TRADEMARKVu Van Ngoc, PhDngocvv@neu.edu.vn

WHAT IS A TRADEMARK?A trademark is a word, phrase, symbol, or design, or a combination of these that identifies and distinguishes the source of goods of one party from those of others.

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A TRADEMARK IS MADE OF :

ANY DISTINCTIVE WORDS, LETTERS, NUMERALS, PICTURES, SHAPES, COLORS, LOGOTYPES, LABELS

Examples:

TRADEMARK EXAMPLESWords Phrases

TRADEMARK EXAMPLESSymbols Designs

WHAT IS A SERVICE MARK?A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service, rather than a product.

SERVICE MARK EXAMPLES

FUNCTIONS OF A TRADEMARK Indicates the source of origin of goods or services Helps guarantee the quality of goods bearing the

mark Creates and maintains a demand for the product Used as a marketing tool to build a brand Can have great $ value to a company A crucial component of franchising agreements Useful for obtaining banks or third part finance

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THE VALUE OF A TRADEMARK?

A marketing tool

A source of revenue through licensing

A crucial component of franchising agreements

Useful for obtaining banks or third part finance

A valuable business asset

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BEST GLOBAL BRANDS 2013

WHY PROTECT A TRADEMARK? Trademarks are protected under federal and

state law Trademarks are earned not born Trademarks come into being through actual use

You do not have to register a trademark to have it protected, but there are some advantages to doing so A trademark registration provides:

Constructive notice to the public of the registrant's claim of ownership of the mark

Registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration

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SPECTRUM OF DISTINCTIVENESS & LEVELS OF PROTECTION

Fanciful

Arbitrary

Suggestive

Descriptive

Generic

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MARKS DECLARED FAMOUS

PROTECTING A TM THROUGH REGISTRATION While filling in a TM application, it is critical to register your

trademark in all classes in which you use or intend to use your trademark.

The most widely used classification system (Nice has 34 classes for goods and 11 for services - a total of 45 classes of goods and services).

Some TM offices such as in US and Canada require the proof that the TM is used.

A substantive examination may be required to avoid conflict with an existing and similar Mark, previously registered.

Some countries publish the TM in a journal allowing 3rd parties to make an opposition (during a certain period of time).

Once it is decided that there are no grounds for refusal, a certificate is issued with a validity of 10 years.

Registration can be renewed indefinitely but may be cancelled if TM is not actively used for a certain period stated in the TM law.

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SCOPE OF RIGHTS

The exclusive right to use the mark

The right to prevent others from using an identical or similar mark for identical or similar goods or services

The right to prevent others from using an identical or similar mark for new goods or services

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PROTECTING AT HOME AND ABROAD

The national route Each country where you seek protection

The regional route (for some countries only) Countries members of a regional trademark

system: African Regional Industrial Property Office; Benelux TM office; Office for Harmonization of the Internal Market of the EU; Organisation Africaine de la Proprit Intellectuelle

The international route The Protocol & Madrid system administered by

WIPO (over 70 member countries)

USING A TRADEMARK

Actively using a TM

Using/maintaining a TM in marketing and advertising

Using the mark on the internet

Using the mark as a business asset

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ACTIVELY USING A TRADEMARK

Offering the goods or services

Affixing the mark to the goods or their packaging

Importing or exporting the goods under the mark

Using it on business papers or in advertising

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USING A TRADEMARK IN ADVERTISING

Shall be used exactly as registered

Protect TM from becoming generic Set apart from surrounding text Specify font, size, placement and colors Use as an adjective not as noun or verb Not plural, possessive or abbreviated form Use a trademark notice in advertising and

labeling

Monitor authorized users of the mark Review portfolio of trademarks An evolving trademark

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USING A TM ON THE INTERNET

Use of TM on internet may raise controversial legal problems

Conflict between trademarks and domain names(internet addresses) - cyber squatting

WIPO procedure for domain name dispute (http://arbiter.wipo.int.domains)

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USING A TRADEMARK AS A BUSINESS ASSET

Licensing: owner retains ownership and agrees to the use of the TM by other companies in exchange of royalties > licensing agreement (business expansion/diversification)

Franchising: licensing of a TM central to franchising agreement.The franchiser allows franchisee to use his way of doing business (TM, know-how, customer service, s/w, shop decoration, etc)

Selling/assigning TM to another company (merger & acquisitions/raising of cash)

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ENFORCING TRADEMARKS

Responsibility of TM owner to identify infringement and decide on measures

Cease and desist letter to alleged infringer (s)

Search and seize order

Cooperation with customs authorities to prevent counterfeit trademark goods

Arbitration and mediation (preserve business relations)

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TRADEMARKS VERSUS PATENTS 1. It is easier to create a trademark than a patentable

invention. Trademarks must generally only be distinct from other marks used on comparable goods, whereas patentable inventions must be new, useful, and non-obvious. There is generally no requirement that a trademark be associated with an innovative product.

2. The process of securing international patent protection is expensive and time consuming compared to international trademark registrations.

3. More often, there is a greater risk that trademarks may be misappropriated and misused in foreign countries than patentable inventions.

