Framework proposal for famous trademark regime in vietnam

FRAMEWORK PROPOSAL
FOR WELL-KNOWN MARK PROTECTION
Presented in Da Nang city, September 23, 2016
By Lawyer Le Quang Vinh and Dr. Phan Ngoc Tam

MAI CONTENTS
1. Article 6bis Paris Convention
2. Article 16(2) & (3) TRIPs
3. Member States’ Obligation on Protection of WKM
4. WIPO Joint Recommendation 1999
5. Definition and Nature of WKM
6. Analysis and Comment on WKM Regime under the
Current IP Law of Vietnam
7. Suggested Framework for Recognition of WKM

Article 6bis Paris Convention
1. Article 6bis Paris Convention (1925)
Members shall undertake to refuse, to cancel and to prohibit the use a
mark which constitutes reproduction, imitation, or translation (including
its essential part) used for identical/similar goods, liable to create
confusion, of a mark considered by the Member of registration or use to
be well-known
Time-limit for cancellation of registration of mark which is
reproduction, imitation, or translation (including its essential part) is at
least 5 years from the registration date
No time-limit required if bad faith is found

Article 6bis Paris Convention
2. Understanding Article 6bis
Neither definition of WKM, nor what constitutes WKM. With its
discretion, Member may determine a mark is well-known or not
WKM protection means preventing either registration or use of
a mark which is reproduction, imitation, or translation, liable to
cause confusion with WKM or its essential part
Merely applicable for goods (not services)
No requirement senior mark be registered

Article 16 TRIPs AGREEMENT
1. Article 16(2)&(3) TRIPs Agreement
Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to
services
In determining whether a trademark is well-known, Members shall take account
of the knowledge of the trademark in the relevant sector of the public, including
knowledge in the Member concerned which has been obtained as a result of the
promotion of the trademark.
Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods
or services which are not similar to those in respect of which a trademark is
registered, provided that use of that trademark in relation to those goods or
services would indicate a connection between those goods or services and the
owner of the registered trademark and provided that the interests of the owner of
the registered trademark are likely to be damaged by such use

Article 16 TRIPs AGREEMENT
2. Understanding Art. 16(2)&(3) TRIPs
No definition of WKM is defined by TRIPs
Knowledge of mark by relevant sector of public by a Member,
inclusive of the possibility of knowledge of mark as a result of
promotion of mark
Art. 6bis shall apply to goods/services dissimilar to those of
registered mark on the condition that (a) use of such mark would
indicate a connection between the goods/services and owner’s
registered mark, and (b) interest of the owner is likely to be
damaged

Member States’ Obligations
under Paris Convention and TRIPs
a) Identical mark + identical goods/services = a presumption that it is
likely to cause confusion (TRIPs 16.1)
b) Identical/similar mark + identical or similar goods/services + registered
or unregistered = prohibited if likelihood of confusion (including
reproduction, imitation, translation) [Art. 6bis and TRIPs(1) & (2)]
c) Identical/similar mark + dissimilar goods/services + registered =
prohibited if both 2 conditions are met (a) indicates connection, and
(b) likely to cause damage to the owner [Art. 6bis and TRIPs16(3)]
Obligations (b) and (c) are merely applicable to WKM

WIPO Joint Recommendation 1999
1. Background
Non-unity amongst national law in determining
and recognizing WKM in the Union of Paris
Convention
Self-executing Art. 6bis or Art. 16(2)&(3)TRIPs
either causes controversy or leads to different
outcomes or be criticized over-protection to giant
companies, or claimed to go beyond 2 center
principles of the trademark law: Territorial nature,
and, likehood of confusion

1. Background
Neither definition of WKM is made in international treaties
including Paris Convention and TRIPs, nor what constitutes WKM
leading to the fact making it difficult for administrative or judicial
bodies to accurately apply and determine WKM
New challenges for IPR laws arisen in the context of too fast
developing science and technology resulting in more complicated
mandates to deal with the conflict between WKM with trade
name, bad faith, even non-IPR subject matter – domain name, as
well as WKM dilution issues and internet-related matters.

