Table Of Contents

Article 74.2 (e) of the 2022 IP Law stipulates that: “2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: (e) Signs other than integrated marks that are identical with or confusingly similar to registered marks of identical or similar goods or services based on applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed under a treaty of which the Socialist Republic of Vietnam is a member“. To assess the similarity of marks at issue, it is required (i) to compare an applied-for trademark to the cited mark(s) and concurrently, (ii) to compare goods or services bearing the marks in question. A likelihood of confusion of marks is established in case both above requirements are satisfied.

The only method to successfully appeal a trademark refusal is to show that (I) its condition is not met if the goods/services carrying the contested trademarks are judged comparable/function, intended utility, consumers, and commercial channel. Having stated that deeper comparisons and analysis are needed to identify the key distinctions between the trademarks in terms of their structure, pronunciation, representation, visual impression, and other elements. The following queries should be addressed in the context of device marks to identify the justifications and supporting details for trademark dissimilarity claims:

(i) What similarities exist between the marks in question?

(ii) What differences are there between marks?

(iii) Whether similarities between marks are adequate to place consumers at risk of confusion?

(iv) Are there similar precedents similar to the marks at issue?

Scope of protection of a trademark in Vietnam: Article 16 of Decree 103/2006/ND-CP, as amended and supplemented in 2010, stipulates that [ Scope of industrial property rights to … a mark … is determined according to the scope of protection stated in the relevant protection title]. Under Article 11.2 of Decree No. 105/2006/ND-CP, as amended and supplemented in 2010, [The basis for determination of an infringing element of a mark is the scope of protection of the mark including the mark specimen and a list of goods and services in the mark registration certificate or the certificate of protection in Vietnam of internationally registered mark]. Thus, statutorily, the scope of trademark protection is determined based on (i) a registered trademark image and (ii) a list of products/services registered with that mark.

The statutory provisions in Article 16 of Decree 103/2006/ND-CP and Article 11.2 of Decree 105/2006/ND-CP are construed that: Trademarks are protected as they are registered on records. A trademark consisting of a word and a device possesses a scope of protection different from the protection mechanism when it is registered by the trademark owner as 2 separate trademarks, i.e. one-word mark and one device mark. In other words, a mark composed of a word and a device cannot be considered two independent trademarks. The principle of protection of the trademark as it is registered is interpreted to mean that the constituents of the mark are protected in their totality. As such, when determining the registrability of a trademark, the examiner must consider and evaluate the trademark in its entirety, as if it were protected.

 

2. Trademark Similarity vs. Confusion

While "similar trademark" and "trademark confusion" are often used interchangeably, they represent distinct concepts within intellectual property law. A similar trademark simply refers to a mark that shares certain characteristics with an existing one, regardless of whether it misleads consumers. This similarity can be visual, phonetic, or conceptual, and may involve elements like spelling, sound, or overall impression. Think of it as a spectrum: any mark that falls within the same general range as another can be considered "similar."

Trademark confusion, on the other hand, is a legal standard applied to assess whether a mark is likely to mislead consumers into thinking it originates from the same source as an existing trademark. This requires a higher threshold than mere similarity. Courts consider various factors, including the marks themselves, the nature of the goods or services they represent, the target audience, and the channels of trade. If consumers are likely to be mistaken about the source or quality of the goods/services due to the similarity, then trademark confusion exists.

Imagine two brands selling athletic shoes. Brand A has a logo with a sleek, blue cheetah. Brand B adopts a logo with a green, cartoonish jaguar. While these marks share some visual similarities, they're distinct enough that confusion is unlikely. However, if Brand B starts using a logo featuring a realistic, blue cheetah, the risk of consumers mistaking them for Brand A becomes much higher, potentially leading to a claim of trademark confusion.

In essence, similar trademarks are a broad category encompassing any degree of resemblance, while trademark confusion is a specific legal hurdle requiring a demonstrably high likelihood of consumer misidentification. Understanding this distinction is crucial for businesses seeking to protect their brands and avoid infringing on existing trademarks.

 

3. Practical Implications

Navigating the terrain of "similar trademark" versus "trademark confusion" has practical implications that impact businesses at every stage, from choosing a mark to enforcing their rights.

