Well-known status in trademark: Defense in face of cancellation?

1. Well-know trademark in Vietnam

Due to the different approaches of different jurisdictions on this subject, the author will limit to the Vietnam jurisdiction, as it is the most familiar to the author. As such, the Unified Intellectual Property Law 2022 of Vietnam (Document No. 11/VBHN-VPQH) stipulates that a well-known trademark is one widely recognized by the Vietnamese public. It also stipulates that industrial property rights for well-known trademarks are established based on usage, independent of registration procedures.

2. Legal Basis for the Well-Known Trademark Defense

The cornerstone of this defense lies in Article 74.2(i) of Vietnam's Intellectual Property Law 2005, amendment in 2022 which stated:

2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

(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;

This provision creates a legal ground for the cancellation of a mark if it infringes upon a prior well-known trademark. In the event of this, the infringing mark shall be deemed to be indistinctive, and as such fail the general conditions for marks to be eligible for protection. As the result, the mark will be cancel in its entirety due to this. This legal foundation empowers trademark owners to actively combat unauthorized use of their well-known marks, ensuring fair competition and consumer protection.

One can also find its basis in the international scene, with provision from the Paris Convention, which recognizes the concept of well-known trademarks and requires member countries to provide them with additional protection. Article 6bis of the Paris Convention states that well-known marks shall be protected against unfair competition, even if they are not registered in the country where the protection is sought. Another related convention is TRIPS, or Trade-Related Aspects of Intellectual Property Rights, which  requires member countries to provide effective protection against the use of a trademark that is identical or confusingly similar to a well-known trademark, even if the conflicting mark is used for different goods or services.

3. Proof of Well-Known Status

1. The number of relevant consumers who are aware of the trademark through purchases, use of goods or services bearing the trademark, or through advertising.
2. The geographical area where goods or services bearing the trademark have been circulated.
3. Sales volume of goods or services bearing the trademark, or the quantity of goods sold and services provided.
4. Continuous duration of trademark usage.
5. Wide reputation of goods or services bearing the trademark.
6. Number of countries protecting the trademark.
7. Number of countries recognizing the trademark as well-known.
8. Transfer price, licensing fee, investment capital contribution value of the trademark.

Due to the new amendment, a mark can be consider to be well-know if its satisfies one or several, or all of the following criteria. However, there is yet to be a detailed guide by the Ministry of Science and Technoloogy.Therefore, much are still in the dark.

4. Application Process for Cancellation Based on Well-Known Status

Process for Cancellation in truth is similar to that of a normal Cancellation in Vietnam. Here are the document needed for this type of cancellation

• Details of the parties involved: This includes the petitioner and the owner of the challenged trademark.
• Grounds for cancellation: This section should clearly state that the challenged trademark infringes upon the well-known status of the petitioner's mark.
• Proof of well-known status as listed above: All relevant evidence demonstrating the widespread recognition and association of the petitioner's mark must be presented. For safety reason, we encourage you to prove as much as you can out of those 8 criteria.
• Power of Attorney.

5. Effectiveness and Challenges of the Well-Know Trademark Defense

Well-know trademark has the following advantages in a claim for defence: 

• Strong legal basis: Vietnam has a strong legal framework for defending well-known trademarks, including international treaties and comprehensive national legislation.
• Enhanced protection: Well-known trademarks receive wider protection than ordinary trademarks, allowing for action against unauthorized use even for dissimilar goods or services.
• Growing awareness: Increasing awareness and understanding of well-known trademark protection among businesses and consumers in Vietnam.
• Deterrence effect: The possibility of well-known trademark defense can discourage infringers and protect valuable brands.

However, it is not without weakness, which include but not limited to:

• Uncertainty in definition: The definition of "well-known" remains somewhat ambiguous and open to interpretation, leading to potential challenges in establishing the status.
• Limited case law: There is a limited body of case law on well-known trademark defense in Vietnam, creating some uncertainty regarding its application and enforcement.
• Burden of proof: The burden of proof rests on the owner of the well-known trademark, requiring extensive evidence and legal resources to demonstrate its status and the infringement.
• Administrative procedures: The procedures for seeking recognition of a well-known trademark can be bureaucratic and time-consuming.
• Varying enforcement: Enforcement practices may vary depending on the specific court and jurisdiction, leading to inconsistent outcomes.

