TRADEMARK INFRINGEMENT, HOW TO DETERMINE?

Mark is an object of intellectual property rights, belonging to the group of industrial property rights protected under the provisions of law in Vietnam. In a market economy, infringement on trademark rights  (hereinafter referred to as “trademark infringement”) is a very popular act with serious impact on the legitimate rights and interests of the mark owner. So, what kind of behavior is determined as trademark infringement?

1.         What is trademark?

Trademark means any sign used to distinguish goods or services of different organizations or individuals. Including:

–          Collective mark means a mark used to distinguish goods or services of members of an organization which is the owner of such mark from marks of non-members of such organization.

–          Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services in order to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such trademark.

–          Well known trademark means a trademark widely known by consumers throughout the territory of Vietnam.

2.         Grounds for the generation and establishment of trademark rights

Industrial property rights to trademark shall be granted on the basis of decisions on granting protection issued by competent authorities in accordance with registration procedures specified in this Law or on the basis of recognized international registration granted accordance with international agreement to which the Socialist Republic of Vietnam is a signatory. Noted, industrial property rights to well-known tradetrademarks shall be granted on the basis of their use instead of registration.

A trademark shall be eligible for protection when it satisfies the following conditions:

–          It is a visible sign in the form of letters, words, drawings, images, holograms, or a combination thereof, represented in one or more colours or sound trademark that can be graphically presented.

–          It is capable of distinguishing goods or services of the trademark owner from those of other subjects.

>> DETERMINATION OF TRADE NAME INFRINGEMENT https://linconlaw.vn/determination-of-trade-name-infringement/

>> MUST-KNOW TIMELINE FOR APPLICATION OF WORK PERMIT FOR FOREIGNERS https://linconlaw.vn/must-know-timeline-for-application-of-work-permit-for-foreigners/

3.         Determination of trademark infringement elements

Infringe elements  upon trademark rights are signs attached to goods, goods packaging, means of service, transaction documents, signs, advertising means and other business means that are identical or similar. similar enough to cause confusion with the protected trademark.

a.        Basis for considering trademark infringement elements

The consideration of trademark infringement elements is based on:

–          The scope of trademark protection, including trademark samples and list of goods and services, is determined in the trademark Protection Titles or Certificate of internationally registered trademark protected in Vietnam or an extract National register of industrial property; or

–          Through evaluation of evidence proving well known trademarks according to regulations.

b.        Common trademark infringement elements:

Infringement elements can be determined when both conditions are met:

–          The sign is suspected to be identical or similar enough to cause confusion with a trademark within the scope of protection; therein:

+          A sign is considered identical to a trademark within the scope of protection if it has the same structure and method of expression;

+          A sign is considered confusingly similar to a protected trademark if it has a number of components that are completely identical or similar to the point of not being easily distinguishable from each other in terms of structure and pronounciation method, transcription, meaning, presentation, color for visible signs, music, tone for audio signs and the use of signs that are likely to cause consumer confusion about branded goods and services;

–          Goods and services bearing suspected signs of being identical or similar in nature or function, use and having the same consumption channels with goods and services within the scope of protection; or are related to each other in nature or function or method of implementation.

Note: To determine whether a suspected sign is a trademark infringement element, it is necessary to compare that sign with the trademark, and at the same time compare the goods and services bearing the trademark to goods and services within the scope of protection.

c.        Infringement elements of famous trademark rights:

For well-known trademarks, the suspected sign is considered an infringement element of trademark  if:

–          The sign is suspected to be identical or similar enough to cause confusion with a trademark within the scope of protection; therein:

+          A sign is considered identical to a trademark within the scope of protection if it has the same structure and method of expression;

+          A sign is considered confusingly similar to a protected trademark if it has a number of components that are completely identical or similar to the point of not being easily distinguishable from each other in terms of structure and pronounciation method, transcription, meaning, presentation, color for visible signs, music, tone for audio signs and the use of signs that are likely to cause consumer confusion about branded goods and services;

–          Goods and services bearing suspected signs of being identical or similar in nature or function, use and having the same consumption channels with goods and services within the scope of protection; or are related to each other in nature or function or method of implementation; or goods or services that are not identical, not similar, or not related to goods or services bearing a well-known trademark but are likely to confuse consumers about the origin of goods or services or create an impression misrepresentation of the relationship between the producer or seller of that product or service and the owner of a well-known trademark.

4.        Handling trademark infringement actions

Infringement of trademark rights can be fined up to VND 20 million.