Practices of Trademark Disclaimer in Vietnam

Practices of Trademark Disclaimer in Vietnam Email: [email protected] What is the Trademark Disclaimer? “The registered trademark is wholly protected. The verbal element of […] and/or the figurative element of […] are not separately protected” is the phrase commonly appeared in certificates of trademark registration issued by the Vietnam Intellectual Property Office (VNIPO) 1 . The above phrase originates from the term “trademark disclaimer statement” or shortly called as “disclaimer” regularly seen in trademark registrations in many countries. According to the world practice, “disclaimer” that is often understood that an element or a portion constituting an appliedfor mark that is devoid of distinctive characters is not required to remove from the applied-for mark because in view of the whole, such applied-for mark is still deemed as badge of origin (trademark function). In addition, “disclaimer” is also understood as a legal limitation to the scope of protection of a registered trademark. Practices of Inclusion of Trademark Disclaimer from 1980s and 2019 and our Comments Trademarks Disclaimer by the VNIPO Note/Comment International Reg. No. 518175 Date 29/7/1987 Class 29 (milk) and others No disclaimer recorded. Although in this case, the image of a cow’s head is obviously descriptive of milk product. Prior to 1990s, no disclaimer recorded in international registration of mark No disclaimer recorded (The element “Milk” that independently stands from from the element “ME” should have been disclaimed) After 1990s up to 2019, no disclaimer recorded on international registration designating/expanding into Vietnam 1 Former name of the VNIPO is the NOIP (National Office of Intellectual Property), an agency under the Ministry of Science and Technology, in charge of administering and granting titles of protection of industrial property rights, namely invention, utility solution, design, trademark, layout design International Reg. No 1366539 Protected by Vietnam on 7/2/2019 Class 29: Milk and dairy products. National Reg. 31748 (expired in 2008) Reg. Date: 4/5/1998 Issued on: 9/8/1999 Class 29: Milk and dairy products No disclaimer recorded (This case, disclaimer of “Milk” should have been made because Milk stands alone) Before 2000, it seems that Vietnam did not disclaim the trademark containing a descriptive element. National Reg. 64419 Reg. Date: 20/4/2004 Issued on: 4/7/2005 Class 29: milk and dairy products Disclaimer recorded. “The registered trademark is wholly protected. The verbal elements of mamma and image of a prenant are not separately protected” Disclaimer is applied to both verbal and figurative signs if they are devoid of distinctive characters. However, the element “milk” was not disclaimed as it attaches to the prefix “Vina” to create a single word “Vinamilk”2 National Reg. 270480 Issued on 21/10/2016 Class 29: Milk and dairy products Disclaimer recorded. “The registered trademark is wholly protected. The figurative element of a cow’s head is not separately protected”. The device of a cow’s head is obviously descriptive of milk but its form of expression or its stylized representation is unique enough so that it suffices to function a badge of origin in commerce 2 Similar to Vietnam, other countries also do not disclaim the descriptive elements when they are united with the non-descriptive elements to generate a unitary mark such as Vinamilk trademark under the International Reg. No.0985886. National Reg. 281944 Issued on 23/5/2017 Class 12: bike, motorbike Disclaimer recorded. “The registered trademark is wholly protected. The verbal element of “Thế giới xe đạp”[the world of bicycles] and a device of cog-wheel are not separately protected”. Both of the signs of the gear and the words "Thế giới xe đạp” (the world of bicycles)" are descriptive, but the combination of both signs in which the sign of a gear shaped as half a leaf device is still sufficient to make the unique impression to qualify as a trademark as the whole. International Reg. 824804 Issued on 27/04/2004 Class 30: coffee No disclaimer recorded. (This case is confusing in determining the scope of protection because while national reg. 150500 as the example below is disclaimed against devices of seed of coffee and a cup, no disclaimer recorded on International Reg. 824804 Initially rejected under Section 6.2c of Decree 63/1996 as amended3 because of lack of trademark function. Upon the evidences of extensive and wide use, the