A later filing NHCĐ also cannot use its registration to prohibit the prior owner from using the prior trademark. Therefore, in cases where there is agreement, both parties are free to use their respective trademarks.
2.3.2. Cancellation of Certificate of Protection
2.3.2.1. Grounds for cancellation
The rights of the owner of a trademark may be revoked upon the request of a third party, including the request of the alleged infringer in a trademark infringement case, in which case it is called a “counterclaim”. The grounds for the revocation of a trademark include the following cases:
Cancel for non-use
A trademark may not be used for a specified period of five (5) consecutive years without a valid reason justifying such non-use, unless the use is initiated or resumed before the filing of a cancellation request by a third party for a period of at least three (3) months. Therefore, if the trademark is used or resumed within three (3) months from the filing of a cancellation request by a third party, it will still be considered “non-use”. The purpose of this provision is to prevent the owner of the trademark from responding to the risk of cancellation of the trademark. In practice, the owner of the trademark is often very aware of the risk of cancellation at the time of a possible dispute, when the third party or “counterclaimant” often considers the cancellation procedure of the related party as a solution to the dispute. Therefore, the trademark owner often immediately responds to that risk by proceeding with the use of the trademark.
The act of use, in this case, must be considered as “ actual use ”. Symbolic acts of use will be considered as non-use. Because the form of actual use of a trademark is very diverse, CTMR does not list what acts are considered as actual use, but according to Article 15 of CTMR, emphasizes the acts that are also considered as actual use, which are:
- Using a NHCĐ in a different form with different elements but not changing the distinctive characteristics of the trademark in the form in which it was registered.
- Affixing a trademark to goods or their packaging in the community territory for export purposes.
- Using NHCĐ with the owner's consent is also considered as the trademark being actually used by the owner himself.
In the first exception mentioned above, it can be understood that changing non-distinctive elements or elements with secondary implications in the used trademark is completely possible and is still considered as the use of the registered trademark itself.
In the second exception mentioned above, although, in principle, the use of NHCĐ is understood as goods or services bearing the trademark being displayed, circulated and distributed on the market within the European Union, the affixing of the trademark to goods intended for export outside the European Union market is also considered the use of NHCĐ.
In the third exception, it is important that, under the CTMR, not only the use by the assignee is considered to be the bona fide use of the trademark, but also the use by any person authorised by the owner establishes the bona fide use of the trademark by the owner. The authorised person, other than the licensee, may be a distributor, importer or any representative or agent of the owner. The point here, therefore, is that when proving the use of the trademark by a person authorised by the owner, it is not necessary to show that the person is using the trademark under a registered licence agreement, but anyone can be accepted as long as evidence of the owner's own consent is provided.
Finally, the use of the trademark must be in connection with the goods or services registered under the trademark. According to Article 15 CTMR [22], the use of a trademark for goods or services similar to those registered under the trademark is not considered to be use of the trademark.
On this issue, Vietnamese IP law also has similar provisions.
Cancel for loss of distinctiveness
A trademark is revoked because it has lost its distinctive function, which is that the original trademark when registered fully meets the distinctive criteria of a trademark. Then, through the process of use for the registered goods and services, the trademark is known to consumers as a common name of goods or services in commerce (the common name of goods or services) rather than a sign to distinguish goods or services between production and business establishments.
The loss of distinctiveness of a trademark may arise in some cases through the use of the goods or services themselves, but in some cases it may be caused by the owner himself. For example, intentionally or unintentionally, the owner, when using the trademark, does not clearly identify that the sign has been registered as a trademark, or does not take any action to control the use of the trademark, leading to a third party using the registered trademark as an indication or common name for the goods or services. The most important nature of a trademark is its distinctiveness. A trademark exists only when it has distinctiveness. Therefore, it is of utmost importance for the trademark owner to use the trademark in a way that clearly indicates that the sign has been registered and protected as a registered trademark, especially in cases where the trademark is at high risk of losing its distinctiveness. The way to indicate that a mark is a registered NHCĐ is to use the R or CTM sign together with the trademark in trading documents, advertising or packaging.