2. Characteristic and Structure of WIPO Recommendation
A total of 6 articles plus explanatory notes by IB.
6 factors recommended to determine a mark is
well-known or not, clarifying attribute “relevant
sector of public”, 3 factors may be not required,
scope of protection, bad faith, conflicting marks,
dealing with conflict with business/trade name,
domain name

2. Characteristic and Structure of WIPO Recommendation
WIPO Recommendation does not bind any Member in a
sense that Member shall introduce it or a part of it into its
national law in determining WKM
No definition of WKM
Flexible provisions enabling Members to apply and
enforce flexibly in its law

3. Six Factors for Determining WKM
(1) The degree of knowledge or recognition of the mark in the relevant
sector of public;
(2) The duration, extent and geographical area of any use of the mark;
(3) The duration, extent and geographical area of any promotion of the
mark, including advertising or publicity and the presentation, at fairs or
exhibition, of the goods and/or services to which the mark applies
(4) The duration and geographical area of any registrations, and/or any
applications for registration, of the mark, to the extent that they reflect
use or recognition of the mark
(5) The record of successful enforcement of rights in the marks, in
particular, the extent to which the mark was recognized as well known by
competent authorities
(6) the value associated with the mark

4. Understanding Six Factors for Determining WKM
(a) 6-Factor Assessment Rule
Any circumstances shall be take into consideration so as to rely on which a mark
may be INFERRED that the mark is well known or not
6 FACTORS recommended are just suggestion, meaning Members may add other
factors but in general it is required that every information, evidence provided by
WKM owner shall be carefully review and assessed, and no factor amongst 6 factors
are prerequisite for recognizing well known or not well known status
Subject to the particular context of the case, all of 6 factors may be studied in this
case but in the other case one or several factors may be concluded to be sufficient
to determine WKM

(b) Relevant Sector of Public
Relevant Sector of Public may exist 3 types but not necessarily
limited to only these 3 types:
Actual and/or potential consumers of the type of goods and/or
services to which the mark applies
Persons involved in channels of distribution of the type of goods
and/or services to which the mark applies
Business circles dealing with the type of goods and/or services
to which the mark applies

(b) Relevant Sector of Public
Member may determine to be well known if it is well-
known by at least one relevant sector of public
Member may also decide WKM even if it is just known
(not well-known) by one relevant sector of public, or even
if it is not known or well-known by no one relevant sector
of public. (recognized WKM outside the territory of the
Member concerned)

(c) 3 Factors shall not be required
Mark has been used or registered or its
application for registration has been filed in
Member concerned
Mark has been recognized to be well known, or
has been registered or its application for
registration has been filed in Member other than
Member concerned
Mark is well-known by public at large

(d) Scope of Protection
Member is obliged to protect WKM from registration or
use (a) conflicting mark, (b) business identifiers
(tradename), and (c) domain name at least from the time
when the mark has become well-known in that Member.
No applicable to deal with conflict between WKM and
Geographical Indication although Members may do so for
the purpose of broader protection
Bad faith may be also one of factors to be assessed since
WKM infringement cases often relates to bad faith issue

(e) Conflicting Marks
A mark shall be deemed to be in conflict with
WKM where that mark, or an essential part thereof,
constitutes a reproduction, imitation, translation or
transliteration, liable to create confusion, of the
WKM, if the said mark is used, is the subject of an
application for registration, or is registered,
pertaining to goods/services which are identical or
similar to those to which WKM applies

(e) Conflicting Marks (cont.)
 With the same fact above and irrespective of the status of dissimilar
goods/service, it is also deemed conflicting mark if one of three following condition
is satisfied:
oUse of that mark would indicate a connection between the goods/services for
which the mark is used, is the subject of an application for registration, or is
registered, and the owner of WKM, and would be likely to damage his interests
oUse of that mark is likely to impair or dilute in an unfair manner the distinctive
character of WKM
oUse of that mark would take unfair advantage of the distinctive character of WKM

