Having a registered trademark doesn't guarantee victory in a trademark infringement lawsuit. Even with a favorable expert opinion from the Vietnam Intellectual Property Research Institute (VIPRI), there's no absolute assurance of winning, despite it being the likely outcome in most cases. There's always a lurking risk of failure, even when everything seems to be in your favor. So, what's the reason behind this? Intellectual Property (IP) disputes and infringements in Vietnam are becoming increasingly sophisticated and unpredictable. In these situations, it's crucial to develop a comprehensive IP protection and enforcement strategy, considering all relevant aspects and potential risks to minimize legal exposure and ultimately ensure success in the fight against IP infringement.
With 15 years of practical experience in handling large-scale and complex IP infringement cases, KENFOX IP & Law Office will provide valuable analysis and insights to help IP rights holders accurately identify issues from both legal and practical perspectives. Based on this, we enable clients to make timely, informed decisions, ensuring effective enforcement and anti-infringement measures.
The "scope of trademark protection" refers to the limits and content of rights (level of protection) that a trademark owner enjoys under the legal protection framework. This means that a trademark is only protected within the scope granted to it by law. Determining whether a third party's action infringes a registered trademark is essentially assessing whether that action falls within the "scope of protection" of the registered trademark.
Does the alleged infringer's action fall within the "scope of protection" of the trademark?
To determine whether trademark infringement has occurred, it is necessary to consider the "scope of trademark protection." The scope of trademark protection is determined based on (i) the trademark specimen and (ii) the list of goods/services specified in the Trademark Registration Certificate (Article 77.2 of Decree 65/2023).
Therefore, a trademark is only protected for the specific goods and/or services for which it is registered. If a third party uses a trademark, even if it is identical or highly similar, on goods that have a different nature, function, purpose, or target customers compared to the goods and/or services covered by the registered trademark, there is no infringement. Conversely, if a third party uses an identical or similar trademark or sign for goods or services of the same or similar kind, this action may be considered infringement if it is likely to cause confusion among consumers regarding the origin of the goods/services.
For example, in the trademark dispute involving "HOA SEN" although IDEA Company used a sign identical to the registered trademark of HOA SEN Company, the product "printed calendars" was determined to be distinct from HOA SEN Company's "services of presentation/displaying of goods on communication media for sales". Therefore, there were insufficient grounds to conclude infringement.
A lack of clear understanding of the scope of trademark protection can easily lead to biased conclusions that a third party's use of a trademark constitutes infringement. Elements that are excluded from protection or have weak distinctiveness can make it difficult to determine whether trademark protection has been infringed. For instance, many registered trademarks consist of elements with "weak distinctiveness" or "disclaimed elements". A third party's use of such elements in their product packaging may or may not constitute infringement. To determine the scope of protection in these cases, it is necessary to assess the "commercial impression" created by the combination of these "weak" elements and whether the overall impression is likely to cause consumer confusion regarding the commercial origin of the goods.
While in principle, descriptive or non-distinctive signs are not entitled to exclusive protection as trademarks, caution is still advised when considering using such a sign. Many might assume that "NHÀ AN TOÀN" (Safe House) used for services like "Installation of warning and signaling devices using light, sound, and images; installation of anti-theft, fire alarm, fire fighting, doorbell, and door lock devices" under Class 37 would be considered descriptive. This is because products like "anti-theft devices, fire alarms, fire fighting equipment, doorbells, and door locks" are closely associated with houses and serve the function of ensuring home safety, making it likely that such a mark would not be protected. However, the trademark "NHÀ AN TOÀN" is indeed protected in Vietnam.
The scope of trademark protection acts as a "protective boundary." If a third party's action falls within this boundary (i.e., there is similarity in trademarks, goods/services, and a likelihood of confusion), then that action may be considered trademark infringement. Therefore, before initiating a trademark infringement lawsuit, you need to clearly determine the scope and extent to which your trademark is protected. Based on this, assess whether the third party's action falls within the scope of protection of the registered trademark. It's important to note that the scope of trademark protection can vary depending on the type of trademark (ordinary trademark, well-known trademark) and the specific factors of each case.
What are the elements of trademark infringement?
Signs (elements) associated with goods, packaging, service facilities, transaction documents, signboards, advertising media, and other business means that are identical or similar to a protected trademark to the point of causing confusion are collectively referred to as "elements infringing upon trademark rights." [Article 77.1, Decree 65/2023/NĐ-CP].
