TRADEMARK

Vu Van Ngoc, PhD

ngocvv@neu.edu.vn

WHAT IS A TRADEMARK?
A trademark is a word, phrase, symbol, or design, or
a combination of these that identifies and
distinguishes the source of goods of one party from
those of others.

A TRADEMARK IS MADE OF :
ANY DISTINCTIVE WORDS, LETTERS,
NUMERALS, PICTURES, SHAPES, COLORS,
LOGOTYPES, LABELS

Examples:

TRADEMARK EXAMPLES

Words

Phrases

TRADEMARK EXAMPLES

Symbols

Designs

WHAT IS A SERVICE MARK?

A service mark is the same as a
trademark, except that it identifies and
distinguishes the source of a service,
rather than a product.

SERVICE MARK EXAMPLES

FUNCTIONS OF A TRADEMARK
Indicates the source of origin of goods or services
Helps guarantee the quality of goods bearing the
mark
Creates and maintains a demand for the product
Used as a marketing tool to build a brand
Can have great $ value to a company
A crucial component of franchising agreements
Useful for obtaining banks or third part finance

THE VALUE OF A TRADEMARK?

A marketing tool

A source of revenue through licensing

A crucial component of franchising

agreements
Useful for obtaining banks or third part
finance
A valuable business asset

BEST GLOBAL BRANDS

2013

WHY PROTECT A TRADEMARK?

Trademarks are protected under federal and

state law

Trademarks are earned not born

Trademarks come into being through actual use

You do not have to register a trademark to have

it protected, but there are some advantages to
doing so

A trademark registration provides:

Constructive notice to the public of the registrant's claim

of ownership of the mark
Registrant's exclusive right to use the mark nationwide
on or in connection with the goods and/or services listed in
the registration

SPECTRUM OF DISTINCTIVENESS &

LEVELS OF PROTECTION
Fanciful
Arbitrary
Suggestive
Descriptive
Generic

MARKS DECLARED FAMOUS

PROTECTING A TM
THROUGH REGISTRATION

While filling in a TM application, it is critical to register your

trademark in all classes in which you use or intend to use your
trademark.

The most widely used classification system (Nice has 34 classes

for goods and 11 for services - a total of 45 classes of goods and
services).

Some TM offices such as in US and Canada require the proof that

the TM is used.
A substantive examination may be required to avoid conflict with
an existing and similar Mark, previously registered.

Some countries publish the TM in a journal allowing 3rd parties

to make an opposition (during a certain period of time).

Once it is decided that there are no grounds for refusal, a

certificate is issued with a validity of 10 years.

Registration can be renewed indefinitely but may be cancelled if

TM is not actively used for a certain period stated in the TM law.

SCOPE OF RIGHTS

The exclusive right to use the mark

The right to prevent others from using an identical
or similar mark for identical or similar goods or
services
The right to prevent others from using an identical
or similar mark for new goods or services

PROTECTING AT HOME
AND ABROAD

The national route

Each country where you seek protection
The regional route (for some countries only)
Countries members of a regional trademark
system: African Regional Industrial Property
Office; Benelux TM office; Office for
Harmonization of the Internal Market of the EU;
Organisation Africaine de la Proprit
Intellectuelle
The international route
The Protocol & Madrid system administered by
WIPO (over 70 member countries)

USING A TRADEMARK

Actively using a TM
Using/maintaining a TM in marketing and
advertising

Using the mark on the internet

Using the mark as a business asset

ACTIVELY USING A
TRADEMARK

Offering the goods or services

Affixing the mark to the goods or their packaging

Importing or exporting the goods under the mark

Using it on business papers or in advertising

USING A TRADEMARK IN
ADVERTISING

Shall be used exactly as registered

Protect TM from becoming generic
Set apart from surrounding text
Specify font, size, placement and colors
Use as an adjective not as noun or verb
Not plural, possessive or abbreviated form
Use a trademark notice in advertising and
labeling