(e) Conflicting Marks (cont.)
Member is not required to protect WKM even
if there exists either likelihood of confusion or
likely to cause damage if WKM status has been
determined after the date on which conflicting
mark had been used/filed, except where
conflicting mark is filed, registered or used in
bad faith

Definition and Nature of Well-known Mark
(a) What is well-known mark?
 No WKM definition is available in Paris Convention, TRIPs and
WIPO Recommendation
Very few countries in the world define WKM in their trademark
laws. No definition of WKM in Chinese TM Law 2001 but there is
definition of WKM in the TM regulation
Order No. 5 guiding Chinese TM Law 2001 defined a WKM refers
to a mark that is widely known to the relevant sector of public and
enjoys a relatively high reputation in China
 Order No. 66 guiding Chinese TM Law 2013 removed the concept
“reputation” in its definition whereby a WKM means the trademark
widely known by the relevant public in China


Vietnam defines WKM in Article 4.20 IP Law 2005:
Well known mark means a mark widely known by consumers
throughout the territory of Vietnam
 Other countries like India, the definition of WKM is deemed too long and
a bit complicated. Eg. in its sub-section (zg) Section 2 Indian TM law 1999
stipulates:
“well-known trade mark”, in relation to any goods or services, means a
mark which has become so to the substantial segment of the public which
uses such goods or receives such services that the use of such mark in
relation to other goods or services would be likely to be taken as indicating
a connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first-
mentioned goods or services”

(b) Terminology Use is not Unitary
Well-known, famous, notorious, mark with reputation, reputed mark, or
renowned mark are used inconsistently amongst countries but well-known
mark is most used while famous mark is used by US, Japan, Hungary, Egypt,
Korea, Mexico, Turkey. Canada uses both well-known and famous and almost
no distinction is made; mark with reputation, reputed mark is commonly used
by EU members; notorious by Switzerland, Germany (see Summary Report for
Question 234 by AIPPI)
In short, basically speaking the said terms has the same connotation,
describing the status of widely known by many people with positive idea
relating to prestige (well-known: widely or generally known, famous: known
about by many people, notorious: famous or well known, typically for some
bad quality or deed)

(c) Nature of WKM
3 kinds of mark in view of degree of knowledge by
public: (i) common mark, (ii) intermediate mark (between
common mark and WKM), and (iii) well-known mark
Type (ii) is defined by Vietnam as widely used and
recognized mark (Art. 74.2.g IP Law) while is regarded by
China as mark with substantial influence (Art. 32 Chinese
TM Law 2013)

(c) Nature of WKM (cont.)
Type (ii) is NOT WKM but priority right better than type (i), ie.
allowing owner of such mark which is prior used although no
filing application to oppose application for registration or cancel
registration by other on the condition that it is proven to be
widely used and recognized (like Vietnam) or enjoyed substantial
influence (China)
WKM is special one because of simultaneous objective
attributes (i) known by public, (ii) high degree and extent of
knowledge, and (iii) reputation or fame pertaining to its
goods/services

(c) Nature of WKM (cont.)
3 attributes goes beyond the one of common mark, being
indicating origin of commerce (basically Statical Character),
become Moving Character
Presence of moving character makes a mark become well-
known in this market but may be not sufficient to be well known
in other market, or WKM may be diluted as type (i) or (ii) if
attributes (ii) & (iii) are diminished or even disappears, and vice
versa
WKM is not actually a kind of mark, but it is just a status of
well known pertaining to a particular goods/service at a
particular point of time

