IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM

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MINISTRY OF EDUCATION AND TRAINING
FOREIGN TRADE UNIVERSITY
MASTER THESIS
IDENTICALNESS AND SIMILARITY IN
EXAMINING TRADEMARKS IN VIETNAM
Specialization: International Trade Law and Policy
NGUYEN THI HONG NHUNG
Hanoi, 2020

MINISTRY OF EDUCATION AND TRAINING
FOREIGN TRADE UNIVERSITY
MASTER THESIS
IDENTICALNESS AND SIMILARITY IN
EXAMINING TRADEMARKS IN VIETNAM
Major: International Economics
Specialization: International Trade Policy and Law
Code: 8310106
Fullname: Nguyen Thi Hong Nhung
Supervisor: Assoc. Prof., PhD. Le Thi Thu Ha
Hanoi, 2020

CERTIFICATION
I hereby certify that the thesis with the title “identicalness and similarity in
examining trademarks in Vietnam” is my own research and does not reproduce any
other materials. The data indicated in the thesis is clear, accurate and collected from
the confident sources of information.
The Author
Nguyen Thi Hong Nhung
i

ACKNOWLEDGEMENTS
Throughout the course and completing this thesis research, I have received
valuable guidance, dedication and enthusiasm of my supervisors, my teachers, my
friends, my colleagues and my family. With all my respect and gratitude, I would
like to express my appreciation and sincere thanks to:
My special thanks to my supervisor- Assoc. Prof., PhD. Le Thi Thu Ha, who
was dedicated to guide and help me in the process of researching and writing this
thesis. Without her instructions and guidance, thesis might not be completed.
I would be grateful to my teachers in Postgraduate Education of Foreign Trade
University for interesting and useful lectures, for enthusiastic transmission of valuable
knowledge and for the best conditions offering in the process of the course.
I would like to express sincere thanks to my colleagues in Intellectual Property
Office of Vietnam in general and in Trademark Examination Center in particular for
supporting me with useful and plentiful data and their priceless experiences and
knowledge shared with me during the interview and daily working life.
My sincere thanks come to my friends and my family, especially my younger
sister, for their encouragement and supports during the courses, especially the
period of thesis research.
This thesis studies on identicalness and similarity in examining trademarks,
which is not a brand new topic in the world, but complicated and required various
technical knowledge, skills and practical experiences. Thus, the thesis has the
inevitable shortcomings and limitations. I am looking forward to receiving valuable
comments for improvement.
Sincerely
Nguyen Thi Hong Nhung
ii

TABLE OF CONTENTS
CERTIFICATION .................................................................................................... i
ACKNOWLEDGEMENTS.....................................................................................ii
LIST OF ABBREVIATIONS.................................................................................. v
LIST OF TABLES AND FIGURES...................................................................... vi
CHAPTER 1: INTRODUCTION........................................................................... 1
1.1 The significance of thesis ............................................................................. 1
1.2 Research questions....................................................................................... 4
1.3 Research purposes........................................................................................ 4
1.4 Scope of the research ................................................................................... 4
1.5 Research methodology................................................................................. 5
1.6 Significance to knowledge ............................................................................ 5
1.7 Structure of the thesis................................................................................... 6
CHAPTER 2: LITERATURE REVIEW............................................................... 7
2.1 Trademarks................................................................................................... 7
2.2 Distinctiveness of trademarks and likelihood of confusion...................... 8
2.3 Trademark identicalness and similarity ...................................................10
2.4 Filling the gap ..............................................................................................11
CHAPTER 3: RESEARCH METHODOLOGY ................................................ 12
3.1 Qualitative Data Collection ........................................................................13
3.1.1 Data collection via desk research............................................................ 13
3.1.2 In-Depth Interview................................................................................ 14
3.2 Qualitative Data Processing and Analysis ................................................15
CHAPTER 4: RESEARCH RESULTS ............................................................... 20
4.1 Position of trademark identicalness and similarity examination ...........20
4.2 Demand for conducting identicalness and similarity of trademark
examination in Vietnam ......................................................................................22
4.2.1 Numbers of filed applications ................................................................. 23
4.2.2 Numbers of third party’s opinions on the grant of protection titles .... 27
4.2.3 Numbers of appeals ................................................................................. 28
4.3 Criteria for identicalness and similarity examination of trademarks.....29
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4.3.1 Identicalness and confusing similarity of signs ...................................... 33
4.3.2 Identicalness and similarity of goods and services ................................. 57
4.4 Subjects of comparison as the control marks .......................................... 71
4.4.1 The prior registered trademarks .............................................................. 72
4.4.2 The widely used and recognized trademarks and the well-known
trademarks ......................................................................................................... 74
4.4.3 Another person’s mark which has been registered the registration
certificate of which has been invalidated for no more than 5 years ........... 75
4.4.4 Trade names............................................................................................. 75
4.4.5 Geographical indication and geographical indications being protected
for wines or spirits ............................................................................................ 77
4.4.6 Industrial Design ..................................................................................... 78
CHAPTER 5: RECOMMENDATION AND CONCLUSION ........................... 80
5.1 Recommendations ....................................................................................... 80
5.1.1 Policy and regulations .............................................................................. 80
5.1.2 Platform and Support Instruments .......................................................... 82
5.1.3 Enhancing examiners’ abilities ............................................................... 83
5.2 Conclusions ................................................................................................... 83
REFERENCES ........................................................................................................ 87
APPENDIX .............................................................................................................. 92
iv

LIST OF ABBREVIATIONS
IP Intellectual Property
IPRs Intellectual Property Rights
IPVN Intellectual Property Office of Vietnam
TEC Trademark Examination Center
WIPO World Intellectual Property Organization
EUIPO European Union Intellectual Property Office
JPO Japan Patent Office
KIPO Korean Intellectual Property Office
IP Law Viet Nam Intellectual Property Law (IP Law) of
December 11, 2005, amended in 2009 and 2019
Circular Circular No. 01/2007/TT-BKHCN of February 14,
2007 of the Ministry of Science and Technology,
guiding the implementation of Decree No.
103/2006/ND-CP of September 22, 2006 of the
Government, detailing and guiding the
implementation of a number of articles of the IP Law
regarding industrial property
Internal Guidelines IPVN Guidelines on trademark examination
v

LIST OF TABLES AND FIGURES
Table 1: Coding references ...................................................................................... 17
Table 2: Statistics on filed national trademark applications and granted trademark
certificates in Vietnam from 1982 to 2019 .............................................................. 24
Table 3:Trademark Identicalness and Similarity Definition.................................... 29
Table 4: Defining identicalness of two goods or two services ................................ 59
Table 5: Popularity of Legal Citations on Reasons for Refusals ............................. 73
Figure 1: Procedures of processing trademark applications in Vietnam ................. 22
Figure 2: Filed national trademark applications in Vietnam 1982-present.............. 26
Figure 3: Granted trademark certificates in Vietnam 1982-present......................... 27
Figure 4: Number of third party’s opinions on the grant of protection titles filed in
IPVN......................................................................................................................... 28
Figure 5: Vietnamese numbers of appeals from 2005 to 2019 ................................ 29
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ABSTRACT
In the context of globalization and international integrations, goods and
services become more plentiful and diversified in the market. Trademarks emerge to
become more and more important in helping consumers distinguish goods and
services provided/produced by one to another enterprise. The confusion of
consumers on trademarks and brands due to similarity or identicalness brings
damages not only to themselves but also the goods and services suppliers.
Henceforth, cultivating a distinctive brand or trademark is a big question for
enterprises and it is essential to assess the distinctiveness of a trademark before
investing in developing their business.
In Vietnam, distinctiveness is assessed during in both stages of acquiring
exclusive rights and enforcing the rights on basis of absolute grounds and relative
grounds. Identicalness and similarity of a trademark play a key role in defining the
distinctiveness of a trademark on the relative grounds. This article shall provide a
picture on how identicalness and similarity are assessed in the process of examining
trademarks in Vietnam and dig deeper in how the legal frame for the issues is
interpreted and applied in the practice of examination.
Keywords: trademark identity, trademark identicalness, trademark similarity,
likelihood of confusions...
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CHAPTER 1: INTRODUCTION
1.1 The significance of thesis
A trademark is a type of intellectual property consisting of a mark of any form
used to distinguish products or services of a particular individual or enterprise from
those of others. It first appeared in the ancient world, which was thought to be first
used by a sword maker in Roman Empire named Blacksmiths (Richardson, 2008),
started to play an important role with industrialization, and emerging as a key factor
in the modern world of international trade and market-oriented economies. The first
legislative act was passed in 1266 under the reign of Henry III requiring all bakers
to use a distinctive mark for the bread they sold and began to be codified in modern
law since the 19th
century in both civil and common law systems (Frank, 1925). For
the former, the French first comprehensive trademark system in the world was
passed into law in 1857 with the “Manufacture and Goods Mark Act”. For the latter,
the Merchandise Marks Act 1862 made it a criminal offence to imitate another’s
mark with “intent to defraud or to enable another the defraud” in Britain and its first
legislative act on registration of trademarks was passed in 1875 as “Trade Marks
Registration Act” (Bently, 2008).
All international treaties and national legal system, from Comprehensive and
Progressive Agreement for Trans-Pacific Partnership to the Agreement on Trade-
Related Aspects of Intellectual Property Rights, from civil law system such as
French and Vietnamese to common law system such as the United Kingdom and the
United States of America, share the common understanding of definition and
functions of trademarks, however, differ one another in conditions governing
protection and acquisition of trademark rights. For instance, sound trademarks are
protected in some countries and regions like the United States of America, Australia
and European Unions and not protected in other countries such as Vietnam.
The conditions for a trademark to be protected are based on its distinctiveness
whether trademark rights are acquired via either use or registration. Distinctiveness
of trademarks are assessed base on two grounds: absolute grounds and relative
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grounds. The first accounts for inherent distinctiveness of a mark or whether they
are sufficiently distinctive, not deceptive, not immoral, etc.) while the second
assesses the distinctiveness of a mark (hereinafter called the contested mark or
junior mark) in comparison with the prior marks (hereinafter called the control mark
or senior mark).
The procedures of assessing trademark distinctiveness are also differentiated
from one country to another. In general, three typical approaches can be observed
internationally: British system, traditional French system and German system. For
the first, examination on absolute and relative grounds are provided, and also for an
opposition procedure. It is applied, in Europe, by countries such as Portugal, Spain
and the Northern European countries. For the second, IP offices examine only for
absolute grounds and the law provides for no opposition procedure. It is left to the
owner of the prior rights to bring a cancellation or infringement action against the
registration or use of a more recent sign. This system has also been adopted by
Switzerland. The third system provides for examination by the office for absolute
grounds and also for an administrative opposition procedure. It is a good
compromise between the more extreme systems mentioned before, and follows a
modern trend which is reflected in the proposed European Community Trade Mark
system. 1
Vietnam adapted the British system, it conducted examination on both
absolute and relative grounds and offered administrative opposition procedure.
Throughout its history, trademarks have experienced great development in both
quantity and quality. Specifically, an estimated 10.9 million trademark applications
were filed worldwide in 2018 – about 1.7 million more than in 2017 corresponding to
growth of 19.2%, which marks a ninth consecutive year of growth. On national scale,
Vietnam has been experienced dramatic increase in trademark filed for 15 years2
.
Specifically, the total number of applications climbs from 14,916 to 53801, equivalent
to 360% and that number has continuously risen up for the last 10 years3
. In additions,
new forms of trademark besides conventional ones have been used in
1
Introduction to Trademark Law and Practice, WIPO,
1993 2
WIPO annual report 2019
3
IPVN annual report 2019
2

