Lưu trữ Intellectual Property

28/10/202228/10/2022

PROTECTION OF SOUND TRADEMARK

Sound trademark has been acknowledged and protected by law in many developed countries such as the United States, Japan, the EU, v.v. Under intellectual property law of these countries, detailed guidelines and regulations are set out

According to WIPO, a sound trademark may include: sounds that are music, which may be pre-existing, or newly composed for trademark purposes, or sounds that are not music existing in nature or sounds produced by man-made devices, machines or means.

In the US, registrable sound trademarks must be distinctive, arbitrary, unique and can create an impression on the customers of the trade source of the goods or services in relation to which it is used. Sound marks in EU are defined as a trade mark consisting exclusively of a sound or combination of sounds.

As Vietnam is integrating in the global trend, The office of the National Assembly has approved of the protection of sound marks as trademarks in the latest amendments of Intellectual Property Law on 16/06/2022. This is an important milestone for more future detailed regulations and development relating to intellectual property protection in Vietnam.

I. Criteria for registration

Provided for in Article 72 of the amended Intellectual property law, criteria for registrable sound trademarks include:

(1) be represented graphically

(2) has distinctive character that differentiate the mark owners’ goods and services from others

Regarding the mark sample in the application form, pursuant to the amendment to Article 105 of Intellectual Property Law, in case of a sound mark, the mark sample must be submitted as an audio file and an accurate graphic representation of the sound.

II. Sound not protected as marks

Aside from the sound not satisfying the registration criteria, as set out in the amendment to clause 1 Article 73 of Intellectual Property Law, sounds that are identical or confusingly similar to Vietnam’s national anthem or that of other countries or international anthem shall not be protected.

III. Effectiveness

Provided for in clause 2 Article 3 of Law amending and supplementing a number of articles of the Intellectual Property law 2022, provisions relating to the protection of sound trademark shall be effective as from 14 January 2023.

IV. Legal complications

Apparently, despite having taken a step to recognize the protection of sound trademark, which is revolutionary, Vietnamese regulations regarding this matter are still ambiguous and lacking. As a result, many legal complications may arise, namely, possible copyright infringement or complications in the registration proceeding due to sound trademarks’ unique and complicated nature.

To save time learning about the law, filling out forms, and submitting documents, you can contact HTLaw for consultation and legal services related to Intellectual Property.

- Email: hue.truong@htlaw.vn
- Phone number: +84 935 439 454.

21/10/202221/10/2022

THE SCOPE OF TRADEMARK PROTECTION IN THE CASE OF BLACK-AND-WHITE TRADEMARKS VS COLOURED TRADEMARKS

I. Trademark and colours

Trademark is an intellectual property protected by law. According to Article 72 Vietnam Intellectual Property Law 2005, amended and supplemented in 2009, 2019, a mark is protected when it satisfies two conditions:

(1) Being a visible sign in the form of letters, words, drawings or images, including holograms, or a combination thereof, represented in one or more colours;

(2) Being distinguishable.

Therefore, colour is one of the elements that define and contribute significantly to a trademark’s distinctiveness. The colours used in a mark, therefore, must be included in the Trademark Registration in order to be protected.

II. Scope of protection in the case of black-and-white trademarks and that of coloured trademarks

Black-and-white trademarks

The ground for trademark protection is the Certificate of Registered Mark. Thus, the scope of protection of a trademark will be determined by the sample of trademark enclosed in the Certificate of Registered Mark. In the case of black-and-white trademark, colours other than black and white would not be protected as part of a trademark.

However, it does not necessarily be implied that the mark owners are banned from using other colours in their black-and-white trademark. As stipulated in point 2 clause c Article 5 Paris Convention for the Protection of Industrial Property, the use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered shall not entail invalidation of the registration nor diminish the protection granted to the mark. The owners are able to use other colours in their black-and-white trademark as they do not alter the distinctive character of the mark. Nonetheless, such use may lead to several possible legal problems relating to trademark protection namely, (i) violation of other proprietor’s trademark; (ii) in case other people using identical or confusingly similar trademark with different colours, those colours would not be deemed as violating elements.

Coloured Trademarks

In order for coloured trademarks to be protected, the mark owners must include the colours in their registration form. Then, the registered colours are included in the mark’s protection scope. Therefore, the scope of protection in this case is broader and more efficient in minimizing the risk of trademark infringement.

