On February 14, 2007 the Vietnam National Office of Intellectual Property (NOIP) announced changes relating to trademark practices. We bring you an easy reference update.

Descriptive Section:

The type of mark must be described as:

1. ordinary mark,
2. collective mark,
3. certification; or
4. associated mark

Associated Marks/Goods and Services

• If previous applications have been lodged, details of numbers must be given in the case of associated goods and services. Failing this, each mark will proceed as an independent mark.

Certification Marks

• Must be described in terms of the objective, contents and method of certification.

Declaration

• State whether the mark comprises of many elements and detail each element and it’s combination
• Specify whether the sample mark requires protection or not.
• If words or letters in the mark are not Vietnamese, then reproduce in Vietnamese (phonetically) with a translation.
• If numbers are in either Latin or Arabic, then use Arabic numbers.
• The list of goods and services must be in accordance with the list of international classification (in accordance with the Nice Agreement)

Sample Marks

• In addition to the sample mark attached to the Declaration, 9 similar samples must be included.
• Sample marks’ dimensions must be no less than 8 millimeters (mm) and no more than 80 mm.
• The overall size must not exceed an 80mm x 80mm dimension.

Regulation requirements on use of collective or certification marks

• Summarized information on the mark, owner, goods and services that bear the mark
• Conditions for the grant of a license to use the mark and license termination
• Obligations of the mark users
• Rights of the mark holder
• Mechanism of grant of license and control of the mark use aimed at guaranteeing the quality and reputation of products/services bearing the mark
• Dispute settlement mechanism

A geographical name may be registered as a certification mark if the relevant local authority authorizes the applicant.

If boundaries of the geographical area or permission from local authorities cannot be determined, a map bearing the geographical indication of the products/services certified by the relevent authority may be required.

Assessment of distinctiveness

A sign (letters, numerals, drawings and images) is not distinctive when:

• Vietnamese consumers misunderstand the language of the sign because its source is not Latin e.g. a Slavic or oriental (other than Vietnamese) language.
• Although the language is Latin, some elements are unreadable, unless accompanied by a drawing.
• The consumers become confused and misunderstand the sign because of too many jumbled letters and expressions.
• The sign is undistinguishable because the language is so commonly used in Vietnam even though it is sourced from Latin.
• The sign is common like a geometrical sign, is a widely used logo, or is so complicated that consumers cannot understand it.
• The image on the sign is identical with or similar to an image of a national hero, celebrity of Vietnam or a foreign county, thereby causing confusion.

It may still be distinctive if it has been widely used and consumers are very familiar with it. Proof of continuous and common wide use of the mark must be lodged.

A combination sign is distinctive when:

• Both the letters and images are distinctive but so is the combination.
• The strongest element (either the letters or images), causes the consumers to notice the mark regardless of the combination being non-distinctive.

Assessment of similarity

Signs

• Signs are similar if the structure, contents, pronunciation, meaning and form of expression are identical.
• Signs are confusingly similar if:

o The structure, contents, pronunciation, meaning and form of expression of the sign and the conflicting mark are so similar that consumers think the signs are different versions or have the same origin.

o The sign is a transcription or translation of the well-known sign in the conflicting mark.

Goods and Services

Two goods or services are identical if:

• Their nature, function and use of purpose are the same;
• Their function and use of purpose are the same, but their nature is closely similar.

Two goods or services are similar if:

• Their nature is similar;
• Their function and use purpose are the same; and
• They enter the market via the same channel.

One item of goods and one service are similar if:

• They are formed from each other;
• They are unable to complete their functions without each other.

The February 2007 update has further provisions relating to other areas of intellectual property.