Cancellation for misleading or deceptive purposes
A misleading or deceptive trademark is defined as one that misleads or deceives consumers as to the nature, quality, properties, composition, uses or geographical origin of the goods or services, when in fact the goods or services bearing the trademark do not have such characteristics. This is more likely to occur where the sign itself is suggestive or associated with the product or service for which the trademark is used.
use. The possibility of confusion or deception as to the origin or quality of the product may also arise where the product produced by the licensee does not meet the standards of the product produced by the owner. If this continues over a long period of time and on a large scale, the risk of the owner's trademark being requested to be cancelled on this ground is very high.
Cancellation due to loss of “legal status”
One of the conditions for registration of a trademark is that the applicant must satisfy the subject matter requirements [22, Article 5]. However, it may happen that, after the trademark is registered, due to a change in circumstances, the trademark owner no longer meets the requirements for the applicant's status. The following situations may result in loss of subject matter eligibility:
- The owner transfers ownership of the NHCĐ to a party but that party does not meet the subject conditions;
- The owner has lost his/her nationality or citizenship of a country that is a member of the European Union;
- The country of which the owner is a national is a member of the European Union and is leaving the Union.
2.3.2.2. Legal consequences of cancellation
According to the provisions of Article 54 of the CTMR, if a NHCĐ is declared to be cancelled, it is considered to be invalid from the date of filing the application for cancellation of the NHCĐ. That means that the retroactive effect of the decision to cancel the NHCĐ is limited to the date of filing the application for cancellation. However, at the request of the party filing the cancellation request, OHIM may fix an earlier date of cancellation. To implement this request, the requester must prove that the earlier date of cancellation is necessary and reasonable. The earlier date of cancellation must be specifically fixed in the decision of OHIM, otherwise, according to the regulations, the date of cancellation will be considered as the date of filing the cancellation request.
In case the NHCĐ is partially invalidated, the owner will continue to
The owner's right to the unabandoned portion of the contract, i.e. the remaining goods or services.
However, according to CTMR, the retroactive effect of the cancellation decision does not affect the following two special cases:
For cases of infringement
In a trademark infringement case, sanctions are often involved, including the issue of compensation for damages, sometimes very large. However, the validity of a trademark is not immutable, but it can be canceled for one of the reasons stated above. So when a party is accused of infringing and is forced to pay compensation, files a request to cancel the relevant trademark for the above reasons and this request for cancellation is successful, the question here is whether the application of the previous sanctions in the infringement case to the alleged infringer is fair or not? According to the provisions of Article 54.3 of the CTMR, the retroactive effect of the decision to cancel the validity does not affect any decision related to the handling of the infringement of the rights of NHCĐ that has been decided and has been implemented before the decision to cancel the validity is announced.
For the performance of the contract
Similarly, the retroactive effect of the decision to cancel does not affect any contract made and concluded before the effective date of the declaration of cancellation. However, the return of any amounts previously paid during the performance of the contract will be required on the basis of the Law of Equity. This provision depends on the national law in the claim for compensation due to the dishonesty of the owner of the NHCĐ registration that is canceled.
The previous IP legal system of Vietnam [13, Article 29] stipulated that when a trademark is cancelled, the validity of the cancelled part is considered to have ceased to exist. This provision has caused difficulties in the enforcement of rights in practice. Specifically, in cases of infringement, enforcement agencies cannot implement sanctions when the infringing party counterclaims by filing a request to cancel the registration.
A trademark is alleged to be infringed for reasons such as the trademark registration granted does not meet the protection standards. In this situation, the enforcement agency is confused about how to handle it. If the sanctions as declared are applied, how will it be resolved if the infringed trademark is later revoked? At that time, the infringer often cites the above law to indicate that the infringed trademark registration is considered to have "never come into effect", that is, their actions are not an act of infringement. If sanctions have been applied, how will that damage be resolved? Therefore, in reality, in the past, the handling of infringement has been very "cautious" for the above reason. However, the current Intellectual Property Law, although it has removed the above provision, does not have any provisions on the scope of retroactive effect of the revocation decision. This will certainly be a defect of the Intellectual Property Law. Therefore, referring to the retroactive provisions of the above cancellation decision of the NHCĐ law system is meaningful in perfecting the Vietnamese Intellectual Property Law.
