The concept of well-known trademarks is relatively new and complex in Vietnam. Currently, the amended 2022 Intellectual Property Law does not provide specific criteria for determining a well-known trademark. Typically, a well-known trademark receives official recognition when, in a dispute, a court issues a ruling acknowledging one of the trademarks involved in the dispute as having widespread recognition among the public and consumers. Therefore, registration is not necessary for such recognition as a well-known trademark.
Regulations on well-known trademarks in Vietnam
Article 20 of the Unified Intellectual Property Law 2022, Document No. 11/VBHN-VPQH (“IP Law 2022“), defines a well-known trademark as a trademark that is widely known to the relevant public in Vietnam.
Point a of Clause 3, Article 6 of the IP Law 2022 stipulates that industrial property rights for well-known trademarks are established based on usage, independent of registration procedures.
Criteria for evaluating well-known trademarks in Vietnam
Article 75 of the IP Law 2022 outlines the criteria for evaluating well-known trademarks in Vietnam, which include (one or several, or all of the following criteria):
- The number of relevant consumers who are aware of the trademark through purchases, use of goods or services bearing the trademark, or through advertising.
- The geographical area where goods or services bearing the trademark have been circulated.
- Sales volume of goods or services bearing the trademark, or the quantity of goods sold and services provided.
- Continuous duration of trademark usage.
- Wide reputation of goods or services bearing the trademark.
- Number of countries protecting the trademark.
- Number of countries recognizing the trademark as well-known.
- Transfer price, licensing fee, investment capital contribution value of the trademark.
Context of recognizing a trademark as well-known
The concept of a well-known trademark refers to a trademark that has achieved a high level of recognition and prestige among the public. These trademarks are widely known and therefore hold significant trademark value. Protection and detailed regulations regarding well-known trademarks vary among countries, but some general principles are established by international agreements concerning the recognition and protection of well-known trademarks.
Both in Vietnam and the international context, the criteria for recognizing a well-known trademark do not solely depend on the laws of each country but are geared towards international agreements. Additionally, even if a trademark is recognized as well-known in one territory, such as in Vietnam, that recognition may not be accepted in another territory, such as the United States, if the trademark does not exist or achieve significant market recognition there.
For example, the Highlands Coffee trademark may be well-known in Vietnam and the Philippines, as well as other Southeast Asian countries, but on the international stage or in strong markets like the United States, the Highlands trademark certainly cannot match the fame of trademarks like Starbucks, Maxwell, Caribou Coffee, and others.
The concept of a well-known trademark is particularly important in the field of intellectual property as it provides enhanced protection to prevent unauthorized or infringing use. Well-known trademarks usually receive broader and stronger protection than ordinary trademarks.
The criteria for determining a well-known trademark may vary across regions, but some common factors considered include the level of recognition, prestige, duration of trademark usage in commerce, and legal history (such as successful legal actions to protect the trademark from unauthorized or infringing use, or similar allegations with other trademarks).
Regulations on well-known trademarks at the International Level
The Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) are two important international agreements that provide principles for protecting well-known trademarks. Many countries have incorporated the provisions of these agreements into their legal systems.
Although TRIPS does not provide an official definition of well-known trademarks, the agreement acknowledges the importance of well-known trademarks and recognizes the need for special protection for them.
TRIPS requires member countries to provide special protection for well-known trademarks. This protection is not limited to specific goods or services but also extends to similar or unrelated goods or services.
Furthermore, TRIPS requires member countries to treat well-known trademarks fairly and equally. This ensures that well-known trademarks are considered and protected in a lawful and effective manner.
In the event of a violation concerning a well-known trademark, member countries must provide legal measures to protect the trademark from unauthorized use, including preventing the use of similar trademarks that could cause confusion or diminish the value and reputation of the well-known trademark.
These provisions are also reflected in the Paris Convention. Specifically, Article 6bis of the Paris Convention for the Protection of Industrial Property contains provisions regarding well-known trademarks as follows:
By default, if national law permits or at the request of the concerned party, member countries of the Paris Convention have the responsibility to refuse or invalidate the registration and prohibit the use of a trademark that is a copy, imitation, translation, or likely to cause confusion with a registered trademark or a trademark recognized as well-known in a member country of the Paris Convention.
These provisions also apply in cases where the essential component of the trademark is a copy of any well-known trademark or an imitation likely to cause confusion with that trademark. The time limit for canceling such a trademark shall not be less than 5 years from the date of trademark registration. Member countries of the Convention have the right to determine the time limit within which they may require the prohibition of trademark use.
Some Globally Recognized Well-known Trademarks
Here are some internationally recognized well-known trademarks that have gained widespread recognition across most countries and territories. Therefore, it is not advisable to register trademarks that are similar in name or image with the following trademarks, even when their products/services may significantly differ from the product/service group of the trademark (or in the case of unregistered trademarks, the products/services they are most well-known for in the market):
- Coca-Cola: Coca-Cola is a globally renowned beverage trademark. Originating in 1886, Coca-Cola has become an icon in the beverage industry with a massive consumer base. The trademark is known for its distinctive red scripted logo and the unique taste of Coca-Cola soda.
- Google: Google is a leading technology company and online search engine. The Google trademark has become an essential part of modern life, providing services such as search, email, maps, and various other applications. Thanks to its fame, the trademark name has even become a commonly used verb synonymous with the term “search.”
- Nike: Nike is a well-known sports trademark known for its footwear, apparel, and sports accessories. With its iconic Swoosh logo, Nike has built a strong image associated with athletes and competitiveness in the sports industry.
- McDonald’s: McDonald’s is a globally recognized fast-food restaurant chain. With its “Golden Arches” logo and a diverse menu including hamburgers, french fries, and other fast foods, McDonald’s has become an icon of global culinary culture and business.
- Apple: Apple is a technology company that produces electronic products like the iPhone, iPad, MacBook, and Apple Watch. With innovative design and advanced technology, Apple has built a global user community and become one of the most well-known technology trademarks in the world. The company also holds the distinction of being the first to achieve market capitalization milestones of 1 trillion, 2 trillion, and soon to be 3 trillion USD, an achievement unmatched by any other company.