TRADEMARK DISPUTE RESOLUTION – SIGNIFICANT LEGAL ISSUES

In order for Vietnam to “become one of [the] leading ASEAN countries in creation, protection and exploitation of intellectual property rights” set out under the Intellectual Property Strategy approved by the Prime Minister in Decision No. 1068/QD-TTg dated 22 August 2019, Vietnam has been promoting the protection of intellectual property rights in general and trademarks in particular. Based on the statistics of the National Office of Intellectual Property for annual reporting, in 2023 alone, the National Office of Intellectual Property has received 60,929 trademark applications, accounting for more than 80% of the total number of industrial property registration applications. This data shows that trademarks are objects of industrial property that are of special interest that ought to be protected by organizations and individuals. However, the increase in the number of trademarks registered for protection also leads to increasingly diverse and complex trademark disputes. The following article will provide an overview of trademark disputes and legal issues to consider when resolving trademark disputes.?

1. Overview of Trademark Dispute?

i. Definition of Trademark?

Pursuant to Clause 16 Article 4 of the Law on Intellectual Property 2005 (amended and supplemented) (“LOIP”), a trademark is defined as “any sign used to distinguish goods or services of different organizations or individuals”. Accordingly, pursuant to Article 72 of LOIP, in order to be protected, a trademark must meet general conditions including: (i) it is a visible sign in the form of letters, words, drawings, images, holograms, or a combination thereof, represented in one or more colours or sound trademark that can be graphically presented and (ii) it is capable of distinguishing goods or services of the mark owner from those of other subjects. The above regulations clearly show that the core function of a trademark is the ability to distinguish and at the same time, emphasize the diversity and flexibility in the use of signs as a trademark. This means that any sign capable of distinguishing goods and services of different organizations and individuals, from colour, image, sound to other elements, can be recognized as a trademark.??

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ii. Trademark disputes and infringement?

?From the above concept, trademark disputes can be understood as disagreements and conflicts of rights and interests of one or more parties revolving around the subject matter of industrial property being a trademark. According to Article 129 of LOIP, different types of trademark disputes can arise from one of the acts of infringement of trademark rights as follows:?

• Firstly, the act of using a sign identical to a protected mark for goods or services identical to goods or services on the list of registrations attached to such trademark.?
• Secondly, the act of using a sign identical to a protected mark for goods or services similar to or related to goods or services on the list of goods or services registered together with such trademark, if the use is likely to cause confusion about the origin of the goods or services.?
• Thirdly, the act of using a sign similar to a protected trademark for goods or services that are identical, similar to or related to goods or services on the list registered together with such trademark, if the use is likely to cause confusion about the origin of goods or services.?
• Fourthly, the act of using a sign that is identical or similar to a well-known mark or a sign in the form of a translation or transliteration of a well-known trademark for any goods or services, if their use is likely to cause confusion about the origin of goods or give a false impression of the relationship between the user of such trademark and the owner of the well-known mark.?

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2. Significant legal issues when resolving trademark disputes?

i. Collecting evidence?

The step of collecting documentary evidence is an important foundation for determining the outcome of trademark disputes. Accordingly, the term “intellectual property assessment” is often mentioned in the process of resolving trademark disputes because of the typical and complex nature of this type of dispute. Pursuant to Article 40 of Decree No. 105/2006/ND-CP (amended and supplemented) (“Decree 105”), the competent authority to settle trademark disputes has the right to solicit and the trademark owner has the right to request an intellectual property assessment. Based on the statistics on trademark infringement examination requests of the Vietnam Intellectual Property Research Institute, it can be seen that the number of trademark infringement examination requests has increased over the years. This shows that trademark owners are more and more aware of the importance of this source of evidence and tend to use this source of evidence to give a beneficial opinion when resolving disputes.?

In addition, it should be noted that trademark examination is not a mandatory legal procedure in the process of trademark dispute resolution proceedings but is encouraged to be carried out to ensure that the dispute is resolved accurately. Pursuant to Clause 5 Article 94 of the Civil Procedure Code 2015, Clause 5 Article 201 of LOIP and Clause 1, Article 51 of Decree 105, although the assessment conclusion does not conclude the infringement of intellectual property rights or a conclusion on the dispute, it is still considered as one of the sources of evidence expressing professional opinions in a way neutral and reliable for competent authority to consider and decide on legal issues when resolving trademark disputes.??

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ii. Resolution method?

Firstly, the owner of the infringing trademark can resolve the dispute with the other party through negotiation and mediation before bringing the dispute to the competent authority for settlement because this method helps the parties to maintain economic relations, is less costly and not bound by complicated legal procedures. However, the parties should note that the result of negotiation and mediation depends greatly on the cooperation and goodwill of the parties. At the same time, this method does not have a mechanism to bind the parties to execute after reaching an agreement (unless the parties request the Court to recognize the successful mediation results), so there is still a risk that afterward, the party may have to continue to bring the dispute to the competent authority for settlement. In addition, pursuant to Section III.3 Article 1 of Decision No. 1068/QD-TTg dated 22 August 2019 ("Decision 1068"), dispute settlement by mediation is encouraged to be applied to promote and improve the efficiency of intellectual property rights enforcement.?

Secondly, another method that is also encouraged to be applied under Section III.3, Article 1 of Decision No. 1068 is the settlement of trademark disputes by arbitration. Accordingly, pursuant to Point d Clause 1 Article 198 of LOIP and Clause 3 Article 2 of the Law on Commercial Arbitration 2010, trademark owners have the right to use the measure of initiating a lawsuit to arbitration to protect their legitimate rights and interests. However, it should be noted that one of the prerequisites for using this method of settlement is that the parties must have an arbitration agreement as prescribed in Clause 1 Article 5 of the Law on Commercial Arbitration 2010 and Clause 1 Article 2 of Resolution No. 01/2014/NQ-HDTP dated 20 March 2014. This arbitration agreement may be entered into before or after a trademark dispute arises.??

Current practice shows that the method of resolving trademark disputes by arbitration has not been popularly chosen and used by the parties. In addition to reasons such as the arbitral award that may be cancelled by the Court, some interim measures that only the Court has the authority to decide to apply, it can also come from the fact that the human resources of arbitrators with sufficient expertise to resolve trademark disputes are still scarce. The evidence is shown in the fact that the Vietnam International Arbitration Center (VIAC) is one of the major arbitration centers in Vietnam with a number of arbitrators of up to 200 people, but only 19 arbitrators operate in the field of intellectual property (accounting for 9.5%).??

Finally, the traditional and most commonly method chosen is to resolve trademark disputes in Court. Accordingly, in recent years, realizing that some types of disputes with typical nature are increasing and becoming more complicated, the Supreme People’s Court in Section V.3.3. of the Report on the Project for the Law on Organization of the People's Courts (amended) (Draft No. 4) and Articles 61 and 62 of the Law on Organization of People’s Courts (amended) (Draft No. 5) have supplemented provisions on specialized courts of first-instance People’s Courts and specialized first-instance People’s Courts (“Specialized Courts”) for adjudicating cases of typical nature including Specialized Courts on intellectual property. The above proposal of the Supreme People’s Court is currently endorsed and supported by the majority of the National Assembly. In addition, referring to Official Letter No. 561/TANDTC-TCCB dated 05 June 2024, it can be seen that the Court is focusing on promoting the fostering of knowledge and capacity to adjudicate intellectual property cases. Subsequently, in the near future, the system of People’s Courts of Vietnam will develop in terms of expertise and human resources to meet the improvement of the quality of intellectual property dispute resolution in general and trademarks in particular.?

3. Conclusion?

The current state shows that most intellectual property rights holders tend to protect trademarks. Therefore, the number of trademarks registered for protection always accounts for an overwhelming proportion compared to the rest of the subject matter of industrial property. With the escalation in the number of trademarks registered, trademark disputes become more diverse and challenging. When a trademark dispute arises, the owner of the infringing trademark needs to pay attention to collecting evidence to prove his/her claim as well as proving the infringement of the other party. In particular, it is necessary to pay attention to an extremely important source of evidence that can determine the outcome of the dispute, which is the conclusion of trademark examination. At the same time, the owner of the infringing trademark can consider, choose and flexibly apply the methods of negotiation, mediation, arbitration or court to resolve trademark disputes.?

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ADK VIETNAM LAWYERS?

Ms. Eleanor Le, Senior Consultant

Ms. Mandy Trinh, Legal Consultant

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