luận văn thạc sĩ identicalness and similarity in examining trademarks in vietnam

MINISTRY OF EDUCATION AND TRAINING
FOREIGN TRADE UNIVERSITY

MASTER THESIS

IDENTICALNESS AND SIMILARITY IN
EXAMINING TRADEMARKS IN VIETNAM

Specialization: International Trade Law and Policy

NGUYEN THI HONG NHUNG

Hanoi, 2020


MINISTRY OF EDUCATION AND TRAINING
FOREIGN TRADE UNIVERSITY

MASTER THESIS
IDENTICALNESS AND SIMILARITY IN
EXAMINING TRADEMARKS IN VIETNAM

Major: International Economics
Specialization: International Trade Policy and Law
Code: 8310106

Fullname: Nguyen Thi Hong Nhung
Supervisor: Assoc. Prof., PhD. Le Thi Thu Ha

Hanoi, 2020

CERTIFICATION
I hereby certify that the thesis with the title “identicalness and similarity in
examining trademarks in Vietnam” is my own research and does not reproduce any
other materials. The data indicated in the thesis is clear, accurate and collected from
the confident sources of information.
The Author

Nguyen Thi Hong Nhung

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ACKNOWLEDGEMENTS
Throughout the course and completing this thesis research, I have received
valuable guidance, dedication and enthusiasm of my supervisors, my teachers, my
friends, my colleagues and my family. With all my respect and gratitude, I would
like to express my appreciation and sincere thanks to:
My special thanks to my supervisor- Assoc. Prof., PhD. Le Thi Thu Ha, who
was dedicated to guide and help me in the process of researching and writing this
thesis. Without her instructions and guidance, thesis might not be completed.
I would be grateful to my teachers in Postgraduate Education of Foreign Trade
University for interesting and useful lectures, for enthusiastic transmission of valuable
knowledge and for the best conditions offering in the process of the course.

I would like to express sincere thanks to my colleagues in Intellectual Property
Office of Vietnam in general and in Trademark Examination Center in particular for
supporting me with useful and plentiful data and their priceless experiences and
knowledge shared with me during the interview and daily working life.
My sincere thanks come to my friends and my family, especially my younger

sister, for their encouragement and supports during the courses, especially the
period of thesis research.
This thesis studies on identicalness and similarity in examining trademarks,
which is not a brand new topic in the world, but complicated and required various
technical knowledge, skills and practical experiences. Thus, the thesis has the
inevitable shortcomings and limitations. I am looking forward to receiving valuable
comments for improvement.
Sincerely

Nguyen Thi Hong Nhung

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TABLE OF CONTENTS
CERTIFICATION.................................................................................................... i
ACKNOWLEDGEMENTS.................................................................................... ii
LIST OF ABBREVIATIONS.................................................................................. v
LIST OF TABLES AND FIGURES...................................................................... vi
CHAPTER 1: INTRODUCTION.......................................................................... 1
1.1 The significance of thesis.............................................................................1
1.2 Research questions......................................................................................4
1.3 Research purposes.......................................................................................4
1.4 Scope of the research...................................................................................4
1.5 Research methodology................................................................................5
1.6 Significance to knowledge............................................................................5
1.7 Structure of the thesis...................................................................................6
CHAPTER 2: LITERATURE REVIEW............................................................... 7
2.1 Trademarks..................................................................................................7
2.2 Distinctiveness of trademarks and likelihood of confusion......................8

2.3 Trademark identicalness and similarity................................................... 10
2.4 Filling the gap............................................................................................ 11
CHAPTER 3: RESEARCH METHODOLOGY................................................ 12
3.1 Qualitative Data Collection....................................................................... 13
3.1.1 Data collection via desk research........................................................... 13
3.1.2 In-Depth Interview............................................................................... 14
3.2 Qualitative Data Processing and Analysis................................................ 15
CHAPTER 4: RESEARCH RESULTS............................................................... 20
4.1 Position of trademark identicalness and similarity examination...........20
4.2

Demand for conducting identicalness and similarity of trademark

examination in Vietnam..................................................................................... 22
4.2.1 Numbers of filed applications................................................................. 23
4.2.2 Numbers of third party’s opinions on the grant of protection titles.....27
4.2.3 Numbers of appeals................................................................................ 28
4.3 Criteria for identicalness and similarity examination of trademarks.....29

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4.3.1 Identicalness and confusing similarity of signs ...................................... 33
4.3.2 Identicalness and similarity of goods and services ................................. 57
4.4 Subjects of comparison as the control marks .......................................... 71
4.4.1 The prior registered trademarks .............................................................. 72
4.4.2

