMENTS Throughout the course and completing this thesis research, I have received valuable guidance, dedication and enthusiasm of my supervisors, my teachers, my friends, my colleagues and my family.
With all my respect and gratitude, I would like to express my appreciation and sincere thanks to: My special thanks to my supervisor- Assoc. Le Thi Thu Ha, who was dedicated to guide and help me in the process of researching and writing this thesis. Without her instructions and guidance, thesis might not be completed. I would be grateful to my teachers in Postgraduate Education of Foreign Trade University for interesting and useful lectures, for enthusiastic transmission of valuable knowledge and for the best conditions offering in the process of the course.
I would like to express sincere thanks to my colleagues in Intellectual Property Office of Vietnam in general and in Trademark Examination Center in particular for supporting me with useful and plentiful data and their priceless experiences and knowledge shared with me during the interview and daily working life. My sincere thanks come to my friends and my family, especially my younger sister, for their encouragement and supports during the courses, especially the period of thesis research. This thesis studies on identicalness and similarity in examining trademarks, which is not a brand new topic in the world, but complicated and required various technical knowledge, skills and practical experiences. Thus, the thesis has the inevitable shortcomings and limitations.
I am looking forward to receiving valuable comments for improvement. Sincerely Nguyen Thi Hong Nhung ii Luan van TABLE OF CONTENTS CERTIFICATION. ii LIST OF ABBREVIATIONS.v LIST OF TABLES AND FIGURES. vi CHAPTER 1: INTRODUCTION .1 The significance of thesis .4 Scope of the research .6 Significance to knowledge .7 Structure of the thesis.
6 CHAPTER 2: LITERATURE REVIEW .2 Distinctiveness of trademarks and likelihood of confusion .3 Trademark identicalness and similarity .4 Filling the gap. 11 CHAPTER 3: RESEARCH METHODOLOGY .1 Qualitative Data Collection .1 Data collection via desk research .2 In-Depth Interview .2 Qualitative Data Processing and Analysis. 15 CHAPTER 4: RESEARCH RESULTS .1 Position of trademark identicalness and similarity examination .2 Demand for conducting identicalness and similarity of trademark examination in Vietnam .1 Numbers of filed applications .2 Numbers of third party’s opinions on the grant of protection titles .3 Numbers of appeals .3 Criteria for identicalness and similarity examination of trademarks. 29 iii Luan van 4.1 Identicalness and confusing similarity of signs .2 Identicalness and similarity of goods and services .4 Subjects of comparison as the control marks .1 The prior registered trademarks .2 The widely used and recognized trademarks and the well-known trademarks .3 Another person’s mark which has been registered the registration certificate of which has been invalidated for no more than 5 years .5 Geographical indication and geographical indications being protected for wines or spirits .78 CHAPTER 5: RECOMMENDATION AND CONCLUSION .1 Policy and regulations .2 Platform and Support Instruments .3 Enhancing examiners’ abilities .92 iv Luan van LIST OF ABBREVIATIONS IP Intellectual Property IPRs Intellectual Property Rights IPVN Intellectual Property Office of Vietnam TEC Trademark Examination Center WIPO World Intellectual Property Organization EUIPO European Union Intellectual Property Office JPO Japan Patent Office KIPO Korean Intellectual Property Office IP Law Viet Nam Intellectual Property Law (IP Law) of December 11, 2005, amended in 2009 and 2019 Circular Circular No.
01/2007/TT-BKHCN of February 14, 2007 of the Ministry of Science and Technology, guiding the implementation of Decree No. 103/2006/ND-CP of September 22, 2006 of the Government, detailing and guiding the implementation of a number of articles of the IP Law regarding industrial property Internal Guidelines IPVN Guidelines on trademark examination v Luan van LIST OF TABLES AND FIGURES Table 1: Coding references .17 Table 2: Statistics on filed national trademark applications and granted trademark certificates in Vietnam from 1982 to 2019 .24 Table 3:Trademark Identicalness and Similarity Definition .29 Table 4: Defining identicalness of two goods or two services .59 Table 5: Popularity of Legal Citations on Reasons for Refusals .73 Figure 1: Procedures of processing trademark applications in Vietnam .22 Figure 2: Filed national trademark applications in Vietnam 1982-present.26 Figure 3: Granted trademark certificates in Vietnam 1982-present.27 Figure 4: Number of third party’s opinions on the grant of protection titles filed in IPVN.28 Figure 5: Vietnamese numbers of appeals from 2005 to 2019 .29 vi Luan van ABSTRACT In the context of globalization and international integrations, goods and services become more plentiful and diversified in the market. Trademarks emerge to become more and more important in helping consumers distinguish goods and services provided/produced by one to another enterprise. The confusion of consumers on trademarks and brands due to similarity or identicalness brings damages not only to themselves but also the goods and services suppliers.