Monitor authorized users of the mark

Review portfolio of trademarks

An evolving trademark

USING A TM ON THE
INTERNET

Use of TM on internet may raise controversial legal

problems
Conflict between trademarks and domain
names(internet addresses) - cyber squatting
WIPO procedure for domain name dispute
(http://arbiter.wipo.int.domains)

USING A TRADEMARK AS
A BUSINESS ASSET

Licensing: owner retains ownership and agrees to

the use of the TM by other companies in exchange of
royalties > licensing agreement (business
expansion/diversification)
Franchising: licensing of a TM central to franchising
agreement.The franchiser allows franchisee to use
his way of doing business (TM, know-how, customer
service, s/w, shop decoration, etc)
Selling/assigning TM to another company (merger &
acquisitions/raising of cash)

ENFORCING
TRADEMARKS

Responsibility of TM owner to identify infringement

and decide on measures

Cease and desist letter to alleged infringer (s)

Search and seize order

Cooperation with customs authorities to prevent

counterfeit trademark goods
Arbitration and mediation (preserve business
relations)

TRADEMARKS VERSUS PATENTS

1. It is easier to create a trademark than a patentable

invention. Trademarks must generally only be distinct
from other marks used on comparable goods, whereas
patentable inventions must be new, useful, and nonobvious. There is generally no requirement that a
trademark be associated with an innovative product.
2. The process of securing international patent
protection is expensive and time consuming compared to
international trademark registrations.
3. More often, there is a greater risk that trademarks
may be misappropriated and misused in foreign
countries than patentable inventions.
4. Trademarks are the main way of establishing the
identity of a corporation or its products.

WELL-KNOWN MARKS
What

does Article 6bis of the

Paris Convention provide for
well-known marks?
Does this Article define what a
well-known mark is?

WELL-KNOWN MARKS
Paris Convention Article 6bis

This obligation is incorporated into Article 16 of the

TRIPS Agreement.

26

Members must protect well-known marks from

infringement whether registered or unregistered.

WELL-KNOWN MARK TREATY

OBLIGATIONS
Paris Article 6bis
The countries of the Union undertake,
ex officio if their legislation so permits,
or at the request of an interested party,
to refuse or to cancel the registration,
and to prohibit the use, of a trademark
which constitutes a reproduction, an
imitation, or a translation, liable to
create confusion, of a mark considered
by the competent authority of the
country of registration or use to be well
known in that country as being already
the mark of a person entitled to the
benefits of this Convention and used for
identical or similar goods. These
provisions shall also apply when the
essential part of the mark constitutes a
reproduction of any such wellknown
mark or an imitation liable to create
confusion therewith.

refuse registration
cancel registration
prohibit use
where likelihood of
confusion
used on identical or
similar goods
no requirement senior
mark be registered, i.e.
applies to unregistered 27
senior marks

WELL-KNOWN MARKS
FACTORS FOR JUDGES TO CONSIDER
Degree of distinctiveness

Duration and extent of use of the mark

Duration and extent of advertising of the mark

Extent of geographical trading area

Channels of trade

Degree of recognition of the mark in those channels of trade

Nature and extent of use of same/similar marks by third parties

Whether the mark is registered

28

EXAMPLE OF WELL-KNOWN MARKS: THE

SOUTH AFRICAN MCDONALDS
CONTROVERSY
Example: McDonalds
registered various
South African
trademarks but did not
use them between 1975
and 1993 (due to
apartheid)
Appellate Division:
found in 1996
McDonalds protected
as a famous mark

EMPRESA CUBANA DEL TABACO V.

CULBRO (2D CIR. 2005) [C P. 301]

Could Cubatabaco
succeed in its claim that
the Cuban COHIBA mark
deserved protection
under the famous marks
doctrine and thus thus
it should succeed on its
section 43(a) Lanham Act
claim? Did it have a right
under Article 6bis of the
Paris Convention to
cancellation of General
CigarsCOHIBA mark?

RECENT CASES INVOLVING WELL-KNOWN

MARKS
Google Inc. v. Pivot Design, Inc., Opposition No.
Opposer, Google, Inc. filed an opposition against
registration of the mark BLOGLE for computer
software for searching, compiling, indexing and
organizing information.

31

91171124 (April 20, 2007) [not precedential].

RECENT CASES INVOLVING WELLKNOWN MARKS

What evidence of fame?
32

- use since 1997 with search engine software

- over 300 million U.S. visitors to website in 2006
- U.S. revenues have risen from over 400 million in
2002 to 7.3 billion dollars in 2006
- Readers Choice survey: Google among the top 5
leading brands worldwide from 2001-2005
- two online dictionary definitions of Google as
trademark for a search engine.

RECENT CASES INVOLVING WELLKNOWN MARKS

33

Googles motion for summary judgment granted on the

basis of the fame of opposers mark, the similarity of
the marks, and the legally-identical nature of the
goods involved.

RECENT CASES INVOLVING WELL-KNOWN

MARKS
Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741
(TTAB 2006).

34

Starbucks filed an opposition against Marshall Rubens

application for LESSBUCKS COFFEE for coffee and
retail store services. The Board sustained the
opposition, finding that STARBUCK was a famous mark
and accorded it a broad scope of protection under
the fifth Du Pont factor.

RECENT CASES INVOLVING WELLKNOWN MARKS

What evidence?
35

$10 billion in sales and $150 million in marketing expenditures

during 2001-2004;
5,000 company-owned and licensed stores throughout the
country;
11 million consumer transactions per week;
and 350,000 hits per week at its website. As of 2004, nearly
half of all American consumers had visited a Starbucks'
location.
Surveys

VINAPHONE V. VINAIPHONE

DURATION OF REGISTRATION OF A TRADE

MARK

Initially for 10 years, then renewed indefinitely for

successive periods of 10 years.

TRADEMARKS UNDER

VIETNAMESE LAW

General conditions for marks to be eligible for

protection
Signs ineligible for protection as marks
Distinctiveness of marks
Criteria for evaluation of whether or not a mark
is well known

GENERAL CONDITIONS FOR MARKS TO BE

ELIGIBLE FOR PROTECTION (ART. 72 LAW ON IP
2005)
A mark shall be eligible for protection when it
satisfies the following conditions:
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.

SIGNS INELIGIBLE FOR PROTECTION AS

MARKS (ART. 73 LAW ON IP 2005) (1)
The following signs shall be ineligible for
protection as marks:
1.Signs identical with or confusingly similar to
national flags or national emblems.
2.Signs identical with or confusingly similar to
emblems, flags, armorial bearings, abbreviated
names or full names of Vietnamese State bodies,
political organizations, socio-political
organizations, socio-politico-professional
organizations, social organizations or socioprofessional organizations or with international
organizations, unless permitted by such bodies or
organizations.

SIGNS INELIGIBLE FOR PROTECTION AS

MARKS (ART. 73 LAW ON IP 2005) (2)
3. Signs identical with or confusingly similar to real names,
aliases, pseudonyms or images of leaders, national heroes
or famous personalities of Vietnam or foreign countries.
4. Signs identical with or confusingly similar to certification
seals, check seals or warranty seals of international
organizations which require that their signs must not be
used, unless such seals are registered as certification
marks by such organizations.
5. Signs which cause misunderstanding or confusion or which
deceive consumers as to the origin, properties, use, quality,
value or other characteristics of goods or services.