2.4. Enforcement of trademark rights
2.4.1. Acts of infringement of trademark rights
The legal system of the NHCĐ does not stipulate what constitutes an infringement of the NHCĐ rights, but this issue is determined by the national law of each member country. The determination of which country or in fact which country's law has the authority to determine the infringement of the NHCĐ is presented in section 2.4.2 (Jurisdiction and applicable law). Therefore, the purpose of this section is to present the provisions of some Community member countries including the Trademark Law of the UK, France and the Czech Republic in determining the infringement of trademarks.
In principle, the trademark laws of these three countries are similar. The acts considered as trademark infringement, according to Article 10 of the UK Trademark Act 1994 [40], Article 713 of the French Trademark Act [31], and Article 8.2 of the Czech Trademark Act [16], are the following acts:
1. A person shall be deemed to have infringed a registered trademark if he uses in commercial activities a sign identical to a protected trademark for goods or services identical to the goods or services for which the trademark is registered.
2. A person is considered to have infringed a registered trademark if he uses in the course of commercial business a sign that:
a) The sign is identical to a protected trademark for goods or services similar to the goods or services for which the trademark has been registered.
b) Signs similar to trademarks and used for goods and services that are identical or similar to the goods and services for which the trademark has been registered and the use of these signs is likely to cause confusion for a segment of customers, including the possibility of association with the registered trademark.
3. A person is considered to have infringed a registered trademark if he uses in the course of commercial activity of goods or services a sign identical with or similar to the trademark if the trademark is well known, and the use of such sign is without justifiable reason, creates unfair advantages or is detrimental to the distinctiveness or reputation of the trademark.
Thus, according to the above provisions, acts considered as infringement of trademark rights under the trademark laws of England, France and the Czech Republic are determined into two cases: (i) acts of infringement of rights to common trademarks, and (ii) acts of infringement of rights to trademarks recognized as famous. For the first case, there are 4 (four) situations leading to infringement (see table 2.4.1.a).
In this regard, according to the Vietnamese Intellectual Property Law, the following acts performed without the permission of the trademark owner are considered to be infringements of trademark rights [3, Article 129]:
- Using a sign that is identical to a protected trademark for goods or services that are identical to goods or services in the list registered with that trademark.
- Using a sign that is identical to a protected trademark for goods or services similar to or related to goods or services in the list registered with that trademark, if the use is likely to cause confusion about the origin of the goods or services.
- Using a sign similar to a protected trademark for goods or services that are identical, similar or related to goods or services in the list registered with that trademark, if the use is likely to cause confusion about the origin of the goods or services.
- Using signs identical or similar to famous trademarks or signs in the form of translations or transcriptions of famous trademarks for any goods or services, including goods or services that are not identical, similar or related to goods or services in the list of goods or services bearing famous trademarks, if the use is likely to cause confusion about the origin of the goods or create a false impression about the relationship between the user of that sign and the owner of the famous trademark.
With the above provisions, the Vietnamese Intellectual Property Law, similar to the trademark laws of the UK, France and the Czech Republic, divides trademark infringement into two forms: (i) infringement of common trademarks, and (ii) infringement of trademarks recognized as famous. And there are also four situations leading to infringement in the first form (see table 2.4.1b).
TABLE 2.4.1a
Behavior
violate
Criteria | Consequences | ||
token | goods/services | ||
1 | duplicate | duplicate | undemanding |
2 | duplicate | similar | undemanding |
3 | similar | duplicate | potentially confusing |
4 | Similar | Similar | potentially confusing |
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TABLE 2.4.1b
Behavior
Criteria | Consequences |