Henceforth, cultivating a distinctive brand or trademark is a big question for enterprises and it is essential to assess the distinctiveness of a trademark before investing in developing their business. In Vietnam, distinctiveness is assessed during in both stages of acquiring exclusive rights and enforcing the rights on basis of absolute grounds and relative grounds. Identicalness and similarity of a trademark play a key role in defining the distinctiveness of a trademark on the relative grounds. This article shall provide a picture on how identicalness and similarity are assessed in the process of examining trademarks in Vietnam and dig deeper in how the legal frame for the issues is interpreted and applied in the practice of examination.
Keywords: trademark identity, trademark identicalness, trademark similarity, likelihood of confusions. vii Luan van CHAPTER 1: INTRODUCTION 1.1 The significance of thesis A trademark is a type of intellectual property consisting of a mark of any form used to distinguish products or services of a particular individual or enterprise from those of others. It first appeared in the ancient world, which was thought to be first used by a sword maker in Roman Empire named Blacksmiths (Richardson, 2008), started to play an important role with industrialization, and emerging as a key factor in the modern world of international trade and market-oriented economies. The first legislative act was passed in 1266 under the reign of Henry III requiring all bakers to use a distinctive mark for the bread they sold and began to be codified in modern law since the 19th century in both civil and common law systems (Frank, 1925).
For the former, the French first comprehensive trademark system in the world was passed into law in 1857 with the “Manufacture and Goods Mark Act”. For the latter, the Merchandise Marks Act 1862 made it a criminal offence to imitate another’s mark with “intent to defraud or to enable another the defraud” in Britain and its first legislative act on registration of trademarks was passed in 1875 as “Trade Marks Registration Act” (Bently, 2008). All international treaties and national legal system, from Comprehensive and Progressive Agreement for Trans-Pacific Partnership to the Agreement on Trade- Related Aspects of Intellectual Property Rights, from civil law system such as French and Vietnamese to common law system such as the United Kingdom and the United States of America, share the common understanding of definition and functions of trademarks, however, differ one another in conditions governing protection and acquisition of trademark rights. For instance, sound trademarks are protected in some countries and regions like the United States of America, Australia and European Unions and not protected in other countries such as Vietnam.
The conditions for a trademark to be protected are based on its distinctiveness whether trademark rights are acquired via either use or registration. Distinctiveness of trademarks are assessed base on two grounds: absolute grounds and relative 1 Luan van grounds. The first accounts for inherent distinctiveness of a mark or whether they are sufficiently distinctive, not deceptive, not immoral, etc.) while the second assesses the distinctiveness of a mark (hereinafter called the contested mark or junior mark) in comparison with the prior marks (hereinafter called the control mark or senior mark). The procedures of assessing trademark distinctiveness are also differentiated from one country to another.
In general, three typical approaches can be observed internationally: British system, traditional French system and German system. For the first, examination on absolute and relative grounds are provided, and also for an opposition procedure. It is applied, in Europe, by countries such as Portugal, Spain and the Northern European countries. For the second, IP offices examine only for absolute grounds and the law provides for no opposition procedure.
It is left to the owner of the prior rights to bring a cancellation or infringement action against the registration or use of a more recent sign. This system has also been adopted by Switzerland. The third system provides for examination by the office for absolute grounds and also for an administrative opposition procedure. It is a good compromise between the more extreme systems mentioned before, and follows a modern trend which is reflected in the proposed European Community Trade Mark system.
1 Vietnam adapted the British system, it conducted examination on both absolute and relative grounds and offered administrative opposition procedure. Throughout its history, trademarks have experienced great development in both quantity and quality. Specifically, an estimated 10.9 million trademark applications were filed worldwide in 2018 – about 1.7 million more than in 2017 corresponding to growth of 19.2%, which marks a ninth consecutive year of growth. On national scale, Vietnam has been experienced dramatic increase in trademark filed for 15 years2.
Specifically, the total number of applications climbs from 14,916 to 53801, equivalent to 360% and that number has continuously risen up for the last 10 years3. In additions, new forms of trademark besides conventional ones have been used in 1 Introduction to Trademark Law and Practice, WIPO, 1993 2 WIPO annual report 2019 3 IPVN annual report 2019 2 Luan van the market and also gained legal protection such as sound marks, smell marks, or positions marks. Henceforth, the conditions of trademarks protection are always in need of adjustment in order to live up with the revolutions of trademarks themselves. Moreover, the assessment of trademark identicalness and similarity results in different conclusions among countries due to territorial features.
For instance, in case of “ ”, Sony Corporation filed trademark applications via Madrid Systems and designated in 26 countries. With the same marks and the same goods and service, there are three different results from different countries after the process of examining its distinctiveness. In details, Sony Corporation received the notifications of the total provisional refusal of protection from German and Spanish Offices, the partial provisional refusal of protection from Chinese office, and no notification from others (Which means those offices intended to grant protection titles)4. Henceforth, studies on conditions for trademark protection on national levels are always in need.
Additionally, the relative grounds for distinctiveness assessment, namely, examination of identicalness and similarity of trademarks are “relative” and dependent on many factors. Specifically, the influent factors that constitutes confusion due to identicalness and similarity include sources of information used to search for the control, the discenting opinions regarding whether exists the confusing similarity or identicalness or not, the awareness of related public on the goods and services that bearing marks, and so on.