Trademark Dilution According to Vietnam IP Law

A well-known trademark is a trademark which has become widely recognized by the general public in relation to a product/service. As a result, it is common for third parties to try to benefit from the status of well-known marks. Although not all third parties' uses will cause confusion to consumers, such uses may pose potential risks of diluting the distinctiveness of the wellknown trademark. Under Vietnam Intellectual Property Law ("IP Law"), dilution is not a new theory; however, it remains unguided and ambiguous. In this article, we would like to share our viewpoints regarding dilution circumstances under both legal and practical perspectives in Vietnam. Regulations on trademark dilution in Vietnam The doctrine of trademark dilution has been recognized worldwide, either through legal regulations or courts' recognition during dispute resolution. For instance, the United States passed the U.S. Federal Trademark Dilution Act of 1995 (“FTDA”), which was subsequently replaced by the Trademark Dilution Revision Act of 2006 (“TDRA”), regulating trademark dilution separately. Article 2 of the TDRA provides that, “Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” This means that the protection of well-known trademarks in the United States is based on possible dilution of distinctiveness or damages to the reputation of famous marks, rather than potential confusion caused to consumers. In Vietnam, there is no legal regulation on trademark dilution like in the United States. The concept of trademark dilution has been indirectly implemented through the National Office of Intellectual Property of Vietnam's assessment of whether a trademark is qualified for legal protection or not. Specifically, a sign would be denied registration in Vietnam if it is either identical or confusingly similar to that of another entity of the same type, or different type if the use of such sign can potentially have an effect on the distinctiveness of the well-known trademark by any means.1 This statement is supported by Article 39.11(iv) of Circular 012 , which clarifies that damages to the uniqueness of a well-known mark will be considered when a third party's use holds a possibility of diluting the distinctiveness or damaging the reputation of a well-known trademark.3 Therefore, similar to the United 1 Article 74.2(i) of IP Law 2 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 3 Article 39.11(iv) Circular 01 2 BMVN International LLC  August 2017 States, Vietnam also protects well-known trademarks not only on the basis of actual confusion of customer as to the origin of the products, but also the dilution of distinctiveness or damages to the reputation of well-known marks. With that being said, Vietnam IP Law, however, does not provide the basis and criteria to examine the actual possibility of diluting or damaging the reputation of well-known trademarks. As a matter of practice, this procedure is subject to the judgment of the examiners. Difficulties in enforcing rights relating to trademark dilution Even though Vietnamese regulations have implemented the concept of trademark dilution to examine if a mark would be qualified for registration, owners of well-known trademarks still cannot rely on this dilution theory to enforce their exclusive rights. This stems from the fact that Vietnamese law was constructed based on a pro-consumer approach, which means that an action would be considered an infringement and will only be sanctioned if it has actually caused confusion to customer as to the origins of the goods and services, or the relationship between the trademark owners and a third party. This is evidenced in Article 129.1(d) of the IP Law regarding the infringements of well-known trademarks, which specifically details certain actions to be considered an infringement against a well-known trademark. Those infringed cases include uses of a sign that is identical or confusingly similar to a well-known trademark for unrelated goods and services, and such uses will potentially cause confusion to the consumers about the origin of goods and services or make an incorrect impression of the relationship between the manufacturer and seller of such goods and services with the owner of the well-known trademark. It is clear that there are discrepancies between the regulations on the registration procedure and those on the enforcement procedure in Vietnam IP Law. While regulations for registration run the risk of diluting well-known status of a trademark, regulations for enforcement simply ignore this jeopardy. Therefore, in order to secure trademark rights, trademark owners should consider registering their well-known trademarks and/or defensive marks in all classes. We believe that the laws should consider the interest of both the consumers and the owners who spend money and put effort in creating and maintaining a well-known trademark. As such, Vietnamese IP Law should remedy this situation in the future by amending well-known trademark regulations accordingly.