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As Vietnam integrates into the global economy, protecting and leveraging intellectual property (IP) has become critical for businesses and individuals to establish their market position. A key challenge lies in distinguishing whether intellectual assets should be registered as trademarks or protected as copyrighted works. Despite the 2022 amendments to Vietnam’s Intellectual Property Law (Law No. 07/2022/QH15), which clarify the criteria for IP protection under trademark or copyright law, practical application remains challenging and often unclear.
This article examines how Vietnam’s legal framework and its practical enforcement address trademark applications involving elements of copyrighted works, providing recommendations for intellectual property owners to protect their assets effectively.
Abuse of Intellectual Property Rights for Speculation
According to Clause 3, Article 14 of the 2022 Intellectual Property Law, a work is protected under copyright only if it is directly created by the author through intellectual effort and is not copied from others’ works.
This means that for a work to qualify for copyright protection, it must demonstrate “originality,” characterized by unique and distinctive features rather than generic elements or heavy inspiration from existing copyrighted works.
Logos, for example, may qualify for protection as both applied art under copyright law and as trademarks. If a logo meets the originality requirement, it can be registered in both categories—a practice already common in Vietnam.
However, this dual protection has been exploited for speculation. Many speculators intentionally register trademarks that mimic or are near replicas of existing copyrighted works, exploiting legal loopholes that do not explicitly prohibit registering trademarks that incorporate copyrighted works.
While trademarks identical to copyrighted works are often detected and rejected by examiners, speculators circumvent this by making minor modifications or combining elements of existing works to remove their original distinctiveness before registering them as trademarks.
Even though enforcement provisions for copyrighted works exist, proving bad-faith intent or demonstrating that a trademark application is a replica of a copyrighted work is complex and more challenging than protecting or enforcing trademark rights.
When infringement occurs, copyright owners bear the burden of proving the complete originality of their works, which is often difficult without foresight to collect and retain evidence of potential violations.
Vietnam’s membership in the Berne Convention for the Protection of Literary and Artistic Works further complicates matters. Vietnam must recognize copyright protection granted in other member countries as equivalent to its own. For instance, a logo protected as an applied artwork in the United States must also be recognized as protected in Vietnam.
This retroactive recognition often leads to the invalidation of newly registered works that are similar to long-protected works in other countries.
Conflicts in Applying the “First-to-File” Principle in Vietnam
One significant factor contributing to the complexity of trademark speculation in Vietnam is the adherence to the “first-to-file” principle. This principle, widely adopted in Vietnam and other jurisdictions, grants trademark ownership to the first party to file a valid application for trademark registration in Vietnam, regardless of prior use in commerce.
In contrast, some countries, such as the United States, apply the “first-to-use” principle, where trademark rights are primarily based on actual commercial use, with partial reliance on the “first-to-file” principle.
In Vietnam, the dominance of the first-to-file system allows parties to gain a legal advantage by registering trademarks for well-known foreign brands or works before their rightful owners can do so. This not only harms Vietnam’s international reputation but also stunts societal progress.
This principle also disadvantages copyright owners, as trademark applications often supersede prior use of copyrighted works. Before clear regulations were introduced to prevent the registration of trademarks based on copyrighted works, the Vietnam Intellectual Property Office was obligated to grant registrations to such trademarks, even if they copied pre-existing copyrighted works.
New regulation clearly defines and distinguishes between copyright and trademark protection
The 2022 Intellectual Property Law introduces Clause 7, Article 73, which states that “signs containing copies of works, unless permitted by the owner of the work,” are ineligible for trademark protection.
This provision aims to mitigate trademark speculation in Vietnam under the “first-to-file” principle, particularly for works already protected by copyright. Signs identified as copies of copyrighted works cannot be registered as trademarks, preventing individuals or entities from misappropriating others’ creative works for profit.
Moreover, the law balances the “first-to-file” and “first-to-use” principles by enabling the Intellectual Property Office to reject trademark applications for signs deemed copies of copyrighted works. Copyright holders can also oppose pending trademark applications or request the cancellation of registered trademarks if they infringe upon their copyrighted works.
Challenges in Practical Implementation
While the new provision provides a legal basis for addressing trademark speculation, it remains theoretical due to the lack of detailed guidance for implementation.
1. Ambiguity in Defining “Copies of Works”
The scope of “copies of works” under Clause 7, Article 73, is not clearly defined. Questions arise, such as:
- Does the provision only apply to exact replicas of works, or does it include partial copies?
- How much of the original work must be copied for it to qualify as a “copy”?
- Would minor modifications to the original work bypass the provision?
Clause 10, Article 4, defines copying as the reproduction of all or part of a work or recording by any means or form. However, it remains unclear whether this definition applies to Clause 7, Article 73.
If the provision is expanded to include partial copies, additional clarification is required, such as specifying the percentage of copying that constitutes infringement. Without such clarifications, the provision remains in a legal “gray area,” heavily reliant on the subjective interpretation of examiners.
2. Practical Issues in Detecting Copies
In recent years, bad-faith trademark applicants have rarely submitted exact replicas of copyrighted works. Instead, they make slight modifications to evade detection. Identifying such cases involves subjective judgments, increasing the complexity of examinations.
3. Lack of Integrated Databases
Trademark examiners must cross-check the copyright database maintained by the Vietnam Copyright Office to determine potential infringement. However, the lack of an integrated database between the Intellectual Property Office and the Copyright Office results in duplicative work and inefficiencies.
Additionally, since copyright protection does not require registration, some works created earlier may not be publicly available. For instance, a trademark application filed in 2024 might need to be rejected due to its similarity to a copyrighted work created in 2020 but not publicly disclosed or registered.
Recommendations for Copyright and Trademark Owners
Given the practical challenges, intellectual property owners should adopt proactive strategies to safeguard their rights:
- Dual Protection
Register works as both copyrighted works and trademarks if eligible. This dual approach ensures broader protection and reduces legal risks in the future. - Priority for Trademark Registration
As trademarks generally offer stronger enforcement mechanisms and clearer legal frameworks, copyright owners should prioritize trademark registration in Vietnam for works that qualify. - Comprehensive Documentation
Maintain detailed records of the creation process to demonstrate the originality and existence of the work. Evidence can include creation dates, drafts, sketches, or any other material showing the development of the work. - Regular Monitoring
Monitor trademark and copyright registrations to detect and oppose potential infringements promptly.
Conclusion
The 2022 Intellectual Property Law provides a strong foundation for addressing the overlap between trademark and copyright protection, reducing speculation, and resolving conflicts between these two forms of intellectual property.
However, without detailed guidelines, practical implementation remains challenging. Bridging gaps such as unclear definitions, the lack of integrated databases, and procedural inefficiencies is crucial to fully realize the law’s potential.
By adopting proactive legal measures, intellectual property owners can better safeguard their assets and contribute to a fairer and more effective IP system in Vietnam.
ASL Law is a leading full-service and independent Vietnamese law firm made up of experienced and talented lawyers. ASL Law is ranked as the top tier Law Firm in Vietnam by Legal500, Asia Law, WTR, and Asia Business Law Journal. Based in both Hanoi and Ho Chi Minh City in Vietnam, the firm’s main purpose is to provide the most practical, efficient and lawful advice to its domestic and international clients. If we can be of assistance, please email to [email protected].
ASL LAW is the top-tier Vietnam law firm for Intellectual Property Services. If you need any advice, please contact us for further information or collaboration.