In summary, despite its effectiveness, the well-know trademark defense is not without its challenges. The burden of proof can be demanding, requiring substantial evidence to establish the mark's well-known status. Moreover, navigating the legal process can be complex and time-consuming, necessitating the expertise of intellectual property professionals.

6. Case study

a) Interbrand Group case

In 2010, Interbrand Group, a British corporation founded in 1974, is famous for its consulting and brand management services, most notably with the publication of the ranking of the 100 most valuable brands in the world (otherwise known as Best Global Brand Rankings), sued Interbrand JSC, a Vietnamese company for illegally using the sign "INTERBRAND" in business, advertising on the Internet, and illegally using the abbreviation "INTERBRAND JSC" constitute the business name and appropriates and uses the domain names interbrand.com.vn and interbrandvn.com.vn, infringing on the right to the well-known mark "INTERBRAND" to the People's Court of Ho Chi Minh City.

In document No 5467 of the National Office of Intellectual Property responding to the Court's request on whether INTERBRAND is a famous trademark or not, the NOIP has confirmed that INTERBRAND  is indeed a well-known mark in Vietnam for the following reason:

• Since 2006, its reputation has been widely known in Vietnam through news agencies
• Many agencies, organization, company, including organization related to Intellectual Property in Vietnam, also regularly use information published by "INTERBRAND"

In 2012, the Ho Chi Minh City People's Court recognized INTERBRAND as a well-known trademark due to its dominance in the valuation and branding consulting field. The court deemed the defendant's use of the mark "Interbrand JSC" and its abbreviation to be infringing and confusingly similar, leading to customer misdirection. Consequently, the defendant was ordered to cease using the infringing marks and return the associated domain name, underlining the robust legal protection afforded to well-known trademarks in Vietnam.

b) BMW vs. cybersquatter (2017)

BMW has encountered numerous local cyber-squatters and registrants acting in bad faith, seeking to take advantage of the globally famous name ‘BMW’ by integrating it into their domain names. BMW actively maintains control of its brand online. Our story begin when BMW found out that the domain names bmw.com.vn, bmwmotorrad.com.vn, bmw-motorrad.com.vn, bmwmotorrad.vn and bmw-motorrad.vn had been registered by some professional Vietnamese cyber-squatters. 

A lawsuit against the local cyber-squatter was brought to the Ho Chi Minh City Court. BMW’s argument was based on the provisions related to unfair competition in Vietnam’s IP Law, specifically on the ground of unfair competition. The defendant argued that the ‘BMW’ in his domain names was not related to the BMW trademark, and even claimed that it stood for ‘Be My Wife’. He also claimed that he had no intention of making money from registering and using the domain names. BMW argued that he was using the domain names in bad faith: as the BMW trade mark is well-known around the world, as well as in Vietnam, he could not possibly have been unaware of its prestige and reputation. Thus, BMW demanded:

1. The surrender of the disputed domain names;
2. Compensation for damages of VND 500 million;
3. Recovery of legal fees of VND 200 million;
4. A public apology in the mass media.

BMW successfully defended its trademark rights in Vietnam, securing the revocation of infringing domain names and a public apology from the infringer. While their claim for monetary damages was denied due to insufficient evidence, the court's recognition of BMW's trademark as well-known significantly expands its protection scope. This landmark decision paves the way for stronger enforcement of intellectual property rights in Vietnam, particularly for well-known brands.

7. Conclusion

In conclusion, the well-known status of a trademark constitutes a vital defense against unauthorized registrations in Vietnam. By leveraging the legal framework and providing solid evidence, trademark owners can effectively safeguard their brand reputation and prevent consumer confusion. As the Vietnamese market continues to evolve, the well-known trademark defense will remain a crucial tool for maintaining fairness and ethical practices within the intellectual property landscape.

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.