Protecting Colors as a Trademark in Vietnam
(Tran Manh Hung, Ninh Thanh Thuy & Nguyen Thi Nga)*
In attempting to gain competitive advantages, businesses have been adopting a color or a combination of colors in their activities as business and advertising strategies to attract customers. The ways in which these colors are utilized is vast, ranging from advertising material, product packages, painting stores or to the color of uniforms. Through the constant and continuous use of these colors in their business operations, businesses may be able to successfully shape the consumers’ perception by establishing an association between such colors and the companies themselves together with their products and services. This makes these colors a valuable intangible asset to the business. Recognizing this, companies are naturally eager to register and protect these colors as their trademarks.
Currently, Vietnamese legislative provisions, regarding the protection of IP rights, do not recognize signs that are merely colors as a protected subject matter, unless they have been combined with or presented in the form of character signs or figure signs.1 The rationale behind this is that a color itself is considered to be overly common and popular, and therefore cannot perform a trademark’s function, which is to help distinguish goods and services of different companies from each other.
That is not to say that colors that have been combined with or presented in the form of character signs or figure signs will definitely be protected as a trademark. According to current examination practice at the National Office of Intellectual Property of Vietnam (“NOIP”), a single color or sometimes a combination of two or three colors which are combined with or presented in the form of “simple” figures may still be considered non-distinctive, and therefore would be refused registration. These simple figures might be a circle, ellipse, triangle, quadrangle, or a simple drawing. Previously, the NOIP issued a notice to provisionally refuse the protection of Dunhill Tobacco of London Limited’s sign, which adopts a
1 Article No. 39.2 (i) of Circular No. 01/2007/TT-BKHCN of February 14, 2007 guiding the implementation of the Government’s Decree No. 103/2006/ND-CP of September 22, 2006 detailing and guiding the implementation of a number of articles of the Law on Intellectual Property regarding Industrial Property (“Circular 01”).
BMVN International LLC
(in alliance with Baker & McKenzie)
Unit 1002, 10th Floor,
Indochina Plaza Hanoi
241 Xuan Thuy Street,
Dich Vong Hau Ward,
Cau Giay District, Hanoi, Vietnam
Direct line: +8220.127.116.11.98
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E-mail: [email protected]
* Tran Manh Hung is the Managing Partner of BMVN (a member of Baker & McKenzie); Ninh Thanh Thuy is the Trademark Manager & Nguyen Thi Nga is the Associate of BMVN.
2 Protecting Colors as a Trademark in Vietnam | November 2016
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plain rectangle in two colors i.e. yellow and red, on the basis that the sign
was a simple device and therefore was non-distinctive.
Nevertheless, these signs are still likely to be protected as trademark
if the NOIP is satisfied that they have acquired a certain level of
distinctiveness through intensive use by being recognized as widely-used
or well-known trademark in Vietnam. In the Dunhill Tobacco case, the
NOIP subsequently granted Dunhill Tobacco a Certificate of Trademark
registration upon recognition of its wide-use status. This exception will not
apply for a single color which is combined with or presented in the form
of a simple figure. According to current examination practice at the NOIP,
such combination of a single color and a simple figure will be still refused
protection even when it is recognized as a widely-used or well-known
trademark in Vietnam.
The criteria to be taken into account when considering well-known status
of a trademark are provided under Article No. 75 of the Intellectual
Property Law. As the Vietnamese IP Law is silent on the specific
provisions, the same criteria will be applied when determining the
“widely-used” status of a trademark, albeit to a relatively lower threshold:
• The number of the related consumers who are aware of the
trademark through purchase or use of the goods or services
bearing the trademark or through advertising;
• Territorial scope of circulation of the goods/services bearing the
• Turn-over of the sale or supply of the goods/services bearing the
trademark or the volume of the goods sold or services supplied;
• The period of continuous use of the trademark;
• Widespread goodwill of the goods/services bearing the trademark;
• Number of the countries granting protection to the mark;
• Number of the countries recognizing the trademark as well-known;
• Value of assignment and license, or the value of investment capital
contribution in respect of the trademark.
However, please note that a trademark will only be recognized as widelyused
if it is presented in the exact format as it is in actual use and
evidence is submitted proving the use of the trademark in Vietnam.2 That
said, the Vietnamese IP Law remains ambiguous regarding the specific
requirements for well-known trademarks. Like widely-used trademarks,
though relatively less strict, NOIP generally requires well-known
trademarks to be the exact one in actual use. As a result of this ambiguity,
as well as unspecific provisions on the criteria determining widely used
and well-known status, decisions usually depend heavily on the subjective
view of each examiner.
2 Article No. 39.5(b) of Circular No. 01
November 2016 | Protecting Colors as a Trademark in Vietnam 3
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In conclusion, under the Vietnamese IP Law, signs that are merely a
color or a combination of colors may be protected in Vietnam if they are
combined or presented in the form of character signs or figure signs.
However, there are certain difficulties in seeking protection for these
signs. The character or figure signs that are considered to be too “simple”
- for instance, taking the form of a simple shape in a single or sometimes
a combination of two or three colors as in the case of Dunhill Tobacco of
London Limited - may be refused for registration due to being considered
non-distinctive. Nevertheless, there is still a possibility that these
trademarks may be registered for protection if the applicant is able to
prove that these trademarks have achieved a widely-used or well-known
status in Vietnam. However, according to current examination practice at
the NOIP, this exception will not apply for a single color which is combined
with or presented in the form of a simple figure.