VNIPO withdrew its refusal and granted protection on August 24, 2006 Certificate No. 150500 Issued on 3/8/2010 Class 30: coffee,… Disclaimer recorded “The registered trademark is wholly protected. The figurative elements of “coffee cup” and “nuts of coffee” are not separately protected”. In addition to the grain of coffee, the red cup in the mark is also disclaimed National Reg. 57231 Issued on 20/9/2004 Class 03: cosmetics Disclaimer recorded “The registered trademark is wholly protected. Only verbal element of “Romano” is protected This is a three dimensional trademark which appears not to be clear enough to determine its scope of protection: only “ROMANO”, or the combination of Romano and device of bottle, or both Romano and device of bottle? 2 Section 6 Decree 63/1996/CP as amended: these following signs cannot be protected in the form of trademarks: c) Signs indicating time, place, methods, kind, quantity, quality, feature, ingredient, useage, describing function and origin of goods/services. International Reg. 1028578 Dated 16/12/2009 Class 33 No verbal element included in the trademark This is another threedimensional trademark which was rejected by virtue of Section 74.2b of the IP Law4 Pending App. No 4-2014- 22436 Filing date 22/9/2014 Class 29, 35 related to cashew nuts Prior registered trademark National Reg. 262371 Issued on 17/5/2016 Classes 29, 30, 35 (cashew nuts). The trademark is wholly protected. The verbal sign “ĐIỀU VIỆT” [cashew of Viet]and the device of cashew nuts are not protected separately (for cashew nuts) The mark VietCashew was refused by reason of likelihood of confusion with the registered mark Điều Việt [cashew of Viet]. Upon appeal, the VNIPO maintained its rejection by the confirmation of refusal App. No. 4-2004-09174 Filing date: 6/9/2004 (National Reg. 76000 granted on 11/10/2006 after review) Class 35, 40, 41 (publishing and trading books). App. No. 4-2004-06236 Filing date: 25/6/2004 Notice of grant: 9/11/20055 Class 35: Trading books Trademark is wholly protected. The words “Sách Việt” [English translation is Vietbook] is not protected separately) Similar to the mark VietCashew above, in this case, VNIPO also rejected Vietbook because of the earlier filed mark Sách Việt but there was a difference that is the VNIPO withdrew its rejection after a review was submitted 3 Section 74 of the IP Law: The capacity of distinctiveness of trademark 2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories: b) Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people 5 On 25/12/2008, the VNIPO officially rejected due to non-payment of granting fee. National Reg. 171511 Class 29: milk Disclaimer: Nil National Reg. 190511 Class 29: milk Disclaimer recorded. Trademark is wholly protected. "Full and balanced nutrition", "a", "R" are not protected separately National Reg 166534 Class 29: milk Trademark is wholly protected. The verbal elements “R”, “GOLD”, “IQ”, “MAX” and “3” are not protected separately The text element “GOLD” is used for milk products but none of Abbott’s reg. nos. 171511 and 190511 is disclaimed while reg. no. 166534 is disclaimed. App. No. 4-2008-15894 Filing date: 25/7/2008 Class 30 & 43 (coffee) First rejection of 13/8/2009 Second rejection (confirmation of refusal) of February 2, 2010 National Reg. 44471 Trademark is wholly protected. The verbal element “HIGHLANDS COFFEE” is not protected separately The rejected application was filed during the time the holder – Viet Thai International Coporation – had successfully registered the trademark Highlands Coffee & design /Reg. 44471 in which “Highlands Coffee” is not exclusively protected App. No. 4-2012-02380 Filing date 17/2/2012 Class 30 & 43 (coffee) National Reg. 231207 Issued on 10/9/2014 Trademark is wholly protected. The verbal element “COFFEE” is not protected separately This trademark under app. no. 4-2012-02380 (identical with the rejected mark under app. no. 4-2008-15894) re-filed in 2012 by the new owner – Blue Sky Holdings Limited – was approved by the VNIPO. Bross & Partners has experience in supporting and representing clients to protect trademark (brand name). Should you have needs, please contact us at Email: [email protected]; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057. Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including preparing Vietnamese translation of PCT applications and entering the Vietnamese national phase, filing, prosecution, enforcement, anticounterfeiting, litigation and domain name matters.