The widely used and recognized trademarks and the well-known

trademarks ......................................................................................................... 74
4.4.3 Another person’s mark which has been registered the registration
certificate of which has been invalidated for no more than 5 years ........... 75
4.4.4 Trade names............................................................................................. 75
4.4.5 Geographical indication and geographical indications being protected
for wines or spirits ............................................................................................ 77
4.4.6 Industrial Design ..................................................................................... 78
CHAPTER 5: RECOMMENDATION AND CONCLUSION ........................... 80
5.1 Recommendations ....................................................................................... 80
5.1.1 Policy and regulations .............................................................................. 80
5.1.2 Platform and Support Instruments .......................................................... 82
5.1.3 Enhancing examiners’ abilities ............................................................... 83
5.2 Conclusions ................................................................................................... 83
REFERENCES ........................................................................................................ 87
APPENDIX .............................................................................................................. 92

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LIST OF ABBREVIATIONS
IP

Intellectual Property

IPRs

Intellectual Property Rights

IPVN

Intellectual Property Office of Vietnam

TEC

Trademark Examination Center

WIPO

World Intellectual Property Organization

EUIPO

European Union Intellectual Property Office

JPO

Japan Patent Office

KIPO

Korean Intellectual Property Office

IP Law

Viet Nam Intellectual Property Law (IP Law) of
December 11, 2005, amended in 2009 and 2019

Circular

Circular No. 01/2007/TT-BKHCN of February 14,

2007 of the Ministry of Science and Technology,
guiding the implementation of Decree No.
103/2006/ND-CP of September 22, 2006 of the
Government, detailing and guiding the
implementation of a number of articles of the IP Law
regarding industrial property

Internal Guidelines

IPVN Guidelines on trademark examination

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LIST OF TABLES AND FIGURES

Table 1: Coding references...................................................................................... 17
Table 2: Statistics on filed national trademark applications and granted trademark
certificates in Vietnam from 1982 to 2019.............................................................. 24
Table 3:Trademark Identicalness and Similarity Definition.................................... 29
Table 4: Defining identicalness of two goods or two services.................................59
Table 5: Popularity of Legal Citations on Reasons for Refusals..............................73
Figure 1: Procedures of processing trademark applications in Vietnam..................22
Figure 2: Filed national trademark applications in Vietnam 1982-present..............26
Figure 3: Granted trademark certificates in Vietnam 1982-present.........................27
Figure 4: Number of third party’s opinions on the grant of protection titles filed in
IPVN....................................................................................................................... 28
Figure 5: Vietnamese numbers of appeals from 2005 to 2019................................. 29

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ABSTRACT
In the context of globalization and international integrations, goods and
services become more plentiful and diversified in the market. Trademarks emerge to
become more and more important in helping consumers distinguish goods and
services provided/produced by one to another enterprise. The confusion of
consumers on trademarks and brands due to similarity or identicalness brings
damages not only to themselves but also the goods and services suppliers.
Henceforth, cultivating a distinctive brand or trademark is a big question for
enterprises and it is essential to assess the distinctiveness of a trademark before
investing in developing their business.
In Vietnam, distinctiveness is assessed during in both stages of acquiring
exclusive rights and enforcing the rights on basis of absolute grounds and relative
grounds. Identicalness and similarity of a trademark play a key role in defining the
distinctiveness of a trademark on the relative grounds. This article shall provide a
picture on how identicalness and similarity are assessed in the process of examining
trademarks in Vietnam and dig deeper in how the legal frame for the issues is
interpreted and applied in the practice of examination.
Keywords: trademark identity, trademark identicalness, trademark similarity,
likelihood of confusions...

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CHAPTER 1: INTRODUCTION
1.1 The significance of thesis
A trademark is a type of intellectual property consisting of a mark of any form
used to distinguish products or services of a particular individual or enterprise from
those of others. It first appeared in the ancient world, which was thought to be first

used by a sword maker in Roman Empire named Blacksmiths (Richardson, 2008),
started to play an important role with industrialization, and emerging as a key factor
in the modern world of international trade and market-oriented economies. The first
legislative act was passed in 1266 under the reign of Henry III requiring all bakers
to use a distinctive mark for the bread they sold and began to be codified in modern
th

