Date: 25-09-2018 by: Banca IP Law Firm
How to choose a good trademark to register in Vietnam?
When a new business is entering a market, selecting a perfect mark to represent the company isn’t easy. Many companies presume the trademarks used such as names, logos, slogans…should educate the target consumers, rather than be creative as it could cause confusion among consumers. The consumers, then have no ideas what they’re selling. More importantly, the trademark needs to be distinctive and differentiated from competitor’s brands.
Apart from distinctiveness or capable of distinguishing a trademark from others, a good trademark should possess such qualities: easy to remember and pronounce, short, even suggestive of potential benefits or quality of goods. These attributes might encourage consumers to have a try on their products/services, also create positive connection to call for their actions. Successful trademark selection may make great success for many big name companies such as Lexus, Xeros, Kodak, Sony or 3M…
Companies usually tend to use proper names, even common nouns or adjectives to indicate quality of goods/services such as green, clean, durable, nice, optimal, number 1,…. Such names as ‘Golden Pen’ in the Stationary sector, ‘Green Tea’ in drink sector, ‘Yummy Yummy’ in restaurant sector or ‘Crispy Bread’ in food sector,… are considered as descriptive trademarks. The reason for choosing such descriptive trademarks are: they are “strong” trademarks which describe exactly or similarly that help lock the the competitors and prevent them from penetrating the company’s market share. However, such descriptive elements will be great barriers when registering for a trademark. Under Article 74 of the Vietnam Intellectual Property Law:
- A mark shall be considered as distinctive if it consists of one or several easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and is not those signs provided for in paragraph 2 of this Article.
- A mark shall not be considered as distinctive if it is signs falling under one of the following cases:
a, Simple devices and geometric figures; numerals, letters, or words of uncommon languages, except for signs having been widely used and recognized as a mark;
b) Signs, symbols, pictures or common names in any language of goods or services that have been widely and often used and are common knowledge;
c) Signs indicating the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the goods or services, except for signs having acquired distinctiveness through use before the filing of mark registration applications;
d) Signs describing the legal status and activity field of businesses.
Accordingly, under the above provisions of Intellectual Property Law, trademarks with constituted elements such as letters, images,… are descriptive of goods/services or description of activity field of the business are not considered as distinctive. Therefore, they shall be refused in trademark registration if the owner files the application. However, there are also some exceptions for descriptive trademarks. If they are currently in use or widely known by consumers, they can be considered as distinctive. Thus, they can reach the protection.
However, in order to apply the aforesaid exceptions, individuals/businesses must provide sufficient evidence on wide use of the applied trademarks. The NOIP shall consider following factors based on evidence provided: the time of beginning of the use, the present scope, and level of use, whether the mark is made in lawful business production, commerce, advertising or marketing activities, as well as related evidence on distinctiveness ability compared with other products/services. According to Article 39.5.b of Amended Circular 01, the following exceptions shall apply upon assessment of distinctiveness of character signs or figure signs:
a, A sign that falls into the cases specified at Points 39.3.a, b, c, f and g and Points 39.4.a, b, c, d and e of this Circular has been used as a mark and widely known to consumers and that mark therefore become distinguishable from relevant goods and services.
b, To be subject to the application of this exception, the applicant shall furnish evidence of the wide use of that mark (the time of beginning of the use, present scope and level of use, etc., in which, the mark shall be considered “in use” when the use is made in lawful production, business, commercial, advertising or marketing activities) and evidence of the mark’s distinctiveness from the mark proprietor’s relevant goods and services. In this case, that mark shall be recognized distinctive if it is presented in the form in which it has been uninterruptedly and widely used in the reality.
For further consultation about trademark protection in Vietnam, if you are unsure about the chosen trade name to use in Vietnam, just drop us a line for best-cost and effective quality of service before filing a trademark application to assure the success rate and minimal of refusal:
Banca Intellectual Property Firm
Address: 15B Trieu Viet Vuong, Hai Ba Trung district, Hanoi, Vietnam
Hotline: +84 243 9433 007
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