4. Trademarks are the main way of establishing the identity of a corporation or its products.

WELL-KNOWN MARKS

What does Article 6bis of the Paris Convention provide for well-known marks? Does this Article define what a well-known mark is?

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WELL-KNOWN MARKSParis Convention Article 6bis

Members must protect well-known marks from infringement whether registered or unregistered.

This obligation is incorporated into Article 16 of the TRIPS Agreement.

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WELL-KNOWN MARK TREATYOBLIGATIONS

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such wellknown mark or an imitation liable to create confusion therewith.

Paris Article 6bis

refuse registration cancel registration prohibit use where likelihood of

confusion used on identical or

similar goods no requirement senior

mark be registered, i.e. applies to unregistered senior marks

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28WELL-KNOWN MARKS

FACTORS FOR JUDGES TO CONSIDER

Degree of distinctiveness

Duration and extent of use of the mark

Duration and extent of advertising of the mark

Extent of geographical trading area

Channels of trade

Degree of recognition of the mark in those channels of trade

Nature and extent of use of same/similar marks by third parties

Whether the mark is registered

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EXAMPLE OF WELL-KNOWN MARKS: THESOUTH AFRICAN MCDONALDSCONTROVERSY

Example: McDonalds registered various South African trademarks but did not use them between 1975 and 1993 (due to apartheid)

Appellate Division: found in 1996 McDonalds protected as a famous mark

EMPRESA CUBANA DEL TABACO V. CULBRO (2D CIR. 2005) [C P. 301]

Could Cubatabaco succeed in its claim that the Cuban COHIBA mark deserved protection under the famous marks doctrine and thus thus it should succeed on its section 43(a) Lanham Act claim? Did it have a right under Article 6bis of the Paris Convention to cancellation of General CigarsCOHIBA mark?

31RECENT CASES INVOLVING WELL-KNOWN

MARKS

Google Inc. v. Pivot Design, Inc., Opposition No. 91171124 (April 20, 2007) [not precedential].

Opposer, Google, Inc. filed an opposition against registration of the mark BLOGLE for computer software for searching, compiling, indexing and organizing information.

32RECENT CASES INVOLVING WELL-KNOWN MARKSWhat evidence of fame?

- use since 1997 with search engine software- over 300 million U.S. visitors to website in 2006- U.S. revenues have risen from over 400 million in 2002 to 7.3 billion dollars in 2006- Readers Choice survey: Google among the top 5 leading brands worldwide from 2001-2005- two online dictionary definitions of Google as trademark for a search engine.

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33RECENT CASES INVOLVING WELL-KNOWN MARKS

Googles motion for summary judgment granted on the basis of the fame of opposers mark, the similarity of the marks, and the legally-identical nature of the goods involved.

34RECENT CASES INVOLVING WELL-KNOWNMARKSStarbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741

(TTAB 2006).

Starbucks filed an opposition against Marshall Rubens application for LESSBUCKS COFFEE for coffee and retail store services. The Board sustained the opposition, finding that STARBUCK was a famous mark and accorded it a broad scope of protection under the fifth Du Pont factor.

35RECENT CASES INVOLVING WELL-KNOWN MARKS

What evidence?

- $10 billion in sales and $150 million in marketing expenditures during 2001-2004;

- 5,000 company-owned and licensed stores throughout the country;

- 11 million consumer transactions per week; - and 350,000 hits per week at its website. As of 2004, nearly

half of all American consumers had visited a Starbucks' location.

- Surveys

VINAPHONE V. VINAIPHONE

DURATION OF REGISTRATION OF A TRADEMARK

Initially for 10 years, then renewed indefinitely for successive periods of 10 years.

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TRADEMARKS UNDER VIETNAMESE LAW General conditions for marks to be eligible for

protection Signs ineligible for protection as marks Distinctiveness of marks Criteria for evaluation of whether or not a mark

is well known

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GENERAL CONDITIONS FOR MARKS TO BEELIGIBLE FOR PROTECTION (ART. 72 LAW ON IP 2005)

A mark shall be eligible for protection when it satisfies the following conditions:

1.It is a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours.

2.It is capable of distinguishing goods or services of the mark owner from those of other subjects.

SIGNS INELIGIBLE FOR PROTECTION ASMARKS (ART. 73 LAW ON IP 2005) (1) The following signs shall be ineligible for

protection as marks:1.Signs identical with or confusingly similar to

national flags or national emblems.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 with international organizations, unless permitted by such bodies or organizations.

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SIGNS INELIGIBLE FOR PROTECTION ASMARKS (ART. 73 LAW ON IP 2005) (2)3. Signs identical with or confusingly similar to real names,

aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.

4. Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.

5. Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

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DISTINCTIVENESS OF MARKS (ART. 74 LAW ON IP 2005) (1)1.A mark shall be deemed to be distinctive if it

consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of this article.