However, although the protection scope of a colored mark is broader than that of a black-and-white mark, when registering a colored mark, the colors in the Trademark Registration Certificate constitute the “distinguishing characteristic of the mark” provided for in Article 5 of the Paris Convention. Therefore, the owners will not have the flexibility to use other colors for their trademark as for black and white trademarks.

To save time learning about the law, filling out forms, and submitting documents, you can contact HTLaw for consultation and legal services related to trademark registration.

- Email: hue.truong@htlaw.vn
- Phone number: +84 935 439 454.

05/03/202114/06/2022

Trademark registration in Vietnam

In the extremely competitive market such as nowaday, a product or service can be identified and selected by customers is the important thing for the activity of the company. Besides the quality of products or services, owning an unique and attracting trademark is also one thing that all the company should care about.

So, what is the trademark, owning a trademark and registering it gives the company which benefits?

1. What is trademark?

First of all, the trademark is one of objects that is protected by the intellectual property law, Trademarks belong to the group of industrial property rights defined in the Intellectual Property Law.

According to clause 16, Article 4 of the Intellectual Property Law, “a trademark means any sign used to distinguish products or services of different organizations or individuals, these signs may be in letters, numbers, figures, colors, etc. or a combination of the above factors to express the nature and spirit of the product / service it represents. In particular, the trademark needs to show its ability to distinguish it from others”.

2. What kinds of benefits the company gets from trademark registration?

Owning and registering the trademark brings a lot of benefits to the enterprises:

1. The registration of trademark protection represents the recognition and protection of Goverment throughout the territory of Vietnam with the registered trademark. On that basis, the enterprises are protected from copying or faking their products based on the trademarks of the enterprises.
2. In addition to being legally recognized and protected, enterprises are able to use that trademark to carry out advertising and introducing products to consumers legally to expand their market, create the trust of customers when using products / services
3. Registering the trademark to avoid distinguishing from other similar products in the market. The reputation or the market of the enterprise might be lost by this confusion and there is no mechanism to request to deal with breaches of regulations on use of the trademark.
4. The trademark is also accepted as a valuable asset for transferring (licensing, franchising,..), raising capital from investors. Thereby developing the scale and profitability of the enterprise.

4. Procedure to register trademark

To be register for the protection, the trademark needs to meet a number of general conditional:

1. It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours.;
2. It is capable of distinguishing goods or services of the mark owner from those of other subjects.

The trademark registration is implemented by following step:

Step 1:

Send the dossier to the NOIP (National Office of Intellectual Property of Vietnam) or their representative office in Ho Chi Minh city or in Da Nang.

The required documents:

- Declaration for registration (2 copies)
- 10 trademark samples clearly showing their colors, designs, .. with sizes not exceeding 80mmx80mm..
- Receipt of fees and charges

In addition, some documents may be added such as:

- Letter of authorization
- Documents certify the use of special signs (if the trademark contains symbols, flags and badges of domestic and international agencies, organizations, etc.);
- Document certify registration rights;
- Documents certify the enjoyment of registration rights from others;
- Document prove the priority (if the application has a claim for priority)

Step 2:

After the NOIP receives the application, they will conduct an examination of the form and content of the trademark registration application:

- Formal examination: 01 month. If it has any mistakes in the application, NOIP will send an announcement to the applicant to fix all the mistakes within 01 month from the day the announcement has been received.
- Publication of valid application: within 2 months from the date the application has The decision to accept the valid application
- Content examination: no more than 09 months from the date of publication of the valid application (may be extended for not more than 3 months if requested from the applicant).

In this period, NOIP may request applicant to provide explation for the application, or applicant may send requirement to add or modify the application.

Step 3:

If the trademark meets the conditions for granting the certification, the NOIP shall issue an annoucement of intention to grant the certificate and proceed to grant the certificate when the applicant has fully paid the fees within 03 months since the date of receiving the notice.

However, in reality, the time limit for examining dossiers of the NOIP may be extended from 1 to 2 years due to overcrowding of protection registration applications.

To save time learning about the law, filling out forms, waiting to submit the dossier, you can contact HTLaw for advice and support for Register trademark legal services.

Contact us

- Email: hue.truong@htlaw.vn
- Phone number: +84 935 439 454.

Category: Intellectual Property