Table Of Contents

Copyright and Trademark are two of the most basic tools of the law regarding the protection of logos, images, and whatnot. Being on similar backgrounds, it would appear that copyright and trademark cannot be at odds with each other. However, it is said that there may be a conflict between them both in the wording of the law and in the practice of the law While copyright is a right automatically granted to the author of the work when it was defined, a trademark is created only through registration (with the exception of a well-known trademark, but that is another story). The problem starts to arise especially when the author creates a brand, logo, slogan, etc, or other visual representation of their business that is embodied by detail which expresses a particular idea that linked to a useful product like a commodity

Generally speaking, the above-mentioned brand identification design or logo is regarded by the law as an applied art piece, which is eligible for copyright protection as well as trademark protection. Because of this, the owner of a trademark may disagree with the copyright holder of an applied art piece, even though generally speaking, the same subject matter may be covered by both trademark and copyright regulation. At that point, the two conflicting phenomena might emerge as once.

 

The idea that a trademark registration will be void if it is too similar to an earlier copyrighted logo is not expressly stated in the legislation. A copyright owner may, nevertheless, raise some circumstantial arguments in opposition to a trademark registration. Article 9 of the Law on Intellectual Property depict a principle in regards rights and obligation of individual and organization in the protection of Intellectual Property, which state: "Organization and individual... shall be obliged to respect the intellectual property rights of other organizations and individuals in accordance with the provisions of this Law and other relevant laws."

This clause can be interpreted to suggest that, in the event that the use of a logo protected by disputed registration clashes with the third party's copyright, the third party may use its prior copyright (intellectual property right) for the logo to invalidate a trademark registration. However, as it states that only "industrial property rights," not "intellectual property rights," may be invalidated, it does not function the other way around. Nevertheless, this clause is rarely used in reality because it is ambiguous and does not specify specific reasons or grounds for the invalidation.

Another relevant provision is Point 74.2.p Law on Intellectual Property, which stipulates that a mark is ineligible for protection as a trademark if it is identical or confusingly similar to the name, image of a character or imagery in another person's copyrighted work and which has been well-known before the filing dates, unless it is permitted by the work owner. In the strict sense, a logo would not be considered character or figure under the aforementioned clause. Therefore, it is unlikely that this clause will be used to resolve the conflict of rights.
It is important to remember that Marvel Comics Inc., the copyright holder of the popular X-Men series, attempted to use a variety of legal defenses, including the claim that ICP used the fame of Marvel's trademark and the X-MEN characters in marketing and advertising to deceive consumers, in order to demand the cancellation of the validity of the registered mark X-Men in the name of International Household Goods Joint Stock Company (ICP). On March 29, 2013, the Hanoi People's Court administrative court issued the first instance administrative ruling in which dismissing the lawsuit and confirming the validity of the registered trademark X-Men. One of the legal grounds for Marvel's demand for cancellation is "identical with Marvel's character names", insinuating that since the name are copyrighted and are the property of Marvel Comics Inc., no one else can use that name except for Marvel. This legal was swiftly denied by the Trial Panel, on the account that  under current provision under copyright law, characters name does not constitute copyright. 
However, even though the unfair competition claim was denied in this instance, claims of a similar nature might still be granted in other situations if the evidence demonstrates that the brand in question was well-known enough for customers to mistakenly associate with the copyrighted character, and associate goods sold under that name originate from or are approved by the character's owner.
According to Article 55 of Vietnam's IP Law, a copyright registration certificate may be revoked if the registered work is not eligible for protection or if the certificate holder is not the true author or owner. Therefore, the certificate for a copyrighted logo may be revoked if it come out that the owner of the logo copied the logo from another's trademark (personal invention is a requirement for copyright). However, in practice, it can be challenging to establish or prove that two logos are identical, particularly when there is evidence of copying. The subsequent copyrighted logo can coexist with the trademarked logo if the trademark owner cannot demonstrate that the copyright holder copied its logo.
 