2.A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

(a) Simple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;

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DISTINCTIVENESS OF MARKS (ART. 74 LAW ON IP 2005) (2)(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;

(c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;

(d) Signs describing the legal status and business sector of business entities;

DISTINCTIVENESS OF MARKS (ART. 74 LAW ON IP 2005) (3)(dd) Signs indicating the geographical origin of goods or

services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;

(e) Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;

(g) Signs identical with or confusingly similar to another person's mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;

DISTINCTIVENESS OF MARKS (ART. 74 LAW ON IP 2005) (4)(h) Signs identical with or confusingly similar to another

person's mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;

(i) Signs identical with or confusingly similar to another person's mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;

(k) Signs identical with or similar to another person's trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;

DISTINCTIVENESS OF MARKS (ART. 74 LAW ON IP 2005) (5)(l)Signs identical with or similar to a protected geographical

indication if the use of such sign may mislead consumers as to the geographical origin of goods;

(m) Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;

(n) Signs identical with or insignificantly different from another person's industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.

CRITERIA FOR EVALUATION OF WHETHER ORNOT A MARK IS WELL KNOWN (ART. 75 LAW ONIP 2005) (1)

The following criteria shall be taken into account when considering whether or not a mark is well known:

1.The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising.

2.The territorial area in which goods or services bearing the mark are circulated.

3.Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided.

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CRITERIA FOR EVALUATION OF WHETHER ORNOT A MARK IS WELL KNOWN (ART. 75 LAW ONIP 2005) (2)

4.Duration of continuous use of the mark.5.Wide reputation of goods or services bearing the

mark.6.Number of countries protecting the mark.7.Number of countries recognizing the mark as a

well known mark.8.Assignment price, licensing price, or investment

capital contribution value of the mark.

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TRADE NAMES

General conditions for trade names to be eligible for protection

Objects ineligible for protection as trade names Distinctiveness of trade names

GENERAL CONDITIONS FOR TRADE NAMES TOBE ELIGIBLE FOR PROTECTION (ART. 76 LAWON IP 2005)

A trade name shall be protected when it is capable of distinguishing the business entity bearing it from other business entities operating in the same business sector and locality.

OBJECTS INELIGIBLE FOR PROTECTION ASTRADE NAMES (ART. 77 LAW ON IP 2005) Names of State bodies, political organizations,

socio-political organizations, socio-politico-professional organizations, social organizations, socio-professional organizations and other entities not involved in business activities shall not be protected as trade names.

DISTINCTIVENESS OF TRADE NAMES (ART. 78 LAW ON IP 2005) A trade name shall be deemed to be distinctive

when it satisfies the following conditions:1.It consists of a proper name, except where the

proper name was widely known by use.2.It is not identical with or confusingly similar to a

trade name which was used earlier by another person in the same business sector and locality.

3.It is not identical with or confusingly similar to another person's mark or a geographical indication which was protected before the date of use of such trade name.

ENTERPRISES NAME (ART. 31, LOE 2005) AND REGISTERED OFFICE (ART. 35, LOE 2005)

Name of an enterprise must be written in Vietnamese, may comprise of numeric and symbols, and must be able to pronounce and have at least two components as follows:

Type of business organization; Distinct name. The head office is contacting and transactional

address of an enterprise; it must be a specific address in the territory of Vietnam

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PROHIBITIONS IN CHOOSING ANENTERPRISE NAME (ART. 32, LOE 2005)1. Using a name that is identical or cause confusion

with an existing enterprise name;2. Using name of the state agencies, peoples armed

forces, political organizations, political-socio organizations, political-socio-professional organizations, social organizations or social-professional organizations as to constitute fully or partially the enterprise name, otherwise agreed by such organizations.

3. Using words and symbols that violate historical and cultural traditions, good morals and customs of the nation.

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ENTERPRISE NAME IN FOREIGNLANGUAGES (ART. 33, LOE 2005)1. The enterprise name in a foreign language is

that translated from Vietnamese into such a foreign language. Translation can be done without or with translating the distinct component of the enterprise name into a foreign language.

2. The enterprise name in a foreign language must be presented in a smaller-size font in comparison with that in Vietnamese when it is displayed at the head office, branches, representatives, transactional papers or publications of the enterprise.

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IDENTICAL AND CONFUSEDENTERPRISE NAME (ART. 34, LOE 2005) (1) 1. Name of the enterprise is construed as

identical to a name of an existing and registered enterprise if it is read and written in Vietnamese as the same as such a name.

2. Name of the enterprise is construed as to cause confusion with a name of an existing and registered enterprise if:

a) it is read, in Vietnamese, as the same as such a name;

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IDENTICAL AND CONFUSEDENTERPRISE NAME (ART. 34, LOE 2005) (2)b) it is differed, in Vietnamese, from such a

name by a sign &;c) its abbreviation is identical to the

abbreviation of such a name;d) it is, in foreign language, identical to

such a name in foreign language;e) its distinct component is differed from

that of such a name by a prefixed or affixed number or Vietnamese alphabet, except that it is given to a subsidiary of the existing and registered enterprise.

IDENTICAL AND CONFUSED ENTERPRISENAME (ART. 34, LOE 2005) (3)e) its distinct component is differed from that of

such a name by a prefixed word new;g) its distinct component is differed from that of

such a name by word northern, southern, central, western, eastern or other similar word, except that it is given to a subsidiary of the existing and registered enterprise.

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