When can a sign be considered an element infringing upon a registered trademark?
Does Trademark Similarity Automatically Equal Infringement?
The majority of trademark infringement cases are resolved without encountering issues related to the statute of limitations. However, the statute of limitations remains a crucial provision that must be adhered to in order to ensure successful enforcement of trademark rights. If, upon discovering an infringement, the trademark owner merely issues a warning and takes no further action to address the violation, it could result in the expiration of the time limit for seeking remedies through administrative or civil measures.
When opting for "administrative" measures to address infringement, the trademark owner must request the competent Vietnamese state agency to handle the violation within two years from the date the infringing act ceased (for completed trademark infringement) or from the date the infringing act was discovered (for ongoing trademark infringements).
For "civil" remedies, the statute of limitations for seeking redress for trademark infringement is regulated quite differently. Specifically:
Therefore, you need to pay special attention to the statute of limitations to effectively enforce your trademark rights. Sending a Cease and Desist Letter or documenting (notarizing) evidence at a Bailiff's Office will become meaningless if you fail to take timely legal action within the prescribed time limit. If you exceed the statutory time limit, you will lose the right to request remedies or initiate a lawsuit for trademark infringement.
In many cases, you may initiate a lawsuit or request action against an infringement without being aware that the alleged infringer's mark has already been filed for, or even granted protection as an Industrial Design. This situation often comes to light when the alleged infringer exercises their right to provide explanations and relevant evidence as per Article 25.3(a) of Decree 99/2013/NĐ-CP.
In such situations, administrative enforcement agencies often "suspend" or "refuse" to handle the infringement in accordance with the provisions of Articles 27 and 28 of Decree 99/2013/NĐ-CP. The court may also temporarily suspend the resolution of the case under Article 214.1(d) of the Civil Procedure Code to await the outcome of the IP rights dispute between the parties.
These disputes may result in the stay or suspension of trademark infringement proceedings. Enforcement agencies often exercise caution in pursuing these cases, even when the trademark owner provides an undertaking in accordance with Article 27.1(b) of Decree 99/2013/NĐ-CP. Vietnamese enforcement agencies are also often hesitant to handle such cases, even if the trademark owner provides an undertaking as per Article 27.1(b) of Decree 99/2013/NĐ-CP. Accordingly, they will suspend infringement proceedings pending the determination of whether the alleged infringer’s sign (or mark) will be granted protection or whether the trademark owner’s mark might be cancelled or invalidated following the dispute resolution process.
The "temporary suspension" of a lawsuit or the "temporary halt" or "refusal" to handle a trademark infringement case can also occur when the registered trademark is alleged to have been obtained in "bad faith" and the accused infringer files a request with the Intellectual Property Office of Vietnam (“VNIPO”) to cancel the trademark under Article 96 of the IP Law. It is important to note that Vietnam's IP Law establishes measures to prevent the "abuse of intellectual property rights". Article 198.4 allows the defendant to request the Court to order the plaintiff to pay reasonable costs (for hiring lawyers or other expenses) if the Court concludes that the defendant did not infringe. Article 198.5 further allows for a claim for damages (including attorney's fees) if the abuse of procedure caused harm.
The aforementioned disputes create a sense of insecurity for enforcement agencies when handling such cases, due to concerns about potential state compensation liability if they hastily confiscate, penalize, and destroy goods suspected of infringement.
Many businesses, assuming that infringements are minor or insignificant due to their limited visibility, often opt for a lenient approach. They believe a simple warning letter is sufficient. While this may be true in some cases, it often fails to address the underlying risks. The landscape of IP infringement in Vietnam is evolving rapidly, becoming increasingly sophisticated and persistent. What's visible may only be the tip of the iceberg. Relying solely on superficial signs can lead to underestimating the severity of the infringement. The infringing party may be using the trademark illegally across multiple platforms, from websites to e-commerce marketplaces, or even incorporating it into their business name or domain name.
Sending a Cease and Desist Letter in these cases is ineffective and can even backfire, as the infringing party may attempt to strengthen their position or, more seriously, seek to successfully register the trademarks that the trademark owner considers to be infringing. This is entirely possible. In practice, even with a Notice of Opposition and VIPRI’s expert opinion in favor of the trademark owner, VNIPO may still grant protection to the allegedly infringing trademark.
Therefore, sending a Cease and Desist Letter to the infringing party should be considered with utmost caution in most cases.