law since the 19 century in both civil and common law systems (Frank, 1925). For
the former, the French first comprehensive trademark system in the world was
passed into law in 1857 with the “Manufacture and Goods Mark Act”. For the latter,
the Merchandise Marks Act 1862 made it a criminal offence to imitate another’s
mark with “intent to defraud or to enable another the defraud” in Britain and its first
legislative act on registration of trademarks was passed in 1875 as “Trade Marks
Registration Act” (Bently, 2008).
All international treaties and national legal system, from Comprehensive and
Progressive Agreement for Trans-Pacific Partnership to the Agreement on TradeRelated Aspects of Intellectual Property Rights, from civil law system such as
French and Vietnamese to common law system such as the United Kingdom and the
United States of America, share the common understanding of definition and
functions of trademarks, however, differ one another in conditions governing
protection and acquisition of trademark rights. For instance, sound trademarks are
protected in some countries and regions like the United States of America, Australia
and European Unions and not protected in other countries such as Vietnam.
The conditions for a trademark to be protected are based on its distinctiveness
whether trademark rights are acquired via either use or registration. Distinctiveness
of trademarks are assessed base on two grounds: absolute grounds and relative

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grounds. The first accounts for inherent distinctiveness of a mark or whether they

are sufficiently distinctive, not deceptive, not immoral, etc.) while the second
assesses the distinctiveness of a mark (hereinafter called the contested mark or
junior mark) in comparison with the prior marks (hereinafter called the control mark
or senior mark).
The procedures of assessing trademark distinctiveness are also differentiated
from one country to another. In general, three typical approaches can be observed
internationally: British system, traditional French system and German system. For
the first, examination on absolute and relative grounds are provided, and also for an
opposition procedure. It is applied, in Europe, by countries such as Portugal, Spain
and the Northern European countries. For the second, IP offices examine only for
absolute grounds and the law provides for no opposition procedure. It is left to the
owner of the prior rights to bring a cancellation or infringement action against the
registration or use of a more recent sign. This system has also been adopted by
Switzerland. The third system provides for examination by the office for absolute
grounds and also for an administrative opposition procedure. It is a good
compromise between the more extreme systems mentioned before, and follows a
modern trend which is reflected in the proposed European Community Trade Mark
system.

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Vietnam adapted the British system, it conducted examination on both

absolute and relative grounds and offered administrative opposition procedure.
Throughout its history, trademarks have experienced great development in both
quantity and quality. Specifically, an estimated 10.9 million trademark applications
were filed worldwide in 2018 – about 1.7 million more than in 2017 corresponding to
growth of 19.2%, which marks a ninth consecutive year of growth. On national scale,
2

Vietnam has been experienced dramatic increase in trademark filed for 15 years .
Specifically, the total number of applications climbs from 14,916 to 53801, equivalent
3

to 360% and that number has continuously risen up for the last 10 years . In additions,
new forms of trademark besides conventional ones have been used in

1 Introduction to Trademark Law and Practice, WIPO,
1993 2WIPO annual report 2019
3
IPVN annual report 2019
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the market and also gained legal protection such as sound marks, smell marks, or
positions marks. Henceforth, the conditions of trademarks protection are always in need
of adjustment in order to live up with the revolutions of trademarks themselves.
Moreover, the assessment of trademark identicalness and similarity results in
different conclusions among countries due to territorial features. For instance, in case

of “

”, Sony Corporation filed trademark applications via Madrid

Systems and designated in 26 countries. With the same marks and the same goods
and service, there are three different results from different countries after the
process of examining its distinctiveness. In details, Sony Corporation received the
notifications of the total provisional refusal of protection from German and Spanish
Offices, the partial provisional refusal of protection from Chinese office, and no
notification from others (Which means those offices intended to grant protection

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titles) . Henceforth, studies on conditions for trademark protection on national
levels are always in need.
Additionally, the relative grounds for distinctiveness assessment, namely,
examination of identicalness and similarity of trademarks are “relative” and
dependent on many factors. Specifically, the influent factors that constitutes
confusion due to identicalness and similarity include sources of information used to
search for the control, the discenting opinions regarding whether exists the
confusing similarity or identicalness or not, the awareness of related public on the
goods and services that bearing marks, and so on. These factors are affected by the
information database, efficiency of search tool, examiners’ background and
experiences, national cultures, traditions and costumes, and literacy level of the
public... In short, the examination of identicalness and similarity is relative and
heavily relies on specific contexts of each case.
To sum up, identicalness and similarity in examining trademarks are always in
need of studying, especially in scope of national levels for three main reasons,
which are the dramatic increase in quantity and emerging diversity of trademark
4The final decisions may vary a little after exchanging information and amendments of applicants.
More information at />
3


applications, different decisions on whether granting the title of protection or
refusing protections and on the scope of protections, and the relativeness of
examination itself. In this paper, “identicalness and similarity in examining
trademark in Vietnam” is chosen to the thesis topic.
1.2 Research questions
This research focuses on answering the question:
“How are trademark identicalness and similarity examined in Vietnam?”