Comments on Current IP Law
(a) Definition by Art. 4.20
 Phrase “throughout the territory of Vietnam” under whole definition
“mark widely known by consumers throughout the territory of
Vietnam”has the same meaning as known to public at large in contrast
with “relevant sector of public” under TRIPs và WIPO Recommendations
The phrase is also inconsistent with Art. 75.1, requiring just relevant
sector of public for the purpose of proving the factor “number of relevant
consumers who were aware of the mark by purchase or use of goods or
services bearing the mark, or from advertising”

(b) 8 Criteria by Art. 75
“Criteria” should be replaced with “Factor” as criteria meaning
a standard by which something can be judged or decided, easily
causes misunderstanding that all of 8 criteria must be satisfied
8 criteria should be concise since: burden of proof; bit farther
from 6 criteria by WIPO Recommendation, wording may be
confused during evidence collection and assessment. Ex: number
of relevant consumers (an exact number of consumers who were
aware of the mark)

(b) 8 Criteria by Art. 75 (cont.)
Factor 1 & 3 should be combined as one, whereby
evidence of turnover, profit, market share, etc. may help
measure degree of knowledge or recognition by public
Factor 5 “wide reputation of goods or services bearing
the mark” should be eliminated because reputation or
prestige is merely proved by inferring from the proof of
revenue, profit, market share, etc. not by any direct
documentation.

(c) Art. 74.2(i) – WKM in right establishment procedure
Signs identical with or confusingly similar to another person's mark
recognized as a well known mark which has been registered for goods or
services which are identical with or similar to those bearing such well
known mark, or for dissimilar goods or services if the use of such mark
may affect the distinctiveness of the well known mark or the mark
registration was aimed at taking advantage of the reputation of the well
known mark
Art. 74.2(i) merely mentions registered WKM but not includes
unregistered WKM in Vietnam

(c) Art. 74.2(i) – WKM in right establishment procedure
Art. 74.2(i) merely relates to WKM that is already registered but not
including WKM that is not registered in Vietnam. Vietnam does not
comply with its obligation on protection on unregistered WKM?
NOIP’s examiner self-proclaims that earlier mark is WKM and relied
upon which he rejects application for registration
WKM protection scope is on a par with each other
Absence of rule identifying the point of time when a mark becomes
well-known leading to the mistake, ie. grant of protection of WKM is not
accurate or too broad

(c) Article 129.1(d) – WKM protection in enforcement proceeding
A person shall be deemed as infringer over WKM if he or she uses
signs identical with, or similar to, well known marks, or signs in
the form of translations or transcriptions of well known marks for
any goods or services, including those not identical with,
dissimilar or unrelated to goods or services on the lists of those
bearing well known marks, if such use is likely to cause confusion
as to the origin of the goods or services or misleading impressions
as to the relationship between users of such signs and well known
mark owners

(c) Art. 129.1(d) – WKM protection in enforcement
proceeding
No scope of protection of unregistered WKM
No identity of scope of protection of
registered WKM
No limitation of scope of protection by
providing for point of time when a mark
becomes well-known

(c) Art. 129.1(d) – WKM protection in enforcement proceeding
No borderline between WKM and junior mark used for which of
dissimilar goods/services that may be determined to infringe
WKM and which of dissimilar goods/services that may be not
determined
Consequence “misleading impression” is not sufficient to
conclude infringement where junior mark used for dissimilar
goods/services. It is required that the factor “interest of owner of
WKM is likely to be damaged” be substantiated.

Suggested Framework for Recognition of WKM
(a) Proposal for amendment of IP Law
Art. 4.20 should be read:
Well known mark means a mark widely known by relevant sector of
public and enjoys reputation in Vietnam
Removing item (i) subsection 2 from Art. 74 and combining it with
appropriate changes and item d) subsection 1 Art. 129 to settle: (a) stop
WKM status self-proclaimed by examiner, (b) protection of WKM though
right establishment and infringement remedy proceedings, (c) setting out
a rule on condition, scope and distinction between registered WKM and
unregistered WKM in Vietnam

Adding Art. 75a (Art. 74.2(i) and Art 129.1(d) combined)
Art. 75a. Principle for Protection of WKM
1. Where any right over a mark that is widely known by relevant
sector of public in Vietnam is infringed then its owner is entitled to
implement the provision of this Law to request protection of such
so-called well-known.
2. Determination of WKM shall be merely done at the request of
interested parties and on the basis of substantiated information
and proof of a particular case.