3. The law's shortcomings

It is evident that the law does not adequately address the conflict of rights, creating a space in which willful infringers might deliberately seek copyright protection for a logo in order to use it as a defense against accusations of trademark infringement.
Because of this, it can be challenging for registration and enforcement authorities to resolve trademark and copyright conflicts in a fair and consistent way. In a particular opposition procedure, the NOIP consented with the copyright holder to deny trademark registration for a logo due to its inconsistency with a previously approved copyrighted logo. In a related instance, though, the NOIP denied the copyright holder's request to have a trademark registration declared invalid due to the trademark holder's previous copyrighted logo.
However, if a third party can successfully demonstrate that the copyright holder copied rather than produced its own logo, the COV (Copyright Office of Vietnam) may agree to cancel the copyright certificate. However, as previously mentioned, establishing the act of copying is exceedingly difficult and frequently necessitates a court struggle. In one recent example, the trademark holder who had developed the logo filed a lawsuit targeting the fact that the COV refused to cancel a questionable copyright registration
 

4. Case study

A Vietnamese individual filed a trademark application in January 2016 for "Temporary accommodation rental service; temporary accommodation for tenants; food and beverage" in class 43. The application included the graphic sign "Lip and tongue logo." The trademark is used for a hotel in Hanoi as well as on websites and social media. 

Of course, as the title suggested, this logo is very similar to the logo of the world-famous brand, Rolling Stone's logo, which is the property of Rolling Stone's company, Musidor B.V. 

The following supporting documentation and reasons were included in a Notice of Opposition that Musidor B.V. Company submitted against the trademark application in September 2016:
  • First, the "stylized tongue and lips logo" is recognized as an applied art piece that satisfies Vietnamese copyright protection standards. Vietnam is a party to the International Convention for the Protection of Literary and Artistic Works (Berne Convention), and Article 3 of the Convention states that Vietnam is in charge of providing copyright protection for writers and holders of copyrights in other parties to the Convention, such as England, the author's country of nationality;
  • Second, Musidor B.V.'s "tongue and lips" trademark is a well-known brand that has been widely used and recognized before the trademark application filing date. It is protected as a trademark in more than 50 countries globally.
  • Thirdly, the other party uses a sign that is exactly the same as the "stylized tongue and lips logo," which was made and is rightfully the property of Musidor B.V., without permission.
Decision of the National Office of Intellectual Property
In accordance with Article 39.4g of Circular No. 01/ 2007 TT-BKHCN, which states that a figurative sign is considered indistinguishable and unprotectable as a trademark if it is "identical or confusingly similar to images of characters or figures in other persons widely known works under copyright protection, unless it is so permitted by the owners of those works," IP VIETNAM accepted the opposition of Musidor B.V. and issued a decision on refusal of registration to the opposing party. This was done because the trademark applied for registration coincides with the applied artwork "tongue and lips" under the opponent's copyright protection scope.
 

b. Marvel vs the NOIP regarding the "X-Men" mark

Marvel filed a petition on August 8, 2006, seeking cancellation of the registration number for the mark "X-Men" registered by International Consumer Products Joint Stock Company (ICP). It claimed that ICP's X-Men trademark did not meet the requirements for protection on three legal grounds: (a) coinciding with Marvel's well-known trademark "X-MEN," ; (b) being identical to Marvel's character names; and (c) using Marvel's well-known X-MEN trademarks and characters in advertising and marketing in a way that confuses consumers. Subsequently, Marvel filed an appeal with the Ministry of Science and Technology ("MOST"). The MOST, similar to the NOIP, came to the conclusion that there was no justification for ICP's trademark to be canceled. As a result, the MOST denied Marvel's request to have ICP's trademark revoked on July 11, 2008.
Owing to the administrative complaint's failure at both levels in accordance with the denunciation and complaint resolution procedure, Marvel filed an administrative lawsuit, which was approved by the Hanoi People's Court on October 8, 2010. The NOIP took part in the proceedings as the defendant, Marvel as the Plaintiff, and ICP as the party with relevant rights and interests, according to the court's record. Following a hearing, the Hanoi People's Court administrative court issued a first-instance administrative judgment on March 29, 2013, rebutting Marvel's petitions and stating that the trademark X-Men, registered under registration number 63481, remains valid in the interim. The first instance ruling no. 03/2013/HCST entered into force since there was no appeal.
If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.