Legal consequences of the trademark with origin in Vietnam and designation EU registered under Madrid system after Brexit

After 47 years being a member of EU, UK officially left EU on January 31, 2020. This is an almost half of century relationship, thus, there would be a number of arising confusion as well as the issue which is in need of negotiation to complete the process including trademark registration with origin from Vietnam.

 

Trademark protection in Vietnam

UK is the member of Madrid system from Dec 1st, 1995, concurrently, EU has also officially become a member of this system since Oct 1st, 2004.  According to the international trademark searching Madrid Monitor, there are 292 Vietnamese trademarks registered internationally designated EU which include both the trademarks during the examination period and granted certificate.

How is the fate of these trademarks after Brexit?

According to the guidance from Intellectual Property Office of UK (“IPO”), the owner or applicant of the trademark which submitted according to the Madrid system and designated EU need to note the following points:

International trade mark registrations protected in the EU (“EUTM”) under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021. According to Brexit Agreement, IPO will create a system: “comparable UK trademark” in relation to each international (EU) trade mark designation. In case EUTM are still in the examination period, the applicant has the right to register that exact trademark in UK in the transition period from January 1st, 2021 to September 30th, 2021. In details:

Firstly, to the trademarks which has been protected, UK will:

-Be recorded in UK registration system;

-The recorded trademark will have the same legal status as the trademark protected according to UK law;

-Keep the submitting of the application as EUTM;

-Keep the priority date according to the Madrid system or seniority date according to UK law;

-Be recognized as independently existing trademark according to UK law and may be challenged, assigned, licensed or renewed separately from the original international registration.

However, it is noted that: (i) the Comparable trademarks will be created at no cost to the holder of the international trademark, except a minimal administrative burden will be placed upon the rights holder (ii) the applicant will not receive the trademark certificate, however, they could be searched for the trademark at GOV.UK.

Secondly, for the EUTM which are still in examination phase:

In case EUTM are still in examination phase, on January 1st, 2021, the applicant has the following rights:

-Apply the trademark application in UK for EUTM during the transition, nine months from January 1st, 2021 until September 30th, 2021 as mentioned above;

-Keep the earlier filing date as EUTM;

-Enjoy other international priority claim effecting on EUTM in accordance with the seniority claim according to UK law.

However, it is noted that when applying the EUTM during the examination phase according to the UK trademark system then:

-The trademark applied in UK must be the same with the trademark in EU application which submitted previously;

-Goods/services required to protect of the trademark must be the same or included in the scale of EUTM.

In case the application submitted into UK does not satisfy the above criteria, the application would not enjoy the priority date or the priority claim of EUTM.

The application after having been submitted within that period and satisfies the criteria will be deemed as UK application and be examined according to UK law.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP. We routinely match inventors with experienced IP attorneys for a free consultation on our platform and offer a money back guarantee. 

 

 

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What is a Trademark?

A trademark is a type of intellectual property. A trademark also commonly known as a trademark, trade-mark or a mark. A trademark consists of a recognizable sign, design, or expression which identifies products or services of a particular company and helps in distinguishing the products from those of others. The symbols ® ‘the registered trademark symbol’ and ™ ‘the trademark symbol’ are generally used to indicate trademarks; the former is only for use by the owner of a trademark which is registered.

Register trademark in Vietnam

The trademark can be owned by:

-An individual,

-Business organization,

-Or any legal entity

When a trademark is registered, it confers an exclusive right to the owner to use the registered trademark. Thus it can be said that the trademark can be used by his owner exclusively, or it can be used by a person licensed for use in return of valid consideration.

Complete assignment

In this type of assignment, all the rights are completely transferred by the owner to the assignee.

The assignee has got all the rights including rights such right to further transfer and right to earn royalties.

Partial assignment

In this type, the assignment of the trademark is made to the assignee, but with respect to only some of the goods/ services, the transfer of ownership of the trademark is restricted to specific goods or services only. The rights are not transferred completely.

Assignment with goodwill

In this type of assignment, there is also a transfer of goodwill of the product with the trademark. In this, the valuation of goodwill is calculated differently in the agreement.

Assignment without goodwill

 In this type of assignment, goodwill of the product is not transferred along with the assignment of the trademark; in this, the owner of the brand restricts the rights of the assignee and does not allow him to use such trademark of the brand for the products being used by the assignor. Such an assignment is also referred to as a gross assignment.

When can a Trademark be assignerd?

A trademark can be assigned in the following situations

The Death of the Trademark Owner

Whenever the owner of the trademark i.e. the assignor dies, its ownership is passed on to the successors of the previous owners in a will or intestate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

Sale of Business

 Intellectual properties are assets for the company, just like all properties, even the trademark can be sold with the company. Provided it is registered under the company’s name. If a party acquires trademark rights of a company by acquiring a business with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.

Change of the owner of businesses

When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.

Change in Form of Business

Whenever a business plan on changing its form of business or its business structure an assignment is a boon for those businesses.

If you are looking for an experienced trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark.

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What is the difference between a brand name and trademark?

We often hear the term "brand" used interchangeably with the term "trademark". But there is a legal difference between the two words.

A trademark is a mark that legally represents something, usually a business, by their goods or services. A brand name, however, is the name that a business chooses for one of their products. A brand identifies a specific product or name of a company.

Register trademark in Vietnam

A "Trademark" includes any device, brand, make, label, name, signature, word, letter, numerical, shape of goods, packaging, color or combination of colors, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others.

One might ask, “What make of car do you drive?” and hear the answer as “A Ford®.” Or, “What brand of detergent do you use?” “Oh, I use Tide®.” Both Ford and Tide are trademarks, Ford cars can be both a brand and make, but Tide is not a make. You can use just the word "Ford" as a brand. A brand can also become a trademark. Ford started making cars in 1903, and started using the now famous oval Ford logo in 1907. But it was not until 1909 that the brand name Ford was registered as a trademark and today the brand name Ford is now a worldwide trademark.

In reality, very few people, other than lawyers, who hear you use the word "brand" rather than "trademark" would stop and tell you that you used the wrong word.

Source: Quora

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What are The Advantages of Trademark Registration?

A Trademark is essentially a brand name. It may comprise of a word, name, combination of words or names or a symbol used to identify and also differentiate goods/ services produced/ provided by one seller from those offered by other sellers. It is also used to indicate source of the commodities.

Trademark in Vietnam

Trademarks allow you to protect your company’s name, and to specify which types (classes) of goods and services your company’s trademark should be applied to. For example, coffee mugs vs. outdoor apparel. It’s important to point out that trademarks are intangible assets, and can be bought, sold or licensed.

Other Advantages of Registering a Trademark:

-It grants the right to use the registered trademark symbol: ®;

-It grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary damages;

-It acts as a bar to the registration of another confusingly similar mark;

-Ability to have the customs service block the importation of goods bearing an infringing mark; and

-It may serve as the basis for an international trademark application.

If you’re considering registering for trademarks then you should hire a competent Trademark Lawyers in Vietnam who will make sure everything is protected from the get-go. Feel free to visit ANTLawyers.vn for this. We’re a legal marketplace that makes it easy for entrepreneurs to hire and work with quality, vetted lawyers.

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Can a trademark expire?

Once your trademark is 10 years old, it would expire. This is a primary caveat with trademark; it only lasts for about 10 years. Once the 10 years have come close and you haven’t applied for renewal or restoration, the expiration process begins.

Time limit of trademark protection extension

To that end, it is definitely important for you to either renew or restore it:

1. Trademark renewal: Application for the trademark renewal has to be applied 6 months before the expiration date has come near. Once this period is not taken heed to, the trademark shall expire and you are only left with the next measure.

2. Trademark restoration: trademark restoration takes place after the expiration date is over. How is this option? The answer is a pretty simple one! Once the trademark has been expired, the most definite and the logical way to make sure that you still have access to it are through trademark restoration. Once you apply for the restoration, you would go through the same strides as you went through when you applied for trademark registration for the first time. You would go through the initial application. This application might be objected against by the department, and you would have to file a reply for it. This restoration process also involves putting the trademark in the journal for about 4 months. Once the mark is restored, you would again receive a certificate from the department that implies the same.

To that end, it would be better if you go by the former part of renewal and don’t wait for the restoration process.

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

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Is it necessary to hire a lawyer when applying for a trademark?

The basic answer is No. Applying for a trademark can be done on your own initiative and there are no requirements that a lawyer be involved on your end.

 Trademark registration services in Vietnam 

But, to be honest, it really would be in your best interest to speak with an attorney first. Of course no one wants to hear this, and I hate to be "that guy." However, obviously you care about your company, and you want to make sure it is in the best hands.

Particularly when dealing with IP issue, there are certain fears/concerns about protecting all of your rights. Of the many reasons to hire a lawyer for a Trademark (TM), here are few...

1. The process can be complex and lengthy. You are most likely focused on developing your company and are probably working full-time in that capacity. Taking up this task on your own can really limit your ability to focus on your company.

2. The research and background work required for TM's is also exhaustive and can be tricky. Although you may be able to do this yourself, there is a chance you might make a mistake, overlook something, or simply take a path that is not the best for your company. A lawyer is a safe-guard against these problems.

3. Hiring a lawyer who is business savvy and well-versed in your particular industry cannot only help you with your Trademark (TM), but can also develop a strong business plan moving forward. IP is a particularized field, and getting a lawyer on board who has helped similar clients in the past with IP issues can make a HUGE difference for your business.

If you do decide to go it alone, here is a link to the US TM and Patent Office website; How do I file a Trademark Application? They give you some direction and guidance, as well as links to the relevant documents/forms you will need.

ANT Lawyers -  A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

We assist our clients in all steps of the prosecution phase of IP management.

Source: Quora

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When and How to Register Trademark to Protect IP Rights

Considering trademark registration activities, the subject holder must comply with certain conditions to fulfill its trademark registration rights.

According to Article 13.1 Law on Intellectual Property amended in 2009:

-Organizations and individuals may register marks to be used for goods they produce or services they provide.

Register trademark in Vietnam

-Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.

-Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

-Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

-Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: i) This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; ii) The use of this mark causes no confusion to consumers as to the origin of goods or services.

If the subject falls into one of the cases mentioned above, they will have the right to register the mark at the National Office of Intellectual Property. After the subject condition has been met, consideration should be given to the condition that a mark can be protected as a trademark. In particular (i) It is a visible mark in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; (ii) It is capable of distinctive goods or services of the mark owner from those of other subjects.

However, there are some exceptions even when the mark satisfies those two conditions. For example, marks identical with or confusingly similar to national flags or national emblems; or marks identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations shall not be protected as a trademark.

In order to register for protection of a trademark, the registrant should pay attention to the subject matter and the conditions for the trademark to be protected in order to avoid being refused at the registration authority because of the failure to meet the conditions for the subject or the conditions for protection.

IP Attorney at ANT Lawyers – a Law Firm in Vietnam, a licensed IP agent in Vietnam shall be providing the advice to client to help the clients evaluate and file registration for trademark, patent, copyright and other IP related services

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How can I avoid trademark infringement?

Avoiding a trademark infringement from occurring is crucial to building up trust in the market. There have been instances where brands have unknowingly infringed on other brands due to a variety of reasons. The best way to avoid infringements is to compare the trademark, study related products and services, checking the strength of the mark and learning from the existing confusion among consumers, all of which we have briefly covered in this article to help you avoid infringing upon an already existing mark.

Trademark registration services in Vietnam  

To avoid trademark infringement, the company needs to work on the following before carrying forward the process of trademark registration or usage in the market.

1. Comparing the Trademark:

There should be a thorough research of the trademark that is decided to be used to avoid confusion or clash with other existing marks.

The Trademark database should be well researched and if similar marks are found, then one needs to analyze the features that can cause infringement like appearance, sound, concept, etc.

2. Study related products and services:

Herein, the comparison of actual product and services are done and not the class number of registration to find out the identical features that might lead to infringement.

3. Check Strength of the Mark:

This is another factor that determines the level of strength of the trademark which varies from generic, suggestive to arbitrary.

The lesser is the strength; it is more likely to be infringed.

4. Learn the existing confusion among consumers:

At times, you will see people calling up a wrong company for a similar product, it is then, that you need to realize that the trademark is directing to confusion and misguiding the consumers.

This might lead to infringement, and to avoid that, precautions are to be taken to curb such events or situations.

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Why Trademarks Are So Important

Trademark is a sign for consumers to identify the goods or services of each company from those of others.

Trademarks are an important part of client company’s competitive edge. As consumers, our purchasing decisions are constantly influenced by trademarks. As business people, we should have a better understanding of why trademarks are so important to effective commerce. Trademarks are also used as a way of protecting consumers. When businesses are responsible for any products or services bearing their trademark, they tend to take more pride in products. To maintain a good reputation, trademarked companies will often work harder to provide quality services and products. Reasons 

Trademark registration services in Vietnam  

 Trademarks Are Important to Your Business.

- Trademarks make it easy for consumers to find you.

- Trademarks help prevent marketplace confusion

- Trademarks are a very economically efficient communication tool

-Trademarks are your most enduring assets.

-Trademarks support stronger sales volume, stronger margins, and can provide price maintenance legally

-Trademarks are relatively inexpensive to protect

-Trademarks allow businesses to most effectively utilize the Internet

-Trademarks are very effective against unfair competition

1. Trademarks make it easy for consumers to find you.

◦ Trademarks help you distinguish your products and services from those of competitors and help identify you as the source.

◦ Trademarks indicate a consistent level of quality of your products and services.

◦ Awareness of your brand and the goodwill embodied in your trademark can often take decades to establish.

◦ Aggregate cost of advertising, promotion, marketing, and sales efforts can easily reach into tens of millions or even billions of dollars, depending on the product/service.

◦ Differentiating your product/service from competitors is increasingly difficult to achieve, especially over a protracted period.

◦ Trademarks are the most efficient commercial communication tool ever devised to:

• "cut through the clutter";

• capture the consumer's attention; and

• make your products/services stand out.

2. Trademarks help prevent marketplace confusion

◦ Trademarks protect the consuming public by preventing confusion as to the source of goods or services.

◦ If the product made under a brand turns out to be defective, consumers have accurate information about the source of a product and can return it to the manufacturer or supplier for a refund.

◦ Trademarks give consumers the ability to protect themselves by relying upon known brands of products or services.

◦ Trademarks provide consumer convenience by allowing consumers to identify (by word, logo, slogan, package design, or other indicators of origin) which product or service they would like to purchase or to avoid purchasing.

◦ Trademarks provide consumer convenience by allowing consumers to base their purchasing decisions on what they have heard, read, or experienced themselves.

◦ Trademarks motivate companies to provide a consistent level of quality, helping the consumer to decide whether to purchase a desirable product or service again or to avoid an undesirable one.

3. Trademarks are a very economically efficient communication tool

◦ Trademarks dramatically reduce the costs of decision-making by allowing consumers to rapidly select the desired product or service from among competitive offerings.

◦ Trademarks can wrap up in a single brand or logo intellectual and emotional attributes and messages about your:

• Company;

• Reputation;

• Products and services; and

• Consumers' lifestyles, aspirations, and desires.

◦ Trademarks can work effectively across borders, cultures, and languages.

◦ Famous marks can be recognized as brands even when the native population speaks a different language and reads a different alphabet (i.e., the McDonalds "arches" logo, the NIKE "swoosh" logo).

4. Trademarks are your most enduring assets.

◦ Trademarks are one of the few assets that can provide you with a long-term competitive advantage.

◦ Trademarks are usually the only business asset you have that can appreciate over time.

◦ Trademarks are leverageable - they provide value beyond your core business, and can pave the way for expansion (or acquisition, if desired) of your business.

• Brand Expansions:

• KELLOGG'S - from "ready-to-eat cereals" to "snack bars and breakfast bars"

• ARMANI - from "runway apparel" to "perfumes and eyewear"

• VIRGIN - from airline services to entertainment media and carbonated drinks

5. Trademarks support stronger sales volume, stronger margins, and can provide price maintenance legally.

◦ It is often difficult to see significant differences among competing products.

◦ Your brand can be the critical factor in driving the consumer's purchase decision.

◦ The price variance among competitive offerings can also be substantial, often by 100% or more in the same setting, such as a newspaper. Once again, your brand can make the difference.

6. Trademarks are relatively inexpensive to protect

◦ Once you have successfully registered a trademark, it has a potentially infinite lifespan with the filing of renewals. Renewals can be filed every 10 years after registration in the U.S. so long as the mark is being used in commerce (there are certain exceptions to this use requirement that will not be discussed here).

• COLT (first registered in 1889))

• QUAKER (first registered in 1895)

• PEPSI-COLA (first registered in 1896)

• MERCEDES (first registered in 1900)

◦ Trademarks share attributes with other forms of property, like real estate, as they can be:

• Bought and sold ("Assignments")

• In the acquisition of a business

• In the acquisition of a specific product line

• Pledged (as security, like a mortgage)- to secure loans to a business

• Licensed (like renting or leasing)

• Character merchandising

• Sports endorsements and sponsorships

• Co-branding promotions, sweepstakes, contests.

7. Trademarks allow businesses to most effectively utilize the Internet

◦ Trademarks are often the "top-of-mind" address for an Internet user seeking information about a company and its products/services.

◦ Higher traffic on a website translates into higher rankings on search engine results, bringing even more traffic.

◦ As a result of the importance of the Internet to marketing, it is crucial to obtain desirable domain names at the same time that a trademark is adopted.

◦ The Internet also has the potential for widespread unauthorized use of your brand, requiring vigilance to police both proper use of your brand and infringements of it:

• META tags

• Embedded or hidden text

• Counterfeits and design knockoffs

• Gray market goods

8. Trademarks are very effective against unfair competition

◦ In the United States, deceptive and misleading advertising is prohibited by: Consumer protection laws; Unfair competition laws; and The U.S. Trademark statute.

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