WELL- KNOWN MARKS

Definition: A well-known trademark is defined as "a mark that has been used continuously for prestigious goods and/or services so that such trademark has become widely known". Right to a well-known mark shall be conferred from the Decision of Recognition of Well-known Mark granted by the National Office on Intellectual Property (NOIP). The law of Vietnam is still lacking in detailed regulations/provisions on the formalities and/or procedures for obtaining the Decision of Recognition of Well-known Mark. Nevertheless, in practice, the NOIP has extended protection to well-known marks in the course of trademark oppositions, cancellations and other trademark disputes even while such marks have not yet been officially recognized to be well-known.

Scope of protection of well-known trademark under Vietnam trademark law

Conflicting Marks: A mark shall be deemed to be in conflict with a well‑known mark where that mark constitutes a reproduction, an imitation, a translation, or a transliteration, liable to create confusion, of the well‑known mark, if the mark is used, is the subject of an application for registration, or is registered, in respect of goods and/or services which are identical or similar to the goods and/or services to which the well‑known mark applies.

A mark shall be deemed to be in conflict with a well‑known mark, irrespective of the goods and/or services for which a mark is used, is the subject of an application for registration, or is registered, where the mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation, or a transliteration of the well‑known mark, and such use could result in a likely confusion in respect of the origin of goods and/or services or an inaccurate impression of the connection between the user of such sign and the owner of the well-known mark,

Invalidation Procedures: The owner of a well‑known mark shall be entitled to request the invalidation, by a decision of the competent authority, of the registration of a mark which is in conflict with the well‑known mark.

Prohibition of Use: The owner of a well‑known mark shall be entitled to request the prohibition, by a decision of the competent authority, of the use of a mark which is in conflict with the well‑known mark.

REQUIREMENTS

The following documents are required for recognition of a well-known trademark:

1.  A Power of Attorney from the Applicant duly certified by a Notary Public; (a fax copy at filing is acceptable provided that the original is submitted within three months from the filing date);

2.   A certified copy of the Business Licence;

4.   A Notarized Affidavit containing information and documents proving that the mark is well known that should include, but not limited to, those which clearly show:

• The estimated number of concerned consumers who may be aware of the mark through buying, selling, or using the products or services bearing the mark, or through advertisement of the mark;

• The territories where the products or services bearing the mark are circulated or provided;

• The annual turnover from selling the products or supplying services bearing the mark, or number of products sold;

• The duration of uninterupted use of the mark;

• The number of countries where the mark is registered and recognized as being well-known; the record of successful enforcement of right in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;

• The value associated with the mark, for ex.  the value of the mark in assignment, licensing, investment capital contribution, etc.