1. Definition “using trademark in Vietnam”
According to Article 125.5 of Intellectual Property Law, using trademark in Vietnam means the performance of the following acts:
a/ Affixing the protected mark on goods, goods packages, means of business, means of service provision, transaction documents in business activities;
b/ Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;
c/ Importing goods or services bearing the protected mark.
2. How to protect your trademark effectively in Vietnam?
• By using properly trademark in Vietnam
According to Article 5 C-2 of Paris Convention, use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark. In Vietnam, if the Registrant’s trademark is combined of word and symbol, but the owner use only the word or the symbol as an independent trademark, would such kind of use constitute proper using trademark in Vietnam depends on would it alter the distinctive of registered mark or not. However, in practice, it is recommended to use the trademark as the registered one since Vietnam Trademark Office examines this element very strictly.
• Present the evidence of using trademark in Vietnam when:
– Cancellation on basis of non-use by a third party: the trademark in Vietnam shall be invalidated if it has not been used by its owner or his/her registered licensee without legitimate excuse for 5 consecutive years prior to a request for cancellation of validity, except where using trademark in Vietnam is commenced or resumed at least 3 months before the request for cancellation.
– Proving the distinctiveness through using trademark in Vietnam
Several materials will be considered such as:
- An explanation of origin, history and time of continuous use of the mark;
- Number of nations in which the mark has been registered or recognized as a well-known mark;
- List of goods and services bearing the mark;
- The territorial area in which the mark is circulated, turnover from products sold or services provided;
- Quantity of goods and services bearing the mark manufactured or sold;
- Property value of the mark, price of assignment or licensing of the mark and value of investment capital contributed in the form of the mark;
- Investment in and expenses for advertising and marketing of the mark, including those for participation in national and international exhibitions;
- Infringements, disputes and decisions or rulings of the court or competent agencies;
- Surveyed number of consumers knowing the mark through sale, purchase, use, advertisement and marketing;
- Rating and evaluation of reputation of the mark by national or international organizations or the mass media;
- Prizes and medals awarded on the mark;
- Results of examinations held by intellectual property examination organizations.
3. Parallel import in Vietnam
Parallel imports (sometimes referred to as gray market goods) refer to branded goods that are imported into a market and sold there without the consent of the owner of the trademark in that market. The goods are “genuine” goods (as distinct from counterfeit goods), in that they have been manufactured by or for or under license from the brand owner. However, they may have been formulated or packaged for a particular jurisdiction, and then are imported into a different jurisdiction from that intended by the brand owner.
Parallel imports are generally allowed in Vietnam (Article 20 and Article 125.2 of the IP law). Vietnam’s legal provisions on parallel imports, meanwhile, can help ensure adequate access to IP protected imports. The regulation of parallel trade involves balancing the interests of local consumers and distributors, particularly with regard to pharmaceutical and agrichemical products. However, as being a soon-to-be member of the Trans-Pacific Partnership (TPP), Vietnam will regulate the provisions to restrict the parallel imports in case without the consent of the owner of the trademark in Vietnam.