DISTINCTIVENESS OF MARKS (ART. 74

LAW ON IP 2005) (1)
1.A mark shall be deemed to be distinctive if it
consists of one or more easily noticeable and
memorable elements, or of many elements
forming an easily noticeable and memorable
combination, and does not fall into the cases
stipulated in clause 2 of this article.
2.A mark shall be deemed to be indistinctive if it is
a sign falling into one of the following categories:
(a)
Simple shapes and geometric figures,
numerals, letters or scripts of uncommon
languages, except where such sign has been
widely used and recognized as a mark;

DISTINCTIVENESS OF MARKS (ART. 74

LAW ON IP 2005) (2)
(b)
Conventional signs or symbols, pictures or
common names in any language of goods or
services that have been widely and regularly
used and known to many people;
(c)
Signs indicating time, place and method of
production; category, quantity, quality,
properties, ingredients, use, value or other
characteristics descriptive of goods or services,
except where such sign has acquired
distinctiveness by use before the filing of the
application for registration of the mark;
(d)
Signs describing the legal status and
business sector of business entities;

DISTINCTIVENESS OF MARKS (ART. 74

LAW ON IP 2005) (3)
(dd)
Signs indicating the geographical origin of goods or
services, except where such sign has been widely used and
recognized as a mark or registered as a collective mark or
certification mark as stipulated in this Law;
(e)
Signs other than integrated marks which are
identical with or confusingly similar to registered marks of
identical or similar goods or services on the basis of
applications for registration with earlier filing dates or
priority dates, as applicable, including applications for
registration of marks filed pursuant to a treaty of which
the Socialist Republic of Vietnam is a member;
(g)
Signs identical with or confusingly similar to another
person's mark which has been widely used and recognized
for similar or identical goods or services before the filing
date or the priority date, as applicable;

DISTINCTIVENESS OF MARKS (ART. 74

LAW ON IP 2005) (4)
(h)
Signs identical with or confusingly similar to another
person's mark which has been registered for identical or similar
goods or services, the registration certificate of which has been
invalidated for no more than five years, except where the ground
for such invalidation was non-use of the mark pursuant to subclause (d) of article 95.1 of this Law;
(i) Signs identical with or confusingly similar to another person's
mark recognized as a well known mark which has been registered
for goods or services which are identical with or similar to those
bearing such well known mark, or for dissimilar goods or services
if the use of such mark may affect the distinctiveness of the well
known mark or the mark registration was aimed at taking
advantage of the reputation of the well known mark;
(k)
Signs identical with or similar to another person's trade
name currently in use if the use of such sign may cause confusion
to consumers as to the origin of goods or services;

DISTINCTIVENESS OF MARKS (ART. 74

LAW ON IP 2005) (5)
(l)Signs identical with or similar to a protected geographical
indication if the use of such sign may mislead consumers as
to the geographical origin of goods;
(m)
Signs identical with, containing or being translated or
transcribed from protected geographical indications for
wines or spirits if such sign has been registered for use
with respect to wines and spirits not originating from the
geographical areas bearing such geographical indications;
(n)
Signs identical with or insignificantly different from
another person's industrial design which has been
protected on the basis of an application for registration of
an industrial design with a filing date or priority date
earlier than that of the application for registration of the
mark.

CRITERIA FOR EVALUATION OF WHETHER OR

NOT A MARK IS WELL KNOWN (ART. 75 LAW ON
IP 2005) (1)
The following criteria shall be taken into account
when considering whether or not a mark is well
known:
1.The number of relevant consumers who were
aware of the mark by purchase or use of goods or
services bearing the mark, or from advertising.
2.The territorial area in which goods or services
bearing the mark are circulated.
3.Turnover of the sale of goods or provision of
services bearing the mark or the quantity of
goods sold or services provided.

CRITERIA FOR EVALUATION OF WHETHER OR

NOT A MARK IS WELL KNOWN (ART. 75 LAW ON
IP 2005) (2)
4.Duration of continuous use of the mark.
5.Wide reputation of goods or services bearing the
mark.
6.Number of countries protecting the mark.
7.Number of countries recognizing the mark as a
well known mark.
8.Assignment price, licensing price, or investment
capital contribution value of the mark.