In order to find out the answer to that issue, the sub- questions are brought forward

- What are Vietnamese regulations governing or guiding trademark’s
identicalness or similarity?
- How are the regulations realized and applied in the practice of examining
trademark identicalness and similarity in Vietnam?
- Are there any issues arising during the examination process? If yes, what
are they and suggestions?
1.3 Research purposes
Regarding to the academic significance, the article hopefully contributes to
enrich the data source on industrial properties in Vietnam, especially, trademarks
which draw more and more attention from society and to make a thin line drawing
to worldwide intellectual property sketch.
For the social significance, this study is proposed to provide an overview on of
Vietnam regulations on trademark’s identicalness and similarity and its importance.
It also draws a big picture of the practice of examining trademark identicalness and
similarity in Vietnam and spots its area of difficulties and confusion. Finally, this
paper also mentions the experiences from other countries and lessons for Vietnam.
1.4 Scope of the research
Business is conducted worldwide and branding can be built up internationally,
however, this paper only focuses on a little angle of trademark, namely
“identicalness and similarity” in Vietnam only.
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During the time of IP revolutions in Vietnam, legal system has experienced the
development, changes and amendment due to the internal requirements of its
markets and the impacts of international treaties and conventions that Vietnam has
participated over time. However, in this paper, only regulations and related legal
texts issued since the introduction of Vietnam Law on Intellectual Property in 2005

are studied. Nonetheless, it is undeniable that the trademark applications and
registrations have been done before that point of time still have its merits on the
current applications as the seniors. In case those marks are the control marks for
examples discussed in this report, the application laws will be taken into account.
In terms of space, only the examination of trademark identicalness and
similarity in Vietnam is taken into consideration. Nevertheless, international
experiences in solving problems regarding to trademark identicalness and similarity
shall also be sought up.
In terms of issues covered, the paper, hopefully, can thoroughly discuss about
trademark identicalness and similarity in examining trademark as well as other
related matters such as opposition handling…
1.5 Research methodology
Qualitative approach is mainly used for this research with the aim of providing
a deep perspective of the issue. Secondary data will be collected via desk research
while primary data will be acquired via in-depth interview. The combination of
these two methods will compensate each other to give as comprehensive material as
possible. Information gathered will be analyzed, compared and summarized
systematically. Some statistics on trademarks application and opposition will also be
presented to draw the picture of current development. Case studies and experts’
opinion are another effective method that help clarifying the said issue.
1.6 Significance to knowledge
By drawing a big picture on “identicalness and similarity in examining
trademarks in Vietnam”, this paper shall be beneficial to the following entities. The
very first one who will find this paper useful are IP managers because it provides an
overview of the legal framework and practice of examining trademark’s identicalness
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and similarity in Vietnam over the time, which can be helpful to them to review the
subject easily. Second, examiners who directly examine trademark applications.

Diverse viewpoints on this familiar issue will give them a chance to look at that
from different perspectives. Last but not the least, the scientific report will be useful
to trademark applicants in defining infringement and filing oppositions or appeal.
1.7 Structure of the thesis
The thesis will be presented in five chapters. Besides the three main parts,
which are chapter 2, 3, and 4, the introduction, and conclusions and
recommendations of this paper will be given in in chapter 1 and 5 respectively.
First of all, the introduction will briefly give an overview of research
background, problem statement, and figure out the research question as well as how
this research is conducted and what it contributes to community. The structure of
the thesis will be presented here in order to make the understanding easier.
Second, chapter 2 – Literature review and theoretical framework will take a
look on prior national and international studies aiming at appreciating what have
been done and indicating the gap that need to be filled as well as build up the
framework for this thesis to be conducted.
Next, chapter 3 will focus on research methodology. As mentioned in
introduction, methodology will be discussed in details to make transparent how data
was collected and processed.
After that, the research results – one of the most important parts will be
presented in chapter 4. Overview of legal framework for trademark identicalness,
the current situation of how trademark identicalness and similarity are examined in
Vietnam, what are the difficulties and suggestions for the issues, as well as lessons
from some organizations and institutions will be covered in this chapter.
Finally, conclusions of the research will be drawn and recommendations will
be written in chapter 5.