3. During the examination of applied-for mark,
request for validity termination or request for
validity cancellation that arises a request by one
of the interested parties for recognition of WKM
under Art. 75a of this Law, NOIP may, subject to
the particular case and proof thereof, determine
that such mark is well-known or not

4. During the handling infringement act of mark
or other mark related disputes, interested
parties, in accordance with the provision of Art
75a, may request one of the competent
authorities under Art 200 of this Law to
recognize that its mark within such case is well-
known or not

5. During the hearing civil or administrative
disputes relating to trademark, interested parties
may request a competent court, subject to the
nature of the case and substantiated evidence
thereof, to determine whether a trademark within
such case is well-known or not.

6. Where an applied-for sign is a reproduction, imitation
or translation of a third party’s WKM which is not
registered in Vietnam and where goods/services pertaining
to these marks are identical or similar, which may cause
public confused and is likely to damage WKM owner’s
interest then such sign shall be rejected and the use
thereof shall be deemed infringement act against WKM.

7.Where an applied-for sign is reproduction, imitation or
translation of a third party’s WKM which is registered in
Vietnam and where goods/services pertaining to these
marks are neither identical nor similar, which may
mislead public and cause damage to the interest of the
registrant of that WKM then such sign shall be rejected
and the use thereof shall be deemed infringement act
against WKM.

Article 75 – Factors Shall Be Considered Before Determining a Mark is Well
known
(1)the degree of knowledge or recognition of the mark in the relevant sector
of public
(2) the duration, extent and geographical area of any use, promotion of the
mark, including advertising or publicity and the presentation, at fairs or
exhibitions, of the goods and/or services to which the mark applies
(3) the duration and geographical area of any registrations, and/or any
applications for registration, of the mark
(4) the record of successful enforcement of rights in the mark, in particular,
the extent to which the mark was recognized as well known by competent
authorities
(5) the value associated with the mark

(b) Proposal for coordinating and protecting WKM
1. Definition of relevant sector of public:
Actual/potential consumers relates to a particular types
of goods/service,
Manufacturers or supplier of such goods/services,
 salesman and other relevant persons taking part in or
involving the channel of distribution of those
goods/services.

2. Principle for Determining WKM
(1) Competent authorities:
Court, Inspectorates, Market Management, Customs,
Polic, Provincial People’s Committee, NOIP
 No pre-condition shall be applied, no rejection of
recognition of WKM merely based on the fact that the
requester has not satisfied all of 5 factors

(2) Decision on recognition or decision on non-recognition
of WKM shall be prerequisite relied upon which
opposition, termination or cancellation request, lawsuit,
request for handling trademark infringement act that is
proclaimed to be well known by a party
Interested party shall be granted opportunity to object
other party’s evidence or statement that his mark is well
known.

(3) Applicant who does not satisfy NOIP’s notice or decision of rejection
of protection whose appeal has been submitted on the basis of claiming
WKM has the right and obligation as follows:
To file opposition based on requiring his mark be well known and shall
present substantial evidence in accordance with Artile 75 revised
To file cancellation action if earlier mark has been registered no more
than 5 years, except where bad faith is found
To lodge a statement request along with substantiated proof not to
recognize the mark in question is well known

(4) Court is not allowed to automatically recognize a mark is well
know even if one party claims that its mark is well known and the
other party agrees with such statement.
The following cases are accepted by court:
Plaintiff initiates lawsuit against defendant’s infringement act
under Article 75a
Interested party brings an administrative action against
enforcement authority’s recognition or non-recognition decision

Plaintiff sues defendant’s infringement but defendant
counteracts stating that plaintiff’s mark is reproduction,
imitation or translation of defendant’s earlier mark, be
registered or unregistered in Vietnam, but be stated to be
well-known then the court shall determine whether earlier
mark is well-known or not
Plaintiff brings action based on the fact defendant’s
business name is identical or similar to his WKM

(5) Prior to plaintiff’s lawsuit against the
infringement of mark taken which such mark has
been determined as WKM by one of the accepted
enforcement authority and defendant does not
object then the court may determine such mark is
WKM. Where defendant objects, plaintiff has
obligation to continuously prove his mark is well-
known

(6) Where accused mark infringing in this case that was
determined to be WKM in administrative decision or
judgment in another case then enforcement authority may
decide recognition of such mark is well known if:
 Later case has the same characteristics as the former’s
The other party has no objection

(7) Where other’s use or registration of mark whose goods
or services is identical or similar to those of a unregistered
WKM as stipulated in Art. 75a.6 of this Law, competent
authority which admitted the case, may conclude that it
would be deemed to cause public confusion as to the origin
of commerce between WKM and disputed mark if there is
substantiated reason to believe that disputed mark and
WKM has a connection with each other in a special manner
through parent, subsidiary or affiliated or license relation.

(8) Where other’s use or registration of mark whose goods
or services is neither identical nor similar to those of a
unregistered WKM as stipulated in Art. 75a.7 of this Law,
competent authority which admitted the case, may
determine that it would be deemed to mislead public if
there is proven reason that the disputed mark and WKM is
associated with each other with a considerable degree,
through which lessening distinctive character and diluting
WKM’s goodwill or taking unfair advantage of the distinctive
character of WKM

(9) Where one party in proceedings either of opposition,
validity termination, validity cancellation, request for
handling infringement act or initiating a lawsuit relating to
its request for preventing other party from using mark or
business name that is identical or similar to its registered
WKM, whose goods/services bearing WKM and disputed
mark or bussiness name are neither identical nor similar ,
competent authority accepted the case, may decide, subject
to particular circumstances and based on comprehensive
assessment of the following factors:

(9)
Degree of distinctive character of WKM
Extent to which WKM is widely known by relevant sector
of public relating to goods or services or in respect to
business name in that case;
Degree of connection between WKM’s goods/services and
disputed mark or business name’s goods/services in suit
Intent of defendant regarding the use of WKM or the use
of WKM to incorporate in his business name
Any relevant factors

3. Hướng dẫn yêu cầu cung cấp bằng chứng chứng minh NHNT
3.1 Following evidences may be considered as substantiated proof
for WKM recognition under Article 75 revised:
Proof proving degree of knowledge and recognition of the mark by
relevant sector of public
Proof indicating duration of use such as history, extent of use and
geographical scope of where the mark has been registered. For
unregistered mark subject to request for recognition of WKM, all
relevant evidence and information shall show in an at least period
of 5 years. For registered mark, such requirement is no less than 3
years.

3. Guidelines for Providing for Evidence Proving WKM
3.1 Evidence proving duration, extent and geographical scope of any
advertisement, use, promotion of the mark, of which particularly
consists of information, proof showing sale and promotion activities
including expenditures for conducting those activities, geographical
extent, mode of promotion and frequency with respect to the mark
Other evidence showing the mark is recognized as WKM in any other
countries (if any)
Other relevant information or proof relied upon which may be
inferred that the mark in question is well known comprises but not
limited to revenue, market share, profit, tax paid, etc.

3.2
For the purpose of well-knowness desmontration, the
special attention is drawn that relevant proofs relating to
3 year or 5 year requirements shall be understood that 3
years or 5 year prior to the date of filing of the mark
being requested to oppose or cancel or accused party
had commenced to use the disputed mark.

Framework proposal for famous trademark regime in vietnam

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