Protection of industrial property rights for trademarks under the Intellectual Property Law 2005

Practical life has shown that the ability of ordinary consumers to recognize these characters is very limited, so the Circular guiding the implementation of the 2005 Intellectual Property Law has classified Chinese characters as characters that are not distinguishable.

Through the study of case 1 above, we see that the regulations do not seem to originate from the nature of the sign as “distinctiveness” but rather reflect the protection policy of the country. A sign, when used for certain goods or services, is capable of forming in the minds of consumers a connection between the sign and the goods or services, then that sign actually has the ability to distinguish and satisfy the protection standards. The laws of all countries only stipulate that any sign that has the ability to distinguish goods and services can be protected as a trademark. However, Vietnamese law does not absolutely exclude the opportunity to use the above signs as trademarks, that is, in cases where the sign has been “widely used and recognized”, it will be considered to have the ability to distinguish. There have been trademarks protected on the basis of this exception, such as: P/S toothpaste trademark (GCN 48172).

Case 2: A trademark is a sign, conventional symbol, drawing or common name of goods or services in any language that has been widely and frequently used and known to many people.

This provision is inherited intact from the provisions in Decree 63CP and is completely consistent with international practice. Signs of this type obviously do not have the ability to individualize products and services, everyone has the same right to use them and therefore cannot establish a monopoly with a certain owner. Signs of this type can be recognized as:

- Snake wrapped around cup image used for products and services related to medical products and medical profession.

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- Gear image used for products and services related to the mechanical industry.

gas.

- The word “orange juice” is used for orange juice products…

This provision also extends to drawings that are not symbols.

Conventional symbols of products and services that are used so much and popularly that they lose their distinctiveness, such as globes, crowns, lions, etc. However, just like the case with letters, this type of trademark can still be protected if presented in a stylized graphic form. In that case, the scope of protection of the trademark is limited by the way these elements are presented.

Case 3: A trademark is a sign that describes a product or service.

Descriptive signs of products and services are expressed in the form of signs indicating the time, location, method of production, type, quantity, quality, properties, ingredients, uses, value or other characteristics of the goods and services. Vietnamese law on this issue is consistent with international law. For example, in Article 7(1)c) of the CTMR [20]: a trademark will not be registered if “the trademark consists only of signs indicating the quality, features, use value, etc. of the goods”. Specific examples of this case may be:

- time: “since 1949”…

- location: “made in”…

- production method: “distilled” for wine products

- quality: “best”, “excellent”, “number 1”…

- quantity: “pack of 3”, “3 in 1”…

- Uses: “skin whitening” used for cosmetics, “cancer care solutions” used for pharmaceuticals…

- value: “low cost” – low price…

However, assessing “descriptiveness” is not entirely straightforward, especially in cases where a trademark is a combination of elements describing products and services. There are different views among legal systems when assessing the distinctiveness of a trademark in this regard. The case involving the trademark “BABY-DRY” is a typical example.

The BABY-DRY trademark was registered by Procter and Gamble Company for its paper and cloth diapers for babies. This trademark has been revoked by the U.S. Department of Justice.

The European Union Harmonization of Trademarks (OHIM) refused protection on the basis of absolute refusal under Article 7.1.c of the European Union Community Trademark Regulation (CTMR) on the grounds that the trademark BABY-DRY implies a description of features and uses, the word BABY means “child”, DRY means “dry”, the combination of these two words makes consumers understand that the product has the effect of “keeping the baby’s bottom dry”, therefore, the trademark is not distinctive. Disagreeing with the conclusion of OHIM, the trademark owner brought the case to the Court for a review. After reviewing, the Court of First Instance upheld OHIM’s decision based on the finding that the trademark “BABY-DRY” is made up of commonly used words that only describe the uses of the product without any element that creates the distinctiveness of the trademark. The case was further appealed to the Court of Appeal. To assess the distinctiveness trademark, the Court of Appeal conducted an investigation to clarify the following issues:

- Is there an unusual combination of syntactic functions of language in the BABY-DRY brand?

- Is this combination mark the expression used in everyday language “to keep baby's bottom dry” or is the mark understood in another sense?

After considering the above issues, the Court concluded that the assertion of a descriptive trademark is not based solely on the meaning of each element but on the overall impression of those elements. Any perceptible difference between the combination of elements used as a trademark and the same element used in the daily life of the relevant consumer group to indicate that the goods or services or their main characteristics are considered to satisfy the distinctiveness and can be registered as a trademark.

According to the Court, in order to assess whether the combination of the words BABY-DRY is distinctive, it is necessary to put oneself in the position of an English-speaking consumer. That is, it is necessary to consider whether the combination of these words is

must be the common way of speaking of consumers when describing the function of diapers for children. The court found that the combination of BABY-DRY was not the common way of speaking of consumers. Although each word that constitutes the mark, when used separately, would in the ordinary language of consumers describe the function and use of diapers for children, the unusual syntactical combination of BABY and DRY makes the combination of words distinctive.

Therefore, the Court of Appeal ruled that the BABY-DRY trademark registered for cloth and paper diapers for babies is not descriptive of the product's characteristics, is a term that demonstrates creativity in combining vocabulary to create distinctiveness for the trademark, is not a common way of speaking of consumers, therefore, the trademark meets the protection standards.

The BABY-DRY trademark, when registered in Vietnam under application number 4-2000-04598 dated April 14, 2000, was rejected by the National Office of Intellectual Property on the grounds that the description of the product's functions and uses was similar to the reason given by OHIM.

Even though the decision of the National Office of Intellectual Property is not consistent with the final judgment of the Court of the European Union, this is not difficult to explain. Because intellectual property rights are a type of right that is effective within the national territory, one of the functions of a trademark is to help consumers recognize the goods and services of different businesses. In Vietnam, the trademark will serve the recognition needs of Vietnamese consumers. Vietnamese consumers are not the same as consumers in the European Union, they are not fluent in English, so the unusual combination of syntax between words that describe the use and function of the product is not enough to help the trademark become distinctive. Vietnamese consumers still tend to recognize trademarks separately, so they will recognize the trademark as a combination of elements that purely describe the function and use of the product.

Thus, to ensure the distinctive function of the trademark, the signs

Descriptive signs of goods and services will not be protected. However, the basis for assessing the descriptive nature of a sign depends on each type of goods and services as well as the target consumers in each specific case.

But in a similar case, the decision of the competent authority seems to go against the principle of assessing the ability to distinguish applied to the mark “BABY-DRY”. The mark means “Face and body” registered for cosmetics and skin and body care products. It is clear that in this case, each word that makes up the mark is directly directed to the target audience of the product, these words are very commonly used on the packaging of skin and body care products, and are also common English words for consumers with an average level of English. Therefore, when consumers come into contact with the mark, they will easily make a direct connection to the product's use for the face and body. Compared with the provisions of the law, this mark is not capable of distinguishing itself and cannot establish a monopoly for anyone, but it has been granted exclusive protection certificate No. 82503 and does not exclude any ingredients.

In many countries around the world such as the US, UK, Australia, Japan, the European Union, etc., a Guideline for trademark examination has been established to provide general regulations on the order of work processing as well as sample situations (based on precedents) to help the agency granting protection certificates make accurate and consistent decisions. In Vietnam, the Guideline for trademark examination has been in place since 1994 and was amended in 1997. However, since then, this Guideline has not been amended or updated to suit changes in the law as well as the general development of goods, services, consumer awareness, etc., so in reality it is no longer valid. The lack of a general Guideline has led to cases where there are inconsistent examination views in assessing the protection ability of trademarks.

According to the provisions of law, trademarks are not capable of self-distinction when they describe goods and services and this descriptive concept can be understood

is a direct description. However, in practice, when assessing the self-distinguishing ability of a trademark, the reason that the sign describes a product or service is one of the most used reasons to refuse protection or to classify them as a separate exclusion, but it is often difficult to indicate what the sign describes. The most common case of this type of rejected trademark is slogan trademarks such as: "Bringing new creative inspiration" used for coffee products, "Colors from the Sun" used for paint products, putty, matits used in construction... but the trademark "Nang niu ban chan Viet" used for shoes and sandals, "Enrich your life" for services related to finance, banking, real estate, insurance... is accepted for protection. The 2005 Intellectual Property Law does not classify slogans as a separate form of trademark, so to be protected, they must also satisfy the same legal criteria as other word trademarks. Using the reason that the sign describes a product or service as a reason to not recognize the distinctiveness of slogans does not seem to be really convincing in many cases. In order for the decisions of State agencies to be more accurate and convincing, so that trademark owners can avoid unnecessary costs when building a trademark that is later rejected due to its inability to distinguish itself, there needs to be more specific regulations in sub-law documents such as the Examination Regulations related to this case.

Case 4: The trademark describes the legal form and business field of the business entity.

This is a completely new content included in the criteria for assessing the distinctiveness of a trademark. In fact, although this content has not been regulated before, it has been applied and the general reason "trademarks describing goods and services" is often used to refuse protection of this type of trademark. Signs describing the legal form and business field of a business entity are clearly not distinctive, any entity that satisfies the legal standards can use them. A separate provision for signs of this type ensures that the grounds for refusal are consistent with the nature of the sign.

Distinctiveness of a trademark from other signs

If the ability to distinguish itself is considered a “necessary condition” for a sign to be considered a trademark, then the ability to distinguish from other signs is the “sufficient condition” for a trademark to be accepted for protection. Only when a sign is distinguishable from other protected signs of other entities will the sign complete its distinguishing function. Signs falling into the following cases will be considered as not having the ability to distinguish:

Case 1: The sign is not an associated trademark that is identical or confusingly similar to a registered trademark based on an application with an earlier filing date or priority date.

This is the most common case when assessing the protection ability of a trademark, which is to assess the distinctiveness of the sign under consideration with the trademark being protected. Basically, the content of this provision is similar to the provision in Decree 63CP but is expressed in a different and more specific way. Accordingly, the concept of "associated trademark" is added, replacing the phrase "other person's trademark being protected" with the phrase "registered trademark". This new expression seems more specific, but it seems more complicated and unreasonable. According to Clause 19, Article 4 of the Law on Intellectual Property, "associated trademarks are trademarks registered by the same entity, identical or similar to each other, used for products and services of the same type or similar or related to each other ". To guide the application of the law related to associated trademarks, Circular 01 [7] at Point 37.4b)(i)(iii) clearly states that “In case the associated element is a trademark (similar to another trademark of the applicant used for the same goods or services or used for similar goods or services), it must be clearly stated whether among those associated trademarks there is any trademark considered basic or not, if so, which trademark” and “If the applicant does not specify the basic trademark or basic goods or services, all trademarks and all goods or services related to the trademark stated in the applicant's application are considered independent of each other. Assessment of the distinctiveness of a trademark

The trademarks stated in the application will not be subject to the exception for associated trademarks…”. According to the provisions of the law, associated trademarks are trademarks of the same owner. Even if the trademark owner does not declare to the competent authority that they are associated trademarks, their associated nature still exists objectively. The function of a trademark is to distinguish the goods and services of different business entities, so of course, trademarks of the same owner do not raise the issue of considering the ability to distinguish between them. In essence, associated trademarks are all basic trademarks, each trademark has an equal role in distinguishing the goods and services of the trademark owner from those of other entities. The provision in Circular 01 that trademark applicants must indicate the connection with previous trademarks and failure to do so causes the trademarks to be considered independent of each other when assessing the ability to distinguish the trademarks is unnecessary and practically impossible to implement in practice. Even if the Applicant does not indicate the connection between the trademark requested for registration and his own previously protected trademark, the competent authority cannot refuse protection if the trademark satisfies other protection conditions because the trademark has satisfied the function of distinguishing the trademark owner from other entities as prescribed in Article 4 of the Law on Intellectual Property. The concept of associated trademarks as currently included in the law is half-hearted, this connection is only mentioned in the stage of establishing rights, and in this procedure, as analyzed above, the application is not feasible. Determining associated trademarks may also be related to determining the subject of trademark transfer (can the transfer be carried out for each independent trademark or must it be for all associated trademarks?), determining the subject of invalidation (does the cancellation of one of the associated trademarks affect other associated trademarks or not?) ... but these contents are not mentioned in the law or guiding documents under the law. Not many countries have regulations on associated trademarks. In countries that have regulations, there is a tendency to eliminate regulations on this type of trademark (eg Japan...) and only use it as a term in research.

Protection of industrial property rights for trademarks under the Intellectual Property Law 2005 - 7

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