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CHAPTER 2: LITERATURE REVIEW

2.1 Trademarks
Trademark as an intellectual property, is a very critical element in today’s
competitive market place and digital market space. Business enterprises are using
trademark as a legally protected valuable and important marketing tool for product
and service differentiation (Sople, 2014). They are used to support consumers to
select a product or service that promises a higher quality with good impression, a
good brand, and attractive. A recognized trademark and brand can be most valuable
intangible assets of a company. Trademarks create and protect the brands to generate
earnings and to differentiate from the competitors. The role of trademarks in the
market, especially for consumers’ benefits is emphasized by Vietnam Ministry of
Industry and Trade (MOIT) that a trademark identifies the manufacturer of an item
and is helpful for consumer judge the quality of the goods. A trademark also helps
them know where to find assistance when goods are not up to quality. (MOIT, 2010)
Generally, a “trademark” is understood as a “brand” (WIPO and KIPO, 2009).
Today, brands and trademarks are not only use by business sectors, but also
preferred and considered by nations and institutions to build the good image and
reputation. Precisely, business enterprises, institutions and nations are conscious and
interested to enhance the brands and trademarks value (WIPO, 2013). Based on its
forms, trademarks are classified in six groups including: verbal marks, numeral
marks, device marks, 3D marks, non-conventional trademarks (such as sounds,
smells, holograms, positions...) and combined marks. (Anh, 2010)
Henceforth, it is not surprising that the trademark owners go to great lengths to
protect them from infringement (Cohen 1986, 1991). The law regards trademark
infringement between competitors the same as if a person goes to the bank pretending to be
someone else, using a copied identification (McCarthy 1984, p. 108). That person cashes a
check, drawing funds from the other's account, because the bank teller has been confused
by the similarity of the identification. In an analogous manner, the owner of senior mark is
damaged when consumers choose junior mark thinking that they are purchasing the senior
one. In other words, confusion between trademarks implies that consumers do not get the
brand they intended to buy (Itamar Simonson, 1994).

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Therefore, the key issue to conclude whether not there is trademark infringement
lies in the likelihood of confusion between trademarks. In other words, likelihood of
confusion is the yardstick used to determine trademark infringement (Allen 1991).
According to trademark law, if an appreciable numbers of reasonable buyers are
likely to be confused by the similar trademarks, then there is liability for trademark
infringement or unfair competition (McCarthy 1984, p. 44).
However, assessment of likelihood of confusion is not only done in settling
disputes regarding trademark infringement but also done in the progress of
acquisition of trademark protections. More specifically, it is conducted in defining
trademarks distinctiveness on the relative grounds during the substantive
examination and/or oppositions and/or cancellations depending on national legal
system applied for trademark.
2.2 Distinctiveness of trademarks and likelihood of confusion
The likelihood of confusion is the risk that the public may erroneously believe
that the goods marketed under a trademark originate from the undertaking of the
owner of a senior mark or, as the case may be, an undertaking economically linked
to the latter. Such risk presupposes two cumulative conditions. They are that the
junior mark and the senior mark are identical or similar, and that the goods or
services covered in the application for registration are identical or similar to those in
respect of which the earlier mark was registered. If one of those conditions is not
satisfied, there cannot be a likelihood of confusion. Furthermore, the likelihood of
confusion will further depend on the degree of distinctive character or reputation of
the senior mark and the interdependence between the similarity of the trademarks
and the similarity of the goods and services involved. In addition, the likelihood of
confusion includes the likelihood of association (Paul Maeyaert and Jeroen
Muyldermans, 2013). The concept of likelihood of association is not an alternative
to that of likelihood of confusion but serves to define its scope. As a consequence,

where there is no likelihood of confusion on the part of the public, one cannot fall
back on there being a mere likelihood of association.
The likelihood of confusion must obviously be established in the mind of, or on

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the part of, the relevant public. Therefore, it is vital to determine the “relevant public”
both from a territorial perspective and in connection to the category of goods and
services. The relevant public for the assessment of the likelihood of confusion is
composed of users likely to use both the goods or services covered by the earlier marks
and those covered by the contested mark. The perception of the trademarks by the
average consumer of the goods or services in question plays a decisive role in the
global appreciation of the likelihood of confusion. The average consumer is deemed to
be reasonably well informed and reasonably observant and circumspect. However, the
diligent consumer processing on the interpretation of trademark information may result
in greater similarities between brands being observed by consumers. Highly motivated
consumers may evidence more brand source confusion than unmotivated consumers,
depending on the nature of the brand similarity presented, such as when brand names
share a common meaning. However, trademark information that is similar and easy to
process, such as sound, may have a significant effect on the judgments of lowinvolvement consumers. The research also brings forward the suggestion that courts
need to consider not only the degree of care exercised by consumers but also the
interaction between degree of care and the type of trademark information (similar
sound, similar meaning). They are likely to be presented in a marketplace setting.
Trademark law focuses on the total commercial impression represented by two brands
(