On 11 August 2020, the Vietnam IP Office ("VNIPO") organized an internal seminar, in collaboration with the Vietnam Red Cross Society ("VRCS") and the International Committee of the Red Cross ("ICRC"), to discuss the "Appropriate use of the red-cross emblem in Vietnam" ("Seminar").
The purpose of the Seminar is to discuss and propose a change to the VNIPO's practice regarding assessments of the registrability of trademarks and industrial designs consisting of the red-cross emblem to comply with the provisions of the Law on Red-Cross Activities and the Fourth Geneva Convention on protection of the red-cross emblem, of which Vietnam is a member.
Summary of the Seminar
The VNIPO's explanation of the former examination practice for trademarks containing the red-cross emblem or signs confusingly similar to this emblem
The director of the Trademark Examination Center of the VNIPO shared his viewpoint that, over the past several years, the VNIPO has considered the red-cross emblem as a conventional symbol of health and hygiene, which does not qualify for trademark protection under Article 74.2(b) of the Vietnamese IP Law. Therefore, the VNIPO has granted protection for almost marks consisting of the red-cross emblem and imposed a disclaimer in this regard.
Article 74.2(b) of the Vietnamese IP Law reads as follows:
Marks shall be deemed indistinctive if they are 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.
The VNIPO's proposals for the examination practice as regards the red-cross emblem from now on
The director of the VNIPO's Trademark Examination Center said that, at present, the red-cross emblem is not registered as a trademark in Vietnam. Thus, the VNIPO will not grant any individual or entity the exclusive rights to the red-cross emblem in trademark registrations. That said, with regard to other signs that are similar to the red-cross emblem but are stylized and/or modified, he took the view that the examination of those signs needs to be carefully assessed.
Meanwhile, the VNIPO's deputy general director expressed his opinion that, in accordance with Article 73.2 of the Vietnamese IP Law (as quoted below) and the Law on Red-Cross Activities, the red-cross emblem and any other signs confusingly similar to such emblem must be removed from applied marks to qualify for protection, instead of being imposed in a disclaimer:
Article 73.2: Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or international organizations, unless permitted by such bodies or organizations.
Based on the VNIPO's discussion above, in the near future, the VNIPO will refuse the registration of all trademark applications containing the red-cross emblem (or logos that are confusingly similar to this emblem), unless the applicants are able to submit documents evidencing the VRCS's consent of such use of the red-cross emblem. In other words, the VRCS will be the only entity entitled to approve the use of such emblem in Vietnam.
The VNIPO's deputy general director further stated that the VNIPO will cooperate with the VRCS to draft detailed guidance regulations regarding the examination of trademarks consisting of the red-cross emblem in Vietnam to ensure that the emblem is used properly in the country.
With regard to registered marks consisting of the red-cross emblem or red-cross-like logos, the VNIPO and the VRCS will collectively work on such cases to come up with proper solutions (i.e., encourage or request the trademark owners to modify the concerned emblem/logos to another shape and/or color variant, and/or completely remove such emblem/logos from the registered marks).
What to expect
As a matter of trademark registration practice in Vietnam for many years, marks containing the red-cross emblem have been accepted for protection with such emblem subject to a disclaimer for a variety of goods and services, mainly covering those relating to the beauty care, medical and pharmaceutical sectors, among others.
However, in the spirit of the Seminar and in line with the Vietnamese IP Law and international treaties on the protection of the red-cross emblem in which Vietnam has participated, it is foreseeable that in the coming period, the VNIPO will take a more careful and stricter approach in favor of the VRCS and the ICRC by refusing the registration of any application consisting of the red-cross emblem. That being said, it is unclear how existing trademarks that have already been accepted for protection in Vietnam with the red-cross emblem being disclaimed will be affected by this newly proposed examination rule.
Trademark owners should take note of these changes to appropriately design their new trademarks to mitigate the possible risk of trademark applications being rejected and wait for updated regulations and detailed guidelines from the VNIPO regarding its official amendments to the examination of the red-cross emblem in Vietnam.