Taking decisive legal action to address trademark infringement from the outset can be a more advantageous approach, offering several benefits. This allows you to gather valuable evidence to protect the integrity of your registered trademark. When you successfully enforce your trademark against third-party marks, you can leverage these victories as favorable precedents for handling future infringement cases, making subsequent enforcement actions easier. Once your trademark gains reputation and prestige, it becomes more vulnerable to imitation by competitors. Strive to achieve as many victories in IP enforcement as possible, as these enforcement decisions will serve as crucial evidence and powerful tools to successfully oppose third-party trademark applications at VNIPO.
Due to the relatively low cost of trademark registration in Vietnam, many third parties are attempting to register trademarks that are similar to or "surround" well-known trademarks in the market. Their aim is to exploit the existing reputation of these established brands to boost their own sales without having to invest financially in building and promoting their own brand. These applicants design and create trademarks that closely resemble reputable trademarks and then seek to have their marks accepted for protection.
The act of registering "parasitic" trademarks not only weakens the distinctiveness of the original trademark but also creates significant obstacles for the legitimate trademark owner in enforcing their rights. Although Vietnam’s IP Law provides for the right to request cancellation of a trademark, once the alleged infringer has been granted a protection title, exercising this right often faces numerous challenges and has a low probability of success.
Typically, a trademark has undergone a substantive examination process lasting 12-18 months, and it is understood that this examination has been thorough. If VNIPO decides to cancel the trademark at the request of a third party, the cancellation could be seen as an admission of errors in the prior examination process. If the alleged infringer has commercialized products based on the registered trademark, the cancellation could lead to state compensation liability on the part of VNIPO.
In practice, judges presiding over IP cases are often not specialists in this field, leading to limitations in their ability to assess complex issues. It can be observed that court rulings frequently lack in-depth legal analysis and interpretation, tending instead to rely heavily on expert opinions from administrative bodies such as VNIPO or VIPRI. Consequently, very few court decisions contradict VNIPO's determinations. This reality demonstrates that revoking a trademark that has already been granted protection, even in the presence of errors, remains a significant challenge.
In practice, there are instances where discrepancies arise between the conclusions regarding trademark matters reached by VIPRI and VNIPO.
Trademark owners often file requests for expert opinions from VIPRI to support their claims of infringement. However, even when VIPRI concludes that there are elements of infringement (i.e., likelihood of confusion exists), VNIPO may issue a contrary decision, granting protection to the allegedly infringing trademark.
This discrepancy, although explained as a result of "differing perspectives in evaluation", raises significant questions about the consistency and objectivity in the application of IP law. Consequently, even with a favorable expert opinion from VIPRI, you cannot be entirely confident in your ability to protect your rights.
Many trademark owners, hesitant to invest in investigation costs, underestimate or downplay the importance of investigating infringements. As a result, they only obtain limited information from their non-specialized investigative staff. Consequently, trademark owners often conclude that the infringement is insignificant and unlikely to have a negative impact on their brand.
In reality, the scope and extent of the infringement can be far more serious and widespread than initially apparent, often involving an entire network with hidden supply chains, warehouses, and distribution channels. The profits from selling infringing products, even for a single season, can sustain the infringer for an entire year or even longer. Therefore, upon discovering suspected infringing products, it's crucial to assess the potential harm and risks at a high level, never underestimating or dismissing them. Our practical experience shows that even seemingly minor infringements warrant a comprehensive investigation, encompassing both on-the-ground and online inquiries, examining everything from business facilities to products, from product origins (domestic or imported) to distribution channels. Only through a thorough investigation can the full picture of the infringement be revealed. This enables you to make swift, informed decisions, minimizing the damage to your intellectual property.
Closing thoughts
Addressing trademark infringements in Vietnam is undeniably challenging. From defining protection scope to navigating statutes of limitations and resolving disputes, each step requires a thorough understanding of the law and a strong enforcement strategy. The exploitation of IP registration and inconsistencies among authorities add to the difficulties for trademark owners. However, positive outcomes are still within reach.
Trademark enforcement is a long-term endeavor that requires a well-rounded strategy, a deep understanding of the law, and the ability to manage legal risks. These elements are essential for successfully protecting your IP rights in Vietnam.
QUAN, Nguyen Vu | Partner, IP Attorney
HONG, Hoang Thi Tuyet | Senior Trademark Attorne
LY, Dinh Trang | Associate
Related Articles:
