INTELLECTUAL PROPERTY

LAW
TRADEMARKS
 Content

1) Trademarks
2) Registrable trademarks
3) Trademark clearance
4) Trademark registration

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 What is a trademark

• A trademark is any sign that individualizes the goods of a

given enterprise and distinguishes them from the goods of
its competitors. (WIPO Intellectual Property Handbook,
paragraph 2.318)
• Any sign capable of being represented graphically which
is capable of distinguishing goods or services of one
undertaking from those of other undertakings. A
trademark may, in particular, consist of words (including
personal names), designs, letters, numerals, or the shape
of goods or their packaging. (Section 1(1) of Trademarks
Act 1994)

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 1) The mark must be distinctive
2) The mark does not consist exclusively of
signs or indications which may serve, in
trade, to designate the kind, quality,
quantity, intended purpose, value, place of
2. origin, of the goods, or the time of
production, or have become customary in

Registrable
the current language or in the bona fide
and established practices of the trade of
the country where protection is claimed

trademarks 3) The mark is not contrary to public order or

morality
4) The mark does not infringe a third
person’s rights
(Article 6quinquiesB of the Paris Convention)

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 1) The mark must be a visual
sign (letters, words, drawings,
images, including holograms or
2. Registrable the combination thereof,
trademarks represented in one or more
colors)
under
2) The mark must be distinctive
Vietnamese (Art. 74 of IP Law)
IP law 3) The mark does not fall into
excluded circumstances (Art. 73
of IP Law)

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 • Invented words: “Kodak” for
cameras, “Xerox” for photocopiers
• Words used out of context: “Apple”
for computers
Types of • Symbols and shapes
Trademark • Color: Single color or combination
of colors?
• Sound
• Smell

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 Collective trademark

• A type of trademark used by members of a collective, association, or other

organization to indicate membership and/or to distinguish the goods and
services of members from those of non-members.

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 3. Trademark Clearance

• To ensure that the marks selected are available for use and eligible for
trademark registration. 
• Step 1: Search for identical or similar marks
• Step 2: Assess availability of a mark: analyze search results and
determine whether the mark does not infringe third-party trademark
rights and whether it is distinctive
• Practice exercise: You want to register the mark “Happy” for your
greeting cards in Vietnam. Work in group, go on the digital IP library of
NOIP (noip.gov.vn) and conduct a trademark preliminary clearance
search to assess the possibility of registration for this mark.

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Registration of trademark

• General process:
1) Classification of goods and services
2) Filing the application with Trademark Registry of the UK Patent Office
3) Paying fees
4) Examination
5) Opposition
6) Registration: the initial registration lasts for 10 years and must be renewed by
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paying fee.
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• Madrid registration system

 Registration of trademark

American Clothing Associates v OHIM (Intellectual property) [2009]

EUECJ C-202/08 (16 July 2009):
The trade mark for which registration The emblem of Canada
was sought

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Famous trademarks

• Definition of a famous (well-known) trademark

• Criteria to determine a trademark is famous
• Justification for giving extra protection to famous trademarks
• Trademark Dilution
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 Domain names and trademarks

What is a domain name?

The conflict between domain names and trademarks
International Controls: the Uniform Dispute Resolution Policy (UDRP): a domain
name can be cancelled or transferred if:
• the domain name is identical or confusingly similar to a registered or
unregistered trade mark; 
• the use of domain name is by someone having no legitimate interest in the
name; and
• there is bad faith, such as deliberately confusing use, an offer to sell the mark or
a history of registering names based on third party trade marks

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Infringement of registered trademark

A person, without the owner’s permission:

- Use the registered trademark in relation to the goods/services specified
in the registration
- Use the registered trademark on the similar goods/services
- Use the similar mark on the registered or similar goods/services, so that
the public is likely to be confused.
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15 Infringement of
registered trademark
Hearst Holdings Inc & Anor v
A.V.E.L.A. Inc & Ors [2014] EWHC
439 (Ch) (25 February 2014): 
Claimant owns trademarks which have
words “BETTY BOOP” & the device as
follows:
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 Infringement of registered trademark
Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch) (25
February 2014): Claimant alleged:
- products bearing signs depicting Betty Boop which are similar to the device the

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subject of the trade mark registrations and/or incorporating the words BETTY
BOOP or BOOP without claimant’s license.
- unauthorised product which bears an image recognisable as Betty Boop will
infringe the word mark marks regardless of whether the words BETTY BOOP or
BOOP (or a slogan like “Boop oop a doop”) appear.
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Infringement Comparative advertising does not infringe

of registered trademark use unless it is not in accordance

with honest business practices.

trademark

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Civil remedies:
1) Provisional measures
2) Injunction
3) Delivery-up
Enforcement 4) Compensatory damages
5) Punitive damages; and
6) Account of profits
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Unregistered • A valuable right as the mark’s reputation is
built up by advertising, and by sale of the
goods or provision of the services
trademark • Get-up includes:
1) the colour of packaging and the type of
lettering used on a label;
2) a slogan used for broadcast or printed
advertising;
3) visual impression of business premises,
such as the style of fascia board and the
colour of shop fittings

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 Judgment No. 17/2019/KDTM-ST dated
31/5/2019-Trademark Infringement

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Unregistered • Passing-off:
- there is a reputation in the mark or get-up

Trademarks
- there has been confusion in the market place
- the owner has suffered damage

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 • Can be protected under unfair
Unregistered competition law (Art. 130 of IP Law)
•
marks under Unregistered marks which have been
widely used and recognized (but not
amount to famous trademarks): can
Vietnamese block registration of confusingly similar
marks (Art. 74.2(g) of IP Law)
IP Law

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 Review
• What is trademark? How many type of trademark?
• What is registered trademark?
• Can unregistered trademark be protected under IPR law?
• What other laws can unregistered designs be protected?
• What's trademark infringement? Give example and discuss
• What's the main benefit of trademark protection? Give example and discuss
• Is there any trademark infringement when someone registers a domain name
then sell to the trader?
• Is it the same legal liabilities in trademark infringement and copyright
infringement?
• What's your understanding about Madrid system? Can you try to fill in
registration form for a trademark?
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Thank you
for your
attention
Questions & Answers

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