First, it informs trademark selection: Understanding the potential for confusion helps businesses pick marks that stand out from existing ones, minimizing objections during registration and reducing the risk of future infringement claims. Choosing a distinctive mark, one that's unique in its visual, phonetic, or conceptual elements, especially within the relevant industry, becomes crucial.

Second, it shapes branding strategies: Building brand recognition is essential for establishing distinctiveness and further reducing the chances of confusion. This means consistent use of the trademark across all touchpoints, from packaging and marketing materials to online presence and customer interactions. The stronger the association between the mark and the business in consumers' minds, the less likely they are to be misled by similar marks.

Third, it guides enforcement decisions: When faced with a potentially infringing mark, understanding the confusion standard becomes paramount. If a mark, despite being similar, is unlikely to cause actual confusion among consumers regarding the origin or quality of the goods/services, pursuing legal action may not be successful. However, if the similarity is striking enough and crosses the threshold of confusion, pursuing infringement claims to protect brand reputation and market share becomes crucial.

Finally, it impacts litigation outcomes: In court proceedings, demonstrating a likelihood of confusion is key to winning an infringement case. Businesses need to gather evidence, such as consumer surveys or market research, to convince the court that the similar mark is misleading consumers. Understanding the factors that courts consider, like the degree of similarity, the target audience, and the channels of trade, helps businesses tailor their arguments and increase the chances of a successful outcome.

 

4. Challenges in Enforcement

Enforcing trademark rights in Vietnam, particularly when it comes to navigating the nuances between "similar trademarks" and "trademark confusion," presents a formidable landscape of challenges. Here's a deep dive into the key hurdles:

1. Counterfeiting: Vietnam remains a notorious hub for rampant counterfeiting across various industries. This makes it difficult to distinguish genuine products from infringing ones, especially when dealing with subtle trademark similarities. Consumers, often unaware of the intricacies of intellectual property, can easily fall prey to such deceptive practices, further blurring the lines between similar and confusingly similar marks.

2. Limited consumer awareness: The Vietnamese public's understanding of trademark laws and consumer rights often lags behind legal developments. This creates an environment where consumers may not recognize or actively resist the influence of confusingly similar marks, leading to continued market penetration of infringing goods and services. This lack of awareness also makes it harder for trademark owners to gather concrete evidence of actual confusion, crucial for successful enforcement actions.

3. Judicial inconsistencies: While the legal framework clearly defines the "likelihood of confusion" standard, its interpretation can vary significantly across different courts in Vietnam. This creates unpredictable outcomes in litigation, discouraging businesses from pursuing infringement claims, even in clear-cut cases of trademark confusion. The lack of consistent judicial precedent makes it difficult to strategize effective enforcement actions and can lead to prolonged legal battles with uncertain outcomes.

4. Administrative inefficiencies: The Vietnamese IP administration system, while undergoing improvements, can still be plagued by inefficiencies and complexities. This can lead to delays in trademark registration and enforcement processes, further emboldening infringers and hindering timely action against confusingly similar marks. The lack of resources and trained personnel within the IP administration can also create bottlenecks and limit the effectiveness of enforcement efforts.

5. Cultural considerations: The Vietnamese cultural context, with its emphasis on personal relationships and negotiation over formal legal procedures, can sometimes present challenges for enforcing intellectual property rights. Infringers may leverage personal connections or engage in informal settlements to circumvent formal legal processes, making it harder to achieve effective and lasting resolutions.

6. Language barriers: Navigating the legal system and communicating effectively with authorities can be difficult for foreign businesses unfamiliar with Vietnamese language and legal procedures. This can hinder the enforcement process and add another layer of complexity to the already challenging task of protecting trademarks.

These challenges highlight the need for a multi-pronged approach to tackling trademark confusion in Vietnam. This includes raising consumer awareness, strengthening judicial consistency, streamlining administrative processes, and promoting cultural understanding of intellectual property rights. By addressing these hurdles, Vietnam can create a more robust and predictable environment for businesses to protect their brands and foster fair competition in the marketplace.

 

5. Conclusion

Distinguishing between trademark confusion and similarity is essential for navigating Vietnam's trademark landscape. By understanding their legal definitions, practical implications, and potential enforcement challenges, businesses can make informed decisions to protect their brands and combat infringement. As Vietnam's economy continues to evolve, a nuanced understanding of these concepts will be increasingly crucial for safeguarding intellectual property rights and fostering a fair and competitive market environment.