TRADE NAMES
General conditions for trade names to be eligible
for protection
Objects ineligible for protection as trade names
Distinctiveness of trade names

GENERAL CONDITIONS FOR TRADE NAMES TO

BE ELIGIBLE FOR PROTECTION (ART. 76 LAW
ON IP 2005)

A trade name shall be protected when it is

capable of distinguishing the business entity
bearing it from other business entities operating
in the same business sector and locality.

OBJECTS INELIGIBLE FOR PROTECTION AS

TRADE NAMES (ART. 77 LAW ON IP 2005)

Names of State bodies, political organizations,

socio-political organizations, socio-politicoprofessional organizations, social organizations,
socio-professional organizations and other
entities not involved in business activities shall
not be protected as trade names.

DISTINCTIVENESS OF TRADE NAMES (ART.

78 LAW ON IP 2005)
A trade name shall be deemed to be distinctive
when it satisfies the following conditions:
1.It consists of a proper name, except where the
proper name was widely known by use.
2.It is not identical with or confusingly similar to a
trade name which was used earlier by another
person in the same business sector and locality.
3.It is not identical with or confusingly similar to
another person's mark or a geographical
indication which was protected before the date of
use of such trade name.

ENTERPRISES NAME (ART. 31, LOE

2005) AND REGISTERED OFFICE (ART. 35,
LOE 2005)
Name of an enterprise must be written in
Vietnamese, may comprise of numeric and
symbols, and must be able to pronounce and have
at least two components as follows:
Type of business organization;
Distinct name.
The head office is contacting and transactional
address of an enterprise; it must be a specific
address in the territory of Vietnam

PROHIBITIONS IN CHOOSING AN
ENTERPRISE NAME (ART. 32, LOE
2005)
1. Using a name that is identical or cause confusion
with an existing enterprise name;
2. Using name of the state agencies, peoples armed
forces, political organizations, political-socio
organizations, political-socio-professional
organizations, social organizations or socialprofessional organizations as to constitute fully
or partially the enterprise name, otherwise
agreed by such organizations.
3. Using words and symbols that violate historical
and cultural traditions, good morals and customs
of the nation.

ENTERPRISE NAME IN FOREIGN

LANGUAGES (ART. 33, LOE 2005)
The enterprise name in a foreign language is
that translated from Vietnamese into such a
foreign language. Translation can be done
without or with translating the distinct
component of the enterprise name into a foreign
language.
2. The enterprise name in a foreign language must
be presented in a smaller-size font in comparison
with that in Vietnamese when it is displayed at
the head office, branches, representatives,
transactional papers or publications of the
enterprise.
1.

IDENTICAL AND CONFUSED

ENTERPRISE NAME (ART. 34, LOE
2005) (1)
1. Name of the enterprise is construed as
identical to a name of an existing and registered
enterprise if it is read and written in Vietnamese
as the same as such a name.
2. Name of the enterprise is construed as to cause
confusion with a name of an existing and
registered enterprise if:
a) it is read, in Vietnamese, as the same as such a
name;

IDENTICAL AND CONFUSED

ENTERPRISE NAME (ART. 34, LOE
2005) (2)
b) it is differed, in Vietnamese, from such a

name by a sign &;

c) its abbreviation is identical to the
abbreviation of such a name;
d) it is, in foreign language, identical to
such a name in foreign language;
e) its distinct component is differed from
that of such a name by a prefixed or
affixed number or Vietnamese alphabet,
except that it is given to a subsidiary of
the existing and registered enterprise.

IDENTICAL AND CONFUSED ENTERPRISE

NAME (ART. 34, LOE 2005) (3)
e) its distinct component is differed from that of
such a name by a prefixed word new;
g) its distinct component is differed from that of
such a name by word northern, southern,
central, western, eastern or other similar
word, except that it is given to a subsidiary of the
existing and registered enterprise.