Sound trademark - Highlight Provisions In The Vietnam Law 2022

The Law Amending and Supplementing a Number of Articles of the Law on Intellectual Property (hereinafter referred to as the revised Law on Intellectual Property) is adopted by the National Assembly on June 16, 2022, with many highlight provisions. In which the protection of sound trademarks is an indispensable trend since Vietnam became a member of CPTPP.??

Article 18.18 CPTPP prescribes that “No Party shall require, as a condition of registration, that a sign be visually perceptible, nor shall a Party deny registration of a trademark only on the ground that the sign of which it is composed is a sound”.??

Accordingly, all CPTPP members are requested to neither require that the trademark must be a visually perceptible sign nor deny the protection only because it is a sound. Therefore, in order to “ensure full and serious implementation of Vietnam’s international commitments on intellectual property protection in the process of international integration”1, as a member of the CPTPP, Vietnam must provide regulations on protecting a sound as a trademark in the Law on Intellectual Property.?

For the aforementioned reasons, the revised Law on Intellectual Property supplements a number of articles related to sound trademarks as follows:?

• Amending and supplementing Clause 1 Article 72 - General conditions for trademarks eligible for protection “1. Being a visible sign in the form of letters, words, drawings or images, holograms, or a combination thereof, represented in one or more colors, or a sound mark represented graphically;”? ?
• Amending and supplementing Clause 1 Article 73 - Signs not protected as trademarks “1. Signs identical with or confusingly similar to national flags or national emblems, anthems of the Socialist Republic of Vietnam and other countries, Internationale;”?
• Amending and supplementing Clause 2 Article 105 - “2. The sample of the trademark must be described in order to clarify elements of the mark and the comprehensive meaning of the mark (if any); where the mark consists of words or phrases of hieroglyphic languages, such words or phrases must be transcribed; where the mark consists of words or phrases in languages other than Vietnamese, such words or phrases must be translated into Vietnamese; where the mark is a sound, its template must be an audio file and a graphical representation of that sound.”?

Although the revised Law on Intellectual Property regulates that a sound mark may be protected as a trademark, this mark must be a visible sign which is represented graphically. On contrary, according to WIPO’s definition, a sound trademark must be a visible and audible sign (not only a strain or tone such as Nokia ringtone, but also the lion roar used in films of Metro - Goldwyn - Mayer (MGM), or claps, etc.).???

Sound trademark is a new provision in Vietnam's intellectual property law. However, since the end of the 20th century, sound trademark has been protected by laws of many countries, such as America, Australia, Europe, etc. In the coming time, Vietnam should formulate guiding documents such as decrees and circulars specifying the establishment, protection and enforcement of rights over this type of trademark.?

Although the revised Law on Intellectual Property takes effect from January 01, 2023, provisions on sound trademark protection take effect from January 14, 2022.?

By Thoa Pham | Helen