Conditions for trademark protection according to the latest Intellectual Property Law

1. What is a trademark? 

According to Clause 16, Article 4 of the Intellectual Property Law 2005 (amended 2009 and 2019), a trademark is a sign used to distinguish goods and services of different organizations and individuals.

Specifically, there are the following types of brands:

- A collective mark is a mark used to distinguish the goods and services of members of the organization that owns that mark from the goods and services of organizations and individuals that are not members of the organization. that position.

- A certification mark is a mark that the mark owner allows other organizations and individuals to use on the goods and services of that organization or individual to certify the characteristics of origin, raw materials, materials, method of producing goods, method of providing services, quality, accuracy, safety or other characteristics of goods or services bearing the mark.

- Associated trademarks are trademarks registered by the same entity, identical or similar, used for products or services of the same or similar type or related to each other.

- Famous trademark is a trademark widely known by consumers throughout the territory of Vietnam.

(Clause 17, 18, 19, 20 Intellectual Property Law 2005 (amended 200, 2019)

However, when the Intellectual Property Law 2022 takes effect from January 1, 2023, the associated trademark will be abolished and the famous trademark will have its definition revised as follows: “A famous trademark is a trademark widely known to the relevant public in the territory of Vietnam.”

2. Conditions for protection of trademarks

A trademark is protected if it meets the following conditions as prescribed in Article 72 of the Intellectual Property Law 2005 (amended 2009, 2019):

(i) A visible sign in the form of letters, words, drawings, images, including three-dimensional images or a combination of such elements, expressed in one or more colors;

The revised Intellectual Property Law 2022 takes effect from January 1, 2023, amending condition (i) to: Is a visible sign in the form of letters, words, drawings, images, three-dimensional images or a combination of such elements, represented by one or more colors or audible marks expressed in graphic form

3. Signs are not protected as trademarks

Specifically, in Article 73 of the Intellectual Property Law 2005 (amended 2009, 2019), the following signs are not protected as trademarks:

(i) Signs that are identical or confusingly similar to national flags and emblems of other countries;

(ii) Signs that are identical or confusingly similar to symbols, flags, badges, abbreviated names, full names of state agencies, political organizations, socio-political organizations, or organizations. socio-political-professional organizations, social organizations, socio-professional organizations of Vietnam and international organizations, if not authorized by those agencies or organizations;

(iii) Signs that are identical or confusingly similar to the real names, nicknames, pseudonyms, or images of leaders, national heroes, famous people of Vietnam or foreign countries;

(iv) Signs that are identical or confusingly similar to certification marks, inspection marks, or warranty marks of an international organization that that organization requests may not be used, except in the case of this organization itself. register those marks as certification marks;

(v) Signs that mislead, confuse or deceive consumers about the origin, features, uses, quality, value or other characteristics of goods or services .

Compared to the current Intellectual Property Law, the revised Intellectual Property Law 2022, effective from January 1, 2023, will have the following amendments and additions:

- Amend sign (i) to: Sign identical or similar enough to cause confusion with the National Flag, National Emblem, National Anthem of the Socialist Republic of Vietnam and other countries, international anthems.

- Adding two additional signs that are not protected as trademarks:

+ A sign is the inherent shape of the goods or is required by the technical characteristics of the goods;

+ Signs containing copies of works, unless authorized by the owner of that work.