the market and also gained legal protection such as sound marks, smell marks, or
positions marks. Henceforth, the conditions of trademarks protection are always in need
of adjustment in order to live up with the revolutions of trademarks themselves.
Moreover, the assessment of trademark identicalness and similarity results in
different conclusions among countries due to territorial features. For instance, in case
of “ ”, Sony Corporation filed trademark applications via Madrid
Systems and designated in 26 countries. With the same marks and the same goods
and service, there are three different results from different countries after the
process of examining its distinctiveness. In details, Sony Corporation received the
notifications of the total provisional refusal of protection from German and Spanish
Offices, the partial provisional refusal of protection from Chinese office, and no
notification from others (Which means those offices intended to grant protection
titles)4
. Henceforth, studies on conditions for trademark protection on national
levels are always in need.
Additionally, the relative grounds for distinctiveness assessment, namely,
examination of identicalness and similarity of trademarks are “relative” and
dependent on many factors. Specifically, the influent factors that constitutes
confusion due to identicalness and similarity include sources of information used to
search for the control, the discenting opinions regarding whether exists the
confusing similarity or identicalness or not, the awareness of related public on the
goods and services that bearing marks, and so on. These factors are affected by the
information database, efficiency of search tool, examiners’ background and
experiences, national cultures, traditions and costumes, and literacy level of the
public... In short, the examination of identicalness and similarity is relative and
heavily relies on specific contexts of each case.
To sum up, identicalness and similarity in examining trademarks are always in
need of studying, especially in scope of national levels for three main reasons,
which are the dramatic increase in quantity and emerging diversity of trademark
4The final decisions may vary a little after exchanging information and amendments of applicants.
More information at https://www3.wipo.int/madrid/monitor/en/showData.jsp?ID=ROM.586052
3

applications, different decisions on whether granting the title of protection or
refusing protections and on the scope of protections, and the relativeness of
examination itself. In this paper, “identicalness and similarity in examining
trademark in Vietnam” is chosen to the thesis topic.
1.2 Research questions
This research focuses on answering the question:
“How are trademark identicalness and similarity examined in Vietnam?”
In order to find out the answer to that issue, the sub- questions are brought forward
- What are Vietnamese regulations governing or guiding trademark’s
identicalness or similarity?
- How are the regulations realized and applied in the practice of examining
trademark identicalness and similarity in Vietnam?
- Are there any issues arising during the examination process? If yes, what
are they and suggestions?
1.3 Research purposes
Regarding to the academic significance, the article hopefully contributes to
enrich the data source on industrial properties in Vietnam, especially, trademarks
which draw more and more attention from society and to make a thin line drawing
to worldwide intellectual property sketch.
For the social significance, this study is proposed to provide an overview on of
Vietnam regulations on trademark’s identicalness and similarity and its importance.
It also draws a big picture of the practice of examining trademark identicalness and
similarity in Vietnam and spots its area of difficulties and confusion. Finally, this
paper also mentions the experiences from other countries and lessons for Vietnam.
1.4 Scope of the research
Business is conducted worldwide and branding can be built up internationally,
however, this paper only focuses on a little angle of trademark, namely
“identicalness and similarity” in Vietnam only.
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During the time of IP revolutions in Vietnam, legal system has experienced the
development, changes and amendment due to the internal requirements of its
markets and the impacts of international treaties and conventions that Vietnam has
participated over time. However, in this paper, only regulations and related legal
texts issued since the introduction of Vietnam Law on Intellectual Property in 2005
are studied. Nonetheless, it is undeniable that the trademark applications and
registrations have been done before that point of time still have its merits on the
current applications as the seniors. In case those marks are the control marks for
examples discussed in this report, the application laws will be taken into account.
In terms of space, only the examination of trademark identicalness and
similarity in Vietnam is taken into consideration. Nevertheless, international
experiences in solving problems regarding to trademark identicalness and similarity
shall also be sought up.
In terms of issues covered, the paper, hopefully, can thoroughly discuss about
trademark identicalness and similarity in examining trademark as well as other
related matters such as opposition handling…
1.5 Research methodology
Qualitative approach is mainly used for this research with the aim of providing
a deep perspective of the issue. Secondary data will be collected via desk research
while primary data will be acquired via in-depth interview. The combination of
these two methods will compensate each other to give as comprehensive material as
possible. Information gathered will be analyzed, compared and summarized
systematically. Some statistics on trademarks application and opposition will also
be presented to draw the picture of current development. Case studies and experts’
opinion are another effective method that help clarifying the said issue.
1.6 Significance to knowledge
By drawing a big picture on “identicalness and similarity in examining
trademarks in Vietnam”, this paper shall be beneficial to the following entities. The
very first one who will find this paper useful are IP managers because it provides an
overview of the legal framework and practice of examining trademark’s identicalness
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and similarity in Vietnam over the time, which can be helpful to them to review the
subject easily. Second, examiners who directly examine trademark applications.
Diverse viewpoints on this familiar issue will give them a chance to look at that
from different perspectives. Last but not the least, the scientific report will be useful
to trademark applicants in defining infringement and filing oppositions or appeal.
1.7 Structure of the thesis
The thesis will be presented in five chapters. Besides the three main parts,
which are chapter 2, 3, and 4, the introduction, and conclusions and
recommendations of this paper will be given in in chapter 1 and 5 respectively.
First of all, the introduction will briefly give an overview of research
background, problem statement, and figure out the research question as well as how
this research is conducted and what it contributes to community. The structure of
the thesis will be presented here in order to make the understanding easier.
Second, chapter 2 – Literature review and theoretical framework will take a
look on prior national and international studies aiming at appreciating what have
been done and indicating the gap that need to be filled as well as build up the
framework for this thesis to be conducted.
Next, chapter 3 will focus on research methodology. As mentioned in
introduction, methodology will be discussed in details to make transparent how data
was collected and processed.
After that, the research results – one of the most important parts will be
presented in chapter 4. Overview of legal framework for trademark identicalness,
the current situation of how trademark identicalness and similarity are examined in
Vietnam, what are the difficulties and suggestions for the issues, as well as lessons
from some organizations and institutions will be covered in this chapter.
Finally, conclusions of the research will be drawn and recommendations will
be written in chapter 5.
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CHAPTER 2: LITERATURE REVIEW
2.1 Trademarks
Trademark as an intellectual property, is a very critical element in today’s
competitive market place and digital market space. Business enterprises are using
trademark as a legally protected valuable and important marketing tool for product
and service differentiation (Sople, 2014). They are used to support consumers to
select a product or service that promises a higher quality with good impression, a
good brand, and attractive. A recognized trademark and brand can be most valuable
intangible assets of a company. Trademarks create and protect the brands to
generate earnings and to differentiate from the competitors. The role of trademarks
in the market, especially for consumers’ benefits is emphasized by Vietnam
Ministry of Industry and Trade (MOIT) that a trademark identifies the manufacturer
of an item and is helpful for consumer judge the quality of the goods. A trademark
also helps them know where to find assistance when goods are not up to quality.
(MOIT, 2010) Generally, a “trademark” is understood as a “brand” (WIPO and
KIPO, 2009). Today, brands and trademarks are not only use by business sectors,
but also preferred and considered by nations and institutions to build the good
image and reputation. Precisely, business enterprises, institutions and nations are
conscious and interested to enhance the brands and trademarks value (WIPO, 2013).
Based on its forms, trademarks are classified in six groups including: verbal marks,
numeral marks, device marks, 3D marks, non-conventional trademarks (such as
sounds, smells, holograms, positions...) and combined marks. (Anh, 2010)
Henceforth, it is not surprising that the trademark owners go to great lengths to
protect them from infringement (Cohen 1986, 1991). The law regards trademark
infringement between competitors the same as if a person goes to the bank pretending to be
someone else, using a copied identification (McCarthy 1984, p. 108). That person cashes a
check, drawing funds from the other's account, because the bank teller has been confused
by the similarity of the identification. In an analogous manner, the owner of senior mark is
damaged when consumers choose junior mark thinking that they are purchasing the senior
one. In other words, confusion between trademarks implies that consumers do not get the
brand they intended to buy (Itamar Simonson, 1994).
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Therefore, the key issue to conclude whether not there is trademark infringement
lies in the likelihood of confusion between trademarks. In other words, likelihood of
confusion is the yardstick used to determine trademark infringement (Allen 1991).
According to trademark law, if an appreciable numbers of reasonable buyers are
likely to be confused by the similar trademarks, then there is liability for trademark
infringement or unfair competition (McCarthy 1984, p. 44).
However, assessment of likelihood of confusion is not only done in settling
disputes regarding trademark infringement but also done in the progress of
acquisition of trademark protections. More specifically, it is conducted in defining
trademarks distinctiveness on the relative grounds during the substantive
examination and/or oppositions and/or cancellations depending on national legal
system applied for trademark.
2.2 Distinctiveness of trademarks and likelihood of confusion
The likelihood of confusion is the risk that the public may erroneously believe
that the goods marketed under a trademark originate from the undertaking of the
owner of a senior mark or, as the case may be, an undertaking economically linked
to the latter. Such risk presupposes two cumulative conditions. They are that the
junior mark and the senior mark are identical or similar, and that the goods or
services covered in the application for registration are identical or similar to those in
respect of which the earlier mark was registered. If one of those conditions is not
satisfied, there cannot be a likelihood of confusion. Furthermore, the likelihood of
confusion will further depend on the degree of distinctive character or reputation of
the senior mark and the interdependence between the similarity of the trademarks
and the similarity of the goods and services involved. In addition, the likelihood of
confusion includes the likelihood of association (Paul Maeyaert and Jeroen
Muyldermans, 2013). The concept of likelihood of association is not an alternative
to that of likelihood of confusion but serves to define its scope. As a consequence,
where there is no likelihood of confusion on the part of the public, one cannot fall
back on there being a mere likelihood of association.
The likelihood of confusion must obviously be established in the mind of, or on
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the part of, the relevant public. Therefore, it is vital to determine the “relevant public”
both from a territorial perspective and in connection to the category of goods and
services. The relevant public for the assessment of the likelihood of confusion is
composed of users likely to use both the goods or services covered by the earlier marks
and those covered by the contested mark. The perception of the trademarks by the
average consumer of the goods or services in question plays a decisive role in the
global appreciation of the likelihood of confusion. The average consumer is deemed to
be reasonably well informed and reasonably observant and circumspect. However, the
diligent consumer processing on the interpretation of trademark information may result
in greater similarities between brands being observed by consumers. Highly motivated
consumers may evidence more brand source confusion than unmotivated consumers,
depending on the nature of the brand similarity presented, such as when brand names
share a common meaning. However, trademark information that is similar and easy to
process, such as sound, may have a significant effect on the judgments of low-
involvement consumers. The research also brings forward the suggestion that courts
need to consider not only the degree of care exercised by consumers but also the
interaction between degree of care and the type of trademark information (similar
sound, similar meaning). They are likely to be presented in a marketplace setting.
Trademark law focuses on the total commercial impression represented by two brands
(Kirkpatrick 1998). It is possible that in a marketplace setting, where factors other than
name may vary among brands, greater consumer care or involvement may result in a
lesser likelihood of confusion because more diligent consumers will notice more
differences between brands. The value of this research lies in the demonstration that
greater consumer involvement may also result in people noting similarities between
brand names that might otherwise go unnoticed under low-care/low-involvement
conditions. Furthermore, consumers expending less care might not experience greater
confusion if comprehension of the trademark similarities requires a level of cognitive
processing that does not typically occur under low-involvement conditions.
It is convincing to say that the question of trademark infringement is primarily
one of the psychology of consumers (Richard C. Kirkpatrick, 1998). The average
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consumer normally perceives a trademark as a whole and does not analyze its
various details. It entails that two trademarks, in general terms, are deemed to be
similar when they are at least partially identical in terms of one or more relevant
aspects, namely the visual, aural, and conceptual aspects (from the point of view of
the relevant public). While the likelihood of confusion must be assessed globally,
each visual, aural, and conceptual component must be analyzed individually. In
order to assess the degree of similarity between the trademarks concerned, it is
necessary to assess the degree of visual, aural, or conceptual similarity between
them and, where appropriate, to assess the importance that has to be attached to
each of these factors, taking account of the category or categories of goods or
services in question and the circumstances in which they are offered for sale. (Paul
Maeyaert and Jeroen Muyldermans, 2013). Similarity between trademarks has been
called the “most important consideration and the “seminal factor” in determining
likelihood of confusion in trademark infringement cases. (EUIPO, 2020)
The likelihood of confusion arising from similarity in the sight, sound, and
meaning of trademarks is related to the degree of care consumers employ when
making marketplace evaluations and decisions. Degree of care refers to the extent to
which consumers consider product information when making purchases, such that
they will be more or less likely to distinguish trademarks and other source-related
information. The current position of the courts is that the higher (lower) degree of
care consumers exercise when evaluating goods, the lesser (greater) is the likelihood
of confusion between similar trademarks. Despite their important roles in testing
allegations of trademark infringement, the relationship between the concepts of
similarity and degree of care is not precisely specified in the legal domain
(Kirkpatrick 1998).
2.3 Trademark identicalness and similarity
Trademarks are considered identical or similar to one another if the signs and
goods and services bearing those signs are identical or similar. Henceforth, in order
to assess the similarity of marks, the global appreciation of the visual, aural or
conceptual similarity of the marks in question, must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive and
10

dominant components. (EUIPO, 2020). In order to assess the similarity of the
phonetic similarity measurement of trademarks means to compare two words or two
sentences numerically (Kyung Pyo Ko, Kwang Hee Lee, Mi So Jang, and Gun
Hong Park, 2018).
2.4 Filling the gap
Identicalness and similarity emerging as a vital part of examination of trademarks draw
great attention from many institutions and researchers. Researches on trademarks are
plentiful. However, further studies on how to assess identicalness and similarity of
trademarks that lead to confusion to consumers is still needed, especially in Vietnam.
Henceforth, this research is hoped to fill a dot in the worldwide picture on trademark
identicalness and similarity examination in Vietnam.
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CHAPTER 3: RESEARCH METHODOLOGY
Qualitative research approach shall be used to conduct this research. Primarily,
it is exploratory research which is used to obtain an understanding of underlying
reasons, opinions, and motivations and bring forward insights into the problem or
helps to develop ideas or hypotheses for potential quantitative research, as well as
discover trends in thought and opinions, and dive deeper into the problem.
Qualitative research is different from quantitative which is used to quantify
attitudes, opinions, behaviors, and other defined variables and generalize results
from a larger sample population by generating numerical data or data that can be
transformed into usable statistics.
In this paper, qualitative research is chosen for several reasons. First of all, the
thesis aimed at providing a deep understanding and realization of regulations
regarding trademark identicalness and similarity in the practice of examination in
Vietnam. To that ends, qualitative research is a perfect choice. Moreover, in order to
gain insights in the said issues, diving deeper in the technical field of trademark
examination is needed. In additions, the object of research itself (identicalness and
similarity) itself is unquantifiable. Henceforth, qualitative research is appropriate
approach to the topic research.
Specifically, the qualitative methods of collecting data include desk-research in
order to collect documents and information on cases study and in-depth interviews. For
the first, it is hoped to enrich the picture of the examination practice with solid
theoretical background and in comparison with other countries. For the second, it helps
to dive into the insights of examiners who perform examination in person. There are
differences between qualitative data collection and quantitative data collection.
Quantitative data gathered by desk research and interviews can be transformed into
numbers for further analysis with a set of variables so that the patterns are uncovered.
Unlikely, qualitative data are non-numeric and processed by text analysis so as to
discover the insights of issues. Accordingly, the questions for qualitative and
quantitative interviews are different. For the former, interview questions are usually
unstructured or semi-structured and leave space for interviewee interactions and flows
of conversation. For the latter, interview questions are well structured with
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multiple choices and some open questions for interviewees to express their ideas. In
terms of sample, qualitative quota is small while quantitative needs to be large.
However, in the thesis, some statistics are collected and compared in order to make
the picture of the practice of examination in Vietnam more colourful.
On analysis data, both general research methods of social sciences and
humanities and specific research methods of legal science are applied. In terms of
former, they are historical, statistic, analytic-synthetic and descriptive methods. In
terms of the latter, they include regulation analysis, cases study discussion and
interpretation, and comparing laws. Those collecting and analysis methods shall be
presented in details.
3.1 Qualitative Data Collection
3.1.1 Data collection via desk research
Sources of information that is intended to be exploited for this dissertation
comprise of articles and pieces of research findings by Vietnamese and foreign
experts and researchers in intellectual property fields, guidelines and statistics
conducted and introduced by national and international intellectual property
institutions and organizations in order to build up the overall system of basic
concepts regarding trademarks, likelihood of confusion of trademarks and similarity
and identicalness of trademarks. Specifically, the main sources include Vietnam
National Office of Intellectual Property (IPVN), World Intellectual Property
Organization (WIPO), International Trademark Association (INTA), European
Union Intellectual Property Office (EUIPO), and other national offices of
Intellectual Property such as Japan Patent Office (JPO) and United States Patent and
Trademark Office (USPTO) database and publications. Another informative source
includes articles, books and other references
This method of collecting data has been popular for its tremendous advantages.
First, it provides a large-scale source of information, not only nationwide but also
worldwide scientific research findings shall be collected in order to draw out a bigger
picture of the same issue for comparison and self-reflection. Moreover, what have been
already found over the times are also inherited and analyzed and systemized
13

again. As a research, a comprehensive overview of the issue shall be conducted for
readers. In additions, secondary data is, nowadays, easier to access online thanks to
development of technology. Finally, desk research is quite cheap in comparison
with other data collection methods. Most of pieces of data are free to access to
public, some are free to members and those who registered. Only small percentage
of articles require payment. Moreover, one paid articles are willing to be shared by
the author if there is a contact via email. Henceforth, desk research is quite easy and
cheap to access and grasp.
However, desk research has revealed some disadvantages. First, since the
research findings has been proved for ages, they might be outdated and inaccurate
for the current rapid developing context. Due to the breakthrough of technology and
communications, the world has changing so fast in every perspective, including IP.
For instance, in the past, only visible trademarks were used for goods and services
to differentiate one’s from one another’s. However, trademarks have been evolved
to other forms such as sounds, smells, single colours, positions, short video clips,
and so on. Along with that, trademark infringement related to internet domain name
is an emerging issue which attract lots of attention in time being. Therefore, the
research conducted on simply traditional trademark infringement seems to not to be
timely and completely comprehensive despite of its undeniable contribution to
scientific fields. Second, the secondary data from previous researches is designed
for this research, which make it not totally suitable for the paper. Third, the data
might be biased and it is hard to know the information was collected is accurate. As
the result, in-depth interview shall also be conducted to gather information filling in
the gap that desk research leaves behind.
3.1.2 In-Depth Interview
In-depth interviews are chosen to collect primary data on the practice of
examining trademark identicalness and similarity with the aim of fulfilling the gap
that desk research left behind.
3.1.2.1 Designing interview questions
The interview questions are designed in the semi-structured format. Henceforth,
14

some questions are drafted by the thesis author before the interview and revised
after mock interview with two mock interviewees: a researcher at Vietnam- Japan
university and a trademark examiner at TEC. The pre-designed questions are
presented in Appendix I of the thesis in both Vietnamese and English versions.
During the time of interview, the researcher may ask more or skip some questions
depending on the conversation with interviewees depending on the flows of
conversations and time limitation of each interview.
3.1.2.2 Choosing sampling
Convenience sampling is chosen for this research due to several reasons. First,
it is easy for researchers to approach experts in the area, who are trademark
examiners, intellectual property policy makers and advisors because she is working
in the field of intellectual property or more specifically, trademark related issues.
Second, this type of sampling is time and cost effective thanks to the “convenience”
that the researcher enjoyed due to the geographical advantages.
The targeted interviewees of this research are mostly trademarks examiners
and some legal officers. The researcher shall get access to at least every two
examiners from each division of Trademark Examiner Center in Vietnam (TEC).
Moreover, TEC has five divisions, thus at least 10 examiners shall be involved in
the interviews. Other interviewees shall be those from Legal Division of IPVN.
3.2 Qualitative Data Processing and Analysis
For interviews, the “raw materials” including recordings and notes shall be
transcribed in Vietnamese and translated into English before coding.
Data collected via desk research and interview shall be coded into different
categories using Hyper Research or manually in excel files. Demonstration is given
as the following image and as in the image.
For analysing data, both general research methods of social sciences and
humanities and specific research methods of legal science are applied. In terms of
former, they are historical, statistic, analytic-synthetic and descriptive methods. In
terms of the latter, they include regulation analysis, cases study discussion and
interpretation, and comparing laws.
15

Historical methods are used to study the process of development of trademarks as
well as examining trademarks in Vietnam and other countries while statistic and
analytic-synthetic methods are utilized to draw out the continuously increasing demand
for trademark identicalness and similarity examination since 1982 until now.
The descriptive methods, together with regulation analysis, cases study
discussion and interpretation are applied in order to examine different aspects of
practical cases so that the picture on the practice of assessing identicalness and
similarity in Vietnam as well as support other methods.
The methods of comparing laws are also utilized in the research in order to find
out the similarities and differences between Vietnamese law and other countries’. As a
result, some lessons and experiences for Vietnam shall be drawn out.
16

Table 1: Coding references
Interviewee Questions Responses ( Vietnamese) Responses (English) Code
Examiner 1 Mức độ tương Để trả lời câu hỏi này thì có hai điểm cần To answer this question, there are two Confusingly
tự như thế nào được làm rõ: thế nào là tương tự và thế nào points that need to be clarified: what similar
thì được coi là là gây nhầm lẫn. similarity is and what confusion is Consumers
“gây nhầm Trước hết, nói về khái niệm “tương tự”. First of all, talk about the “similarity”.
lẫn cho người “Tương tự” trong thẩm định nhãn hiệu “Similarity” in trademark examination
tiêu dùng”? không phải là một biến số có thể định is not a measurable variable. But there
lương hay cân đo đong đếm được. Nhưng will still be criteria to assess.
vẫn sẽ có những tiêu chí để đánh giá. Cụ Specifically, the similarity of a mark is
thể là, tính tương tự của nhãn hiệu dựa based on: similarity in signs and
trên: tương tự về mặt dấu hiệu và tương tự similarity in goods and services. In
về mặt hàng hóa dịch vụ. Về chi tiết thì detail, we will consider afterward.
chúng ta sẽ xét tới. Next, what confusion is. Confuse
Tiếp theo, thế nào là gây nhầm lẫn. Gây whom, confused about what? Based on
nhầm lẫn cho ai, nhầm lẫn về cái gì? Dựa the functions of trademarks, the
trên vai trò của nhãn hiệu, nhầm lẫn ở đây “confusion” here is to confuse
là gây nhầm lẫn cho người tiêu dùng về consumers about the origin of goods
17

Thưa ông/bà,
vậy góc độ
của người tiêu
dùng được
xác định như
thế nào?
Thưa ông/bà,
nguồn gốc của hàng hóa dịch vụ.
Bây giờ hãy bàn về “tương tự gây nhầm
lẫn”. Để xác định mức độ tương tự gây
nhầm lẫn thì cần đứng trên phương diện
của người tiêu dùng.
Cụ thể như thế nào thì được xem là người
tiêu dùng thì không được quy định trong
Luật SHTT cũng như thông tư. Tuy nhiên,
khi thẩm định tính tương tự của nhãn hiệu
thì thẩm định viên phải dựa trên thực tế. Ví
dụ, người tiêu dùng mặt hàng ô tô sẽ tư duy
khác người tiêu dùng đồ ăn, thức uống, ví
dụ trà sữa hay snack chẳng hạn. Rõ ràng
mức độ quan tâm và nhận thức về nhãn
hiệu sẽ khác nhau. Vậy thì thẩm định viên
phải dựa vào hàng hóa, dịch vụ mà xác
định góc độ của người tiêu dùng.
Tất nhiên là các thẩm định viên, với nền
and services.
Now let's talk about “confusingly
similar”. To determine the level of
confusing similarity, it is necessary to
stand on the consumer viewpoints.
Specifically, what “consumers” are
defined is not regulated in the IP Law
as well as the circular. However, when
examining the similarity of trademarks,
the TEC examiners must rely on the
practice. For example, how consumers
of automotive goods think differently
from those consumers of food and
drinks such as milk tea or snack do. It is
clear that the level of interest and
perceptions of brands will not the same.
Thus, the examiners must act on the
basis of goods and services in order to
determine the angle of
18

nếu là như
vậy thì liệu
rằng các thẩm
định viên, với
vốn sống và
trình độ khác
nhau, liệu có
thể xác định
cùng một góc
độ người tiêu
dùng cho tình
huống tương
tự không?
tảng học vấn, thâm niên làm việc và vốn
sống khác nhau sẽ có chút khác nhau khi
nhìn nhận vấn đề này. Nhưng là một
trung tâm và đảm bảo tính khách quan,
chúng tôi cũng tự thống nhất các nguyên
tắc và tích cực trao đổi với nhau để có thể
có chung tiếng nói và kết luận đưa ra
thống nhất nhất có thể.
consumers.
Of course, the examiners, with different
backgrounds, work and life
experiences, will have different points
of view regarding this issue. But so as
to act an organization and ensure the
objectivity, we also stipulate our
common principles and actively
exchange our opinion with each other
so that we can have one voice and
common conclusions to as best we can.
19

CHAPTER 4: RESEARCH RESULTS
4.1 Position of trademark identicalness and similarity examination
In order to indicate the position of trademark identicalness and similarity
assessment in examining trademark in Vietnam, it is necessary to take a look on the
process on the procedure of how a trademark application is processed which is
illustrated in Figure 1.
Examination of identicalness and similarity is aimed at defining the
distinctiveness of a mark on the basis of relative grounds. Henceforth, it first started
when the initial substantive examination stage (6) is conducted. Specifically, the
assessment of identicalness and similarity takes place after the examiners have the
control marks available (which are the results of searching process in minimum sources
and other sources, and/or oppositions filed by third parties) and appears on the second
phase of substantive examination following the examination of distinctiveness on the
basis of absolute grounds. After examining trademark identicalness and similarities,
examiners shall inform the applicants of the results of examination process, which is
either notification of intention of granting a mark registration (9) or notification of
substantive examination (7). For the former, the contested mark is dissimilar to the
control marks and the assessment of identicalness and similarity for the contested mark
is considered to be done (unless there is opposition at the time). For the latter, the
applicants are notified that the contested mark is possibly identical or similar to the
control marks and the examiner shall wait for their responses for further assessment. If
the applicants have dissenting opinions backed by certain rationale, the examination of
trademark identicalness and similarity shall be repeated with more information. The
examiners and applicants shall exchange their argument until the argument and
evidence are strong enough to draw a conclusion on decision whether grant a mark
registration (10) or not (8).
In additions, identicalness and similarity of trademarks could be assessed in
the appeals to Director General of IPVN if the applicants do not agree with the
results of their mark examination.
20

As can be seen the steps conducted in (7), examining of identicalness and
similarity of the senior and junior marks shall be re-considered after receiving more
arguments and evidence from related parties. At this stage, the assessment can be
done by IPVN examiners or other competent authorities such as inspectors.
That process can be repeated one more time in the stage of appeal to Minister
of Science and Technology if the applicants do not satisfy with the decision of
Director General of IPVN.
Additionally, identicalness and similarity of trademarks can be taken in case of
lawsuits in which the decision of refusal of trademark registration by Minister of
Science and Technology do not keep up with the applicants’ expectation for final
decisions.
Another circumstance that identicalness and similarity of trademarks might
also be examined which does not illustrate in Figure 1 is the filing of invalidity of a
registration. The stage following publication of trademark registration Certification.
In a nutshell, assessment of trademark identicalness and similarity can be done
during the substantive examinations, oppositions, appeals, court, and invalidity
stages. However, in this paper, only examination of identicalness and similarity
during substantive examination on the basis of relative grounds is taken into
consideration although the regulations are the same and the practice of assessment
share a lot in common.
21

Figure 1: Procedures of processing trademark applications in Vietnam
5
4.2 Demand for conducting identicalness and similarity of trademark
examination in Vietnam
As discussed in 4.1, examination on identicalness and similarity of trademark
occurs in the stages of substantive examination (including oppositions and
applicants’ responses to notification of substantive examination results in case of
5Source: Intellectual Property Office of Vietnam, at http://www.noip.gov.vn/nhan-hieu
22

refusals), appeals to Director General of IPVN, appeals to Minister of Science and
Technology, and court, the demand for conducting examination on trademark
identicalness and similarity in Vietnam depends on the number of applications,
oppositions, appeals, and litigations filed in Vietnam. In this article, only statistics
on filed applications, oppositions, and appeals handled by IPVN are presented.
4.2.1 Numbers of filed applications
It is noticeable that both numbers of filed national trademark applications
and granted trademark certificates tend to increase continuously over the year
since Vietnam National Office of Intellectual Property was first founded in 1982.
The number of filed national trademark applications in 2019 only is 53,801
which is thirty-one times more than that in the period of 1982-1989 (1,721). The
amazing boost is the reflection of speed of growth and level of development of
Vietnam economy. The number also demonstrates the increase in public
awareness of importance of trademarks. Both national trademarks applications
filed by Vietnam nationals and foreigners have experienced incredible rises over
the times, which is solid evidences for the fact that Vietnam economic
development is pushed by both internal and external forces led by market-
oriented policies under government’s surveillance. In terms of granted trademark
certificates, it can be seen from Table 2 that it has been rapidly growing up for
thirty-eight years. Specifically, there are 341,343 certificates granted during that
periods. Only the number of 28,820 granted trademark certificates in 2019
outnumbers that one of 1,550 trademark certificates granted between 1982 and
1989 nearly twenty times. These vivid numbers are likely to help readers imagine
how exciting the markets in Vietnam have become after thirty-eight years.
23

Table 2
6
: Statistics on filed national trademark applications and
granted trademark certificates in Vietnam from 1982 to 2019
Filed national trademark
Granted trademark certificates
applications
Year
by the by the
Total
by the by the
Total
Vietnamese Foreigners Vietnamese Foreigners
1982-
716 1005 1721 380 1170 1550
1989
1990 890 592 1482 423 265 688
1991 1747 613 2360 1525 388 1913
1992 1595 3022 4617 1487 1821 3308
1993 2270 3866 6136 1395 2137 3532
1994 1419 2712 4131 1744 2342 4086
1995 2217 3416 5633 1627 2965 4592
1996 2323 3118 5441 1383 2548 3931
1997 1645 3165 4810 980 1506 2486
1998 1614 2028 3642 1095 2016 3111
1999 2380 1786 4166 1299 2499 3798
2000 3483 2399 5882 1423 1453 2876
2001 3095 3250 6345 2085 1554 3639
2002 6560 2258 8818 3386 1814 5200
2003 8599 3536 12135 4907 2243 7150
2004 10641 4275 14916 5444 2156 7600
2005 12884 5134 18018 6427 3333 9760
2006 16071 6987 23058 6335 2505 8840
2007 19653 7457 27110 10660 5200 15860
2008 20831 6882 27713 15826 7464 23290
2009 22378 6299 28677 16231 6499 22730
2010 21204 6719 27923 12313 4207 16520
6
Sources: IPVN annual reports
24

Filed national trademark
Granted trademark certificates
applications
Year
by the by the
Total
by the by the
Total
Vietnamese Foreigners Vietnamese Foreigners
2011 22402 5835 28237 15502 5938 21440
2012 22838 6740 29578 14976 5066 20042
2013 24656 6528 31184 14503 5156 19659
2014 26587 6477 33064 15378 5201 20579
2015 30476 6807 37283 14207 4133 18340
2016 34968 7880 42848 13672 4368 18040
2017 35520 8450 43970 15172 4229 19401
2018 37476 8893 46396 14492 4070 18562
2019 43647 10154 53801 22265 6555 28820
Total 442785 148283 591095 238542 102801 341343
A closer look at the picture of filed national trademark applications from
1982 until now is presented in Figure 3. As stated above, filed national trademark
applications in Vietnam has shown an upward trend. However, it has not been
equally and gradually rise, but the speed of growth differentiates from time to
time. Between the 1982 and 2000, the overall number of filed national trademark
applications increases slightly while those filed by Vietnamese and foreigners
both insignificantly fluctuates. These figures reflex the context of Vietnam at the
beginning of the process of economic transformation from centrally planned
economy into socialist-oriented market economy. National and multinational
enterprises and entrepreneurs pay more attention to developing Vietnam markets,
which is embedded in the number of filed trademark applications. Emerging as a
promising land, Vietnam attracts more and more investment in many industries
including intellectual property. This can be seen in the continuous increase of
filed trademark applications from 2000 until now (it is still hard to tell which will
be the peak of the trend). This partially reveals the growth of Vietnam market and
economy. However, those numbers do not represent the amount spending on
25

acquiring trademark protections as well as goods and services covered because
an applicant could register a mark for unlimited goods and services classified in
one or more than one, even forty-five classes within an applicant. It is not
difficult to realize that the complexity and/or value of a trademark application
filed in IPVN are magnified keeping up with the booming of industrial and
technological enhancement and globalization.
60000
50000
40000
30000
20000
10000
0
1990
1991
1992
1993
1994
1995
1996
1997
1998
1999
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
2013
2014
2015
2016
2017
2018
2019
1989
1982-
by the Vietnamese by the Foreigner Total
Figure 27
: Filed national trademark applications in Vietnam 1982-present
Figure 2 illustrates the registration certificates have been granted since 1982
until now. Similar to the numbers of filed trademark applications, the numbers of
registrations fluctuate times to times but have tendency of increasing. Noticeably,
the registrations granted to applications filed by Vietnamese nationals outnumber
those for marks filed by foreigners. The gap between applications filed and
registrations granted includes withdraw requests, refusals and others. Most of them
fall into the category of the refused. Moreover, the applications can be refused in
either the phase of formality examination or the phase of substantive examinations.
If the applications are refused during the substantive examination phase, it is,
however, impossible to point out how many applications have been refused partially
or totally on the basis of identicalness and similarity because IPVN has
7
26

not collected and edited the statistics on this matter yet.
Granted trademark certificates (1982-Present)
35000
30000
25000
20000
15000
10000
5000
0
1989
1990
1991
1992
1993
1994
1995
1996
1997
1998
1999
2000
2001
200
2
2003
2004
2005
2006
2007
2008
2009
2010
2011
201
2
2013
2014
2015
2016
2017
2018
2019
1982-
by the Vietnamese by the Foreigner Total
Figure 38
: Granted trademark certificates in Vietnam 1982-present
4.2.2 Numbers of third party’s opinions on the grant of protection titles
As from the date an industrial property registration application is published in
the Official Gazette of Industrial Property till prior to the date of issuance of a
decision on grant of a protection title, any third party shall have the right to express
opinions to the concerned state management agency in charge of industrial property
rights on the grant or refusal to grant a protection title in respect of such application
(Article 112, IP Law). In Vietnam practice of examination, third party’s opinions on
the grant of protection titles is so-called oppositions.
The numbers of third party’s opinions on the grant of protection titles of
intellectual property, including trademarks has experienced the increase over the
time. The oppositions on grant of trademark protection titles in particular has
been continuously rises in the past three years, which can be seen in Figure 4.
The tendency of increase reflects that public awareness and interests in trademark
have been enhanced.
8
27

1600
1400
1200
1000
800
600
400
200
0
2017 2018 2019 2020-(until 19/03/2020)
Number of oppositions
Figure 49
: Number of third party’s opinions on the grant of protection titles
filed in IPVN
There are many reasons for applicants to file an opposition of grant trademark
protection titles, one of which is trademark infringement caused by identicalness and
similarity. However, TEC, as well as IPVN have not conducted statistics on the
percentage of identicalness and similarity of trademark as an initiative for oppositions.
4.2.3 Numbers of appeals
Similar to numbers of oppositions filed in IPVN, numbers of appeals show
the public interest and awareness in trademarks. The numbers of appeals depend
on many variables, including trademark infringement caused by identicalness and
similarity, however, it is hard to tell to what extent identicalness and similarity
affects the number of appeals. Specifically, an applicant can file an appeal for
many reasons. For instance, they revoke IPVN decision on refusal of valid
application after formality examination. Another reason for an appeal is that
applicants would like to revoke the decision on refusal of a mark protection
because IPVN gets no response after three months since its notifications on
substantive examination results showing its intended refusal of protection. In
additions, an appeal can be filed because applicants do not satisfy with IPVN
decision on and its rationale for refusal of protection after times of exchanging
arguments and evidence on proving dissimilarity. It is interesting to observe that
the numbers of appeals vary years to years and it is, again, hard to know when
9
Data collected by the author via IPSearch – IPVN official database for TEC
28

numbers of appeal will climb to the peak as variant variables contributing to
numbers of appeal make it difficult to foresee. However, the number has reached
its top in 2019 for fifteen years and the year of introducing Vietnam Law on IP
has seen no appeal at all.
2019
485
789
2017 411
2015
469
534
582
2013 665
2011
701
513
683
2009
491
553
2007 240
294
2005 0
0 100 200 300 400 500 600 700 800 900
Number of appeals
Figure 510
: Vietnamese numbers of appeals from 2005 to 2019
4.3 Criteria for identicalness and similarity examination of trademarks
“A mark means any sign used to distinguish goods and/or services of different
organizations or individuals” (Article 4.16, IP Law). The definition specified in
Vietnam IP Law is similar to many other countries and institutions’ which indicates
that a trademark is composed of two main factors” a sign and a list of goods and
services bearing that sign. Henceforth, identical and similar trademarks are decided
by the said determinants, which can be seen in the following table:
Table 3:Trademark Identicalness and Similarity Definition
Sign
Identical Similar
Goods and services
Identical identical similar
Similar similar similar
10
Sources: Data collected by the author via IPSearch-IPVN official database for TEC
29

Trademarks are identical in the case of double identicalness or double
identity. Unlikely, trademarks similarity is found in one of three cases where
signs are similar and/or goods and services are similar. (Article 74, IP Law). This
regulation is quite similar to EU Law, specifically Article 8(1)(a) EUTMR stating
that “if it [the contest mark]11
is identical with the earlier trade mark and the
goods or services for which registration is applied for are identical with the
goods or services for which the earlier trade mark is protected”, which is
interpreted in EU guidelines for trademarks examination as: “Article 8(1)(a)
EUTMR clearly requires identity between both the signs concerned and the
goods/services in question. This situation is referred to as ‘double identity’”.
Consequently, in order to assess the identicalness and similarity of trademarks, it
is essential to examine the identicalness and similarity of signs and of goods and
services. However, only identicalness and similarity that leads to likelihood of
confusion to the consumers concern the examiners and examination process. This
is also mentioned in Art 18.20 of CPTPP, stating that:
“Each Party shall provide that the owner of a registered trademark has the
exclusive right to prevent third parties that do not have the owner’s consent from
using in the course of trade identical or similar signs, including subsequent
geographical indications, for goods or services that are related to those goods or
services in respect of which the owner’s trademark is registered, where such use
would result in a likelihood of confusion. In the case of the use of an identical
sign for identical goods or services, a likelihood of confusion shall be presumed”
The common commitment of eleven countries (Australia, Brunei, Canada,
Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam)
indicates that identical or similar signs used for identical or similar goods or
services that cause confusion to consumers shall be prevented. Vietnam also
confirmed that in its newly signed agreement - EU-Vietnam Free Trade
Agreement (EVFTA) under Art. 12.18:
11
Notes by the thesis author
30

“A registered trademark shall confer on the proprietor exclusive rights
therein. The proprietor shall be entitled to prevent all third parties not having his
consent from using in the course of trade:
(a) any sign which is identical with the trademark in relation to goods or
services which are identical with those for which the trademark is registered; and
(b) any sign which is identical with or similar to the trademark in relation
to goods or services, which are identical with or similar to those for which the
trademark is registered, where such use would result in a likelihood of confusion
on the part of the public”
Henceforth, the criteria for identicalness and similarity of trademarks may
include the following factors:
▪
Comparison of goods and services
▪
Relevant public and degree of attention
▪
Comparison of signs
▪
Distinctiveness of the earlier mark
▪
Global assessment of likelihood of confusion
▪
Any other factors
In TEC, examiners mainly focus on comparison of signs, comparisons of
goods and services, and the combination of these two factors. Relevant public
and degree of attentions as well as distinctiveness of the earlier marks might be
taken into consideration during the whole process. However, according to 10/10
interviewees who work as examiners at TEC, Vietnam IP Law has not stipulated
those factors yet and they are not specifically guided in Internal Guidelines,
which differs from EUIPO Guidelines. During the process of rights acquisitions
and protections, the claimants and executors perceive the concept personally.
Details on each criterion are presented one by one.
First of all, it is critical to study the concept of “consumers” before learning
the criteria because all of them are examined through the consumers’ lenses.
According the interviewees - legal advisor and trademark examiners, “consumers”
31

are “average consumers”. However, as it is not regulated in the law or other legal
documents. The examiners and executors perform their tasks base on the practice of
examinations, especially the goods and services. Consequently, how to define
“average consumers” is still a mist because there are many layers in defining
samples of “average consumers” and sometimes, the ways business runs in reality is
quite different from what an examiner can imagine. For instance, the good of
“cigarette”, its potential consumers include mainly: End-consumers - those buy
cigarette to smoke themselves; wholesalers - those buy cigarette at large amount
aiming at retailing; retailers - those buy cigarette for selling at retail store or grocery
store, teashop... For the first group, they can be of different level of awareness of
cigarette trademarks. First, they are regular smokers and loyal to only one or some
brands due to their income, favorites and so on. This subgroup is extremely sensitive
in realizing their favorite cigarette. Only a very minor variant in trademark will catch
their attention. However, they are professional in their favorite product line and
ignorant in the others. The other subgroup is irregular smokers who smokes
sometimes and are not loyal to any brands but making a choice base on convenience.
This subgroup’s awareness of cigarette trademarks is lower than the first one. For
the second, they are professional brands because they are bridge between the
producers and consumption market. They understand the products and consumers
very well. For third group, they can be categorized as the first group. One of
professionals and one of less professionals. For the first subgroup, they run
professional retail store which specialized in selling cigarette only. Like the second
group, this subgroup is highly proficient at brands. The other subgroup includes
many entities which can be grocery store seller, teashop seller...
whose know little about cigarette. They sell it together with hundred other goods.
This discussion has shown that there are different categories of consumers’ level
not to mention the general public. In additions, consumers perceive the
trademarks in a unique manner in several circumstances. The typical case
regarding cigarette is “555” trademarks. Vietnamese people usually recognise it
as “3 digits” as can be seen from the following images.
32

Henceforth, how to define “consumer” or “average consumers” need further
Guidelines that are not available at this time although TEC examiners, at present,
still put on the shoes of consumers while conducting their assessment.
Nonetheless, it depends on academic background and experiences of each
examiner – said by 100% interviewees.
4.3.1 Identicalness and confusing similarity of signs
Even though it is stated in Article 4.16, IP Law that “any sign” that can act
as trademarks, only “visible marks” are protected in Vietnam (Article 72.1) (in
accordance with the current law). The point is different from many developed
countries such as US, UK and Japan where marks of any form are protected. For
33

instance, in Japan, almost non-conventional marks such as three-dimensional
marks, even position marks and single colour marks are codified and registered.
However, Vietnam IP law shall be amended soon in order to fulfill its
commitments when signing the Comprehensive and Progressive Agreement for
Trans-Pacific Partnership (CPTPP) that entered into force on January 14, 2019
for Vietnam. Accordingly, other non-conventional types of trademarks such as
scents, sounds are also protected, which is stated in Art 18.18,
“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. Additionally, each Party
shall make best efforts to register scent marks. A Party may require a concise
and accurate description, or graphical representation, or both, as applicable, of
the trademark”
Nonetheless, in the time being, no applications for such nontraditional marks are
filed in Vietnam and only few are filed all over the world. Henceforth, this thesis
only discusses the identicalness and similarity of visible signs in accordance with the
current legal framework for the said issues which include Art 74.2 IP Law, Point
39.8 and Point 39.9 in the Circular No. 01/2007/TT-BKHCN of February 14, 2007
of the Ministry of Science and Technology, guiding the implementation of Decree
No. 103/2006/ND-CP of September 22, 2006 of the Government, detailing and
guiding the implementation of a number of articles of the IP Law regarding
industrial property (Circular) and further interpretation and guidance in IPVN
Guidelines on trademark examination which initiated and published in 1994 and
revised in 2010 (but not published yet). (Internal Guideline).12
Examining identicalness and similarity of signs is guided more specifically in
Point 39.8 in the Circular as Assessment of confusing similarity of signs sought
to be registered to other marks, which outlines three main matters covering
identicalness and confusing similarity:
12
Despite the fact that Internal Guideline 2010 has not been published yet, it is still used as guides for
examiners at present. Henceforth, the researcher still takes it into consideration as the common
understandings among examiners in the practice of examination
34

▪
Aspects needed to compare contested mark and control marks (1)
▪
When contested mark is identical to control marks; (2)
▪
When contested mark is confusingly similar to control marks. (3)
First of all, how “confusingly similar signs” is. In order to clarify the
language, the terms “similar” and “confusingly” must be made clear. For the
former, if one or combination of two or more of any aspects of the senior and
junior signs are “closely identical”, they are considered “similar”. The difficulties
in examining lie in “closely identical”. There is no quantitative measurement for
this criterion in any IP offices or organizations. How much “closely identical” is
enough for the junior signs to be considered to the senior signs? The answers can
be found in the second part of this instruction: leading to consumers’ confusion.
According to the interviewees, “confusing similar” is defined from viewpoint of
customers. For the latter, confusion happens in three cases: Consumers confuse
that contested and control marks are one; the contested mark is the control marks’
variant; contested marks and control marks have the same origin. This is simply a
repetition of Point 39.8c.(ii) in the Circular.
On (1), the aspects in need of examination includes structures, pronunciation,
meanings (contents) and forms of expression emphasizing the close relation with
identicalness and similarity of goods and services. The aspects are more detailed
instructed in Point 20 of IPVN Internal Guidelines. Specifically, “pronunciation”
are only for word signs while “structure”, “meaning (content)”, and “form of
expression” are applied for both figure and word signs.
Moreover, a sign can be composed of many components, which might be words or
figures or combination of both. Thus, when examining identicalness and similarity of
signs, signs will be examined as the whole. However, for complex signs, main parts
containing fanciful components such as invented words or figures will outweigh others
due to their better impressions on consumers. In additions, a sign may have
more than one main parts. For example, that is registered for
35

goods in class 07, 08, 09, 11, and 21 contains two main parts: verbal
and figurative . This principle is familiar
in both guidelines and practice of examining trademarks in many countries and
organizations, including Vietnam.
On (2), contested marks shall be considered identical to a control mark if it
resembles the control mark in terms of structures, meanings (contents) and forms
of expression. In other words, they are exactly identical (Point 39.8b Circular,
interpreted in Point 20.1 Internal Guidelines). The following invented example
shall illustrate this point.
E1.1 E1.2:
Sign E1.1 and E1.2 are self-evident that they share commons in structure
(VINACAFE), pronunciation (vi-na-ca-fe), meanings (specifically, it is easy to
understand that “vinacafe” is composed of vina-which usually stand for Vietnam,
meaning that the goods have been manufactured in or originated from Vietnam,
and café- which refers to the good of coffee and its substitutes. However, the
combination of these two factors create a distinctive word with no meaning at all)
and the forms of expression (Font of words, colours, disposition, etc of these two
signs are exactly the same.) Henceforth, it is here to say that these two are
identical signs.
It is quite obvious to realize the identical marks and it is here to say that the
consumers surely mistake one for another because the identicalness in signs prevents
customers from distinguishing any differences. In other words, in this case,
confusion occur undoubtedly. Confusingly similarity, on the contrary, needs further
instructions since there is no exactly rulers to which extent of similarity is
36

considered to cause likelihood of confusion. Therefore, detailed interpretations
on comparison of sign similarity are provided in Point 39.8c of the Circular.
On (3), according to Point 39.8c in the circular, the contested mark is
regarded as confusingly similar to the control if it falls into one of the following
cases. First, the contested mark is considered similar to the control mark in terms
of structure or/and meanings or/and content or/and pronunciation or/and form of
expression, which results in the fact that consumers misjudge these two signs as
one or one is a variation of the other or these two signs of the same origin.
Second, the contested mark is regarded as confusing similar to the control if it is
merely a transliteration or translation of the control mark in case the control is a
well-known mark.
For the first one, the contested mark is considered similar to the control
mark if it resembles at least one aspects of the controls as long as that aspect is
prominent enough to make consumers confused. For instance, in the case of
examining application no. 4-2005-08986, the examiner had presented two
controls based on similarity of words.
(contested mark) (E2.1) (control mark) (E2.2) (control mark) (E2.3)
In this case, the contested mark is purely character sign and the control marks are
composed of two primary elements which are verbal and figurative ones that share
equivalent roles in deciding the distinctiveness. It can be seen from sign (E2.1),
(E2.2), and (E2.3) that nearly whole (E2.1) sign is contained in the others. In other
words, the sign (E2.1) and the first dominant elements (namely characters) of signs
(E2.2) and (E2.3) are mostly identical in terms of pronunciation, spelling,
disposition, and even significance. Pronunciation, in this case, is one of the most
decisive factors that help customers to distinguish the origin of goods and services.
From the customers’ point of view, it is quite easy to mistake that the contested
37

sign is a simpler version of the control. Therefore, (E2.1) is confusingly similar
to (E2.2) and (E2.2). It is noticeable that (E2.3) has filing date later than the
contested mark, which seems to go against the principle of first to file.
Nonetheless, these two registrations are granted to the only holder and (E2.3)
certificate was granted due to priority acquired via (E2.2), inferring that (E2.2)
and (E2.3) are treated as collective marks. Here comes another example: the
forms of expressions of (E3.1) and (E3.2) are totally different. However, (E3.1)
has the same meanings with both the figure and word creating (E3.2).
(Contested mark) (E3.1) (Control mark) (E3.2)
Structures
11 out of 13 interviewees agree that structure and pronunciation are two
most influential factors on consumers’ perceptions. As a result, the structural
similarity also plays important role in shaping trademark confusing similarity,
which makes assessment of similarity in structure more crucial.
The structural similarity will appear if the structure of the sign contains the
whole or main part of the control. However, not all cases will form the similarity
which leads to confusions. It depends on other parts besides the main parts to come
to final decisions (Point 20.2.2, Internal Guidelines). First, the key points to decide
whether or not the signs are structurally similar lie in the main parts/elements or the
dominant elements/parts. The main part is the significant of the sign that is decisive
to its distinctiveness, meaning that the consumers rely on the main part/dominant
elements to distinguish a mark from one another. Normally, for polysyllabic signs or
really long signs, different parts of signs have different values. The part with high-
level distinctiveness shall be the main part, the rest with lower level distinctiveness
shall be the secondary part. The main part usually
38

is unique with special pronunciation (normally are invented words). Specifically, the
identicalness in main parts usually leads to signs’ similarity if secondary parts, more
or less, have descriptive characters or have low-level distinctiveness (including the
case that consumer low-level distinctiveness because of often use, even in case that a
sign is contained in the other one, and if the senior sign constitutes the main part of
the junior; however, it is extremely hard to case similarity if the senior sign is the
secondary part of the latter. Noticeably, secondary parts cannot cause similarity by
themselves but they may increase level of similarity when stand together with
similar parts. This point could be enlightened up by the facts that many marks
starting with NEO have been granted the title of protections. Followings are some
examples collected by the writers.
(E4.1) (E4.2) (E4.3) (E4.4)
It is obvious that those four signs are dissimilar to one another although the share
the prefix “NEO” in common regardless of the fact that they are followed by a
hyphen or not. NEO is actually a Latin word which is used to refer to something
“new” or “novel”. In Vietnamese, there is an equivalent term with same
meanings and also appears in the first, which is “TÂN” (for instance, THIÊN
ĐỊA and TÂN THIÊN ĐỊA. The underlined words are root and TÂN is a prefix,
which means “new”). “NEO” and “TÂN” are treated exactly the same in the
process of examining trademark identicalness and similarity. As shown in
example 3, “NEO” does not lead to similarity among (E4.1), (E4.2), (E4.3), and
(E4.4). Similarly, the marks started with the prefixes of “SUPER” or “GOLD”
also have also received the same treatment.
(E5.1) (E5.2) (E5.3)
Like “NEO”, “SUPER” is a prefix lacking of distinctiveness. It does not affect the
registrability of a trademark when it comes with distinctive dominant elements
39

such as “CLIQUEY” (E5.1), “Shirley” (E5.2) and “SUDZER” (E5.3). These
invented words are still fancy despite containing such a “weak” element as
“SUPER” in their verbal structures.
(E6.1) (E6.2) (E6.3) (E6.4)
MARIO is the main part of (E7.1), (E7.2), and (E7.3) while SUPER, NEO and
GOLD are prefixes with low level of distinctiveness. The combination of fanciful
word “MARIO” with these three “weak” prefixes create similarity with great
likelihood of confusion.
(E7.1) (E7.2) (E7.3)
SUPER MARIO NEO MARIO GOLD MARIO
In this example, “Club” is considered as a low-level consumer distinctiveness
because it is used very often in the market. Henceforth, the existence of “CLUB”
in (E8.1), (E8.2), (E8.3) as a secondary parts of the signs does not lower the
distinctiveness of the main parts, namely “LÝ”, “SAVOUR”, and “HAVANA”
and these three signs are still dissimilar.
(E8.1)
40

(E8.2)
(E8.3)
Due to its importance to the creation of trademark distinctiveness, the main
part (or original word) may be used as grounds to form a trademark series of the
same owner. This is made used by large conglomerates in order to expanding
their brands in the market. A typical example is Vingroup.
41

(E9.1) (E9.2) E9.3)
(E9.4) (E9.5)
Consequently, if a sign of one person has main part which is identical with main
part of a trademark series owned by the other person and causes confusion of
consumers about the trademark owner, this main part may be words and/or
images. For instance, “VINFARM” filed for the goods of “organic meat and
beef” in class 29 by a certain Ms. Rose is highly likely to make consumers
believe that VINFARM is also owned by VINGROUP.
(E10.1) (E10.2) (E10.3)
FURY FURYMATE FURY BELLEY
(control mark) (Contested mark) (contested mark)
Assuming that FURY is the senior mark and FURUMATE and FURY BELLEY are
the junior marks. FURY is an invented fanciful word with high level of
distinctiveness. The whole senior sign forms the main of the other juniors. For
(E10.2), a dominant element (FURY) is combined with the secondary part (MATE).
For (E10.3), the sign is shaped by two primary parts, namely FURY and BELLEY
which share equivalent significance in creating distinctiveness. However, between
(E10.1) and (E10.2) is still found the similarity. So is between (E10.1) and (E10.3).
Another example presented to clarify this pointed is the below
42

invented one.
(E11.1) (E11.2) (E11.3)
CLUB MELLISSA CLUB GEOFREY CLUB
(control mark) (Contested mark) (contested mark)
Supposed that those marks are registered for the goods of condoms. Even the
whole senior mark forms the junior ones. However, it only plays secondary parts.
The similarity between (E11.1) and (E11.2), as well as between (E11.1) and
(E11.3) are hard to cause.
In case that signs are of words that represents human names, the similarity in
structures will be examined based on the differences in cultures, namely western and
eastern. On one hand, names of European – American normally include names (first
name) and surnames (family name) in which the number of first names is very few
while the number of surnames is more diversified. Therefore, in general, surnames
are more unique than first names, so in case of identical surnames may usually lead
to the similarity. For instance, (E12.1) and (E12.2) share identical family name,
therefore, the similarity between them is quite high while the same first name does
not affect dissimilarity of two marks (E13.1) and (E13.2).
McConnell
Robert McConnell
Robert
Robert McConnell
(E12.1)
(E12.2)
(E13.1)
(E13.2)
On the other hand, names of Vietnamese people (and names of people in some other
countries) the limited number of surnames and diversified number of first names.
Thus, first names (including middle names) have higher distinctiveness. In other
words, if surnames are identical, the ability of similarity is low; in contrary,
43

first names (including middle names) are identical normally lead to the confusion.
For example, (E14.1), (E14.2) and (E14.3) all have the on surname as “Nguyễn”
(which is already underlined), but differentiate one another by first name (nil-
Phương-Linh respectively). Contrarily, (E15.1) and (E15.2) are considered similar.
Nguyễn
Nguyễn Phương
Nguyễn Linh
Phương Linh
Nguyễn Phương Linh
(E14.1)
(E14.2)
(E14.3)
(E15.1)
(E15.2)
However, if a full name consists of only two words of which one word is
different, the distinctiveness is still capable. Take the following invented
examples into consideration.
Thuận Phát
Đức Phát
Phan Phát
Hoàng Phát
(E16.1)
(E16.2)
(E16.3)
(E16.4)
In the case of (E16.1) and (E16.2), the first names are common “Phát” while the
middle names are different (Thuận) and (Đức), the contested mark is considered
dissimilar. In the same manner, (E16.2) and (E16.4) has the same concludes but
for the distinctiveness resulted from the family names.
Pronunciation
As stated in previous paragraph, pronunciation is considered one of the most
important determinants on consumers’ impression of trademark. So are similarities
44

on pronunciation to examining trademark identicalness and similarity.
Aural similarity will cause in one of the following case. First, signs which
are in different writings but are the same when pronounced by one of popular
languages in Viet Nam, such as (E17.1) and (E17.2)
TeeMoor
TeaMore
(E17.1)
(E17.2)
(E17.1) and (E17.2) have differences in spelling, however, they are pronounced
exactly the same. Although English is not national official language in Vietnam,
these words are considered common and scarcely pronounced different because
Vietnamese also use Latin characters to record their sounds. Unlike Example 24
where the meanings play key role in creating dissimilarity, “TeeMoor” has no
specific sematic meanings, but simply owns simply phonetic features. On the
other side, “TeaMore” is an invented word consisting of “tea” and “more”-both
have their own meanings; however, the combination does not present something
semantically special. Henceforth, in this example, pronunciation is the dominant
elements that form similarity between two word signs. Second, two signs in
Vietnamese language that are identical in characters but different in accents shall
be considered as similarity. For instance, in the cases of (E18.1) and (E18.2)
SAO VANG KIM HUNG
SAO VÀNG KIM HƯNG
SÁO VÀNG KIM HÙNG
(E18.1) (E18.2)
The Internal Guidelines introduced the entry special for Vietnamese only
because of its own characters. Letters and tones can bring different semantic
meanings to the word signs. However, the resemblance in the arrangement of letters
and their sounds may lead consumers’ to confusion. Nevertheless, there are
45

dissenting ideas from a group of examiners that this entry is not suitable because
the sign of pure Latin letters (without Vietnamese tones and some special vowels)
may enjoy broader scope of protections while it is not worth because as a native
speaker, Vietnamese people are capable to distinguish the differences. For
instance, in (E18.1), “SAO VANG” is purely Latin letters which can present any
of the following words in Vietnamese letter: SÁO VÀNG (GOLDEN
STARLINGS- a kind of bird), SÁO VANG (A SINGING STARLING or A
GOOD FLUTE), SAO VÀNG (GOLDEN STARS). Due to its diversity in
vowels and tones, Vietnamese words are varied in meanings, which could be
omitted to a simple Latin record. This controversial area is still in need of further
studies, nonetheless, it is undeniable that the consumers’ viewpoint must be taken
into consideration. Third, two signs that are different in writing but have same
pronunciation of people in large region of Viet Nam shall still be considered as
similarity. Some illustration listed in the Internal Guidelines are:
THÀNH LIÊM MINH NHẬT NGỌC CHINH HẠNH PHÚC
and and and and
THÀNH LIM MINH NHỰT NGỌC TRINH HẠNH PHƯỚC
(E19.1) (E19.2) (E19.3) (E19.4)
The differences in pronunciation caused by the local accents, mostly represents
the differences between the North and the South of Vietnam. For instance, “Minh
Nhật” is usually pronounced by the North like Hanoians while “Minh Nhựt” is
the way the South like Hochiminh people often pronounce.
Forms of expression
If pronunciation is most helpful for consumers to differentiate two
trademarks based on sounds, forms of expressions perform trademark functions
by visually impress consumers. For forms of expressions, the signs are examined
as the whole. The positions, colours and stylization can augment considerable
differentiation to signs, even though they contain only descriptive. A typical
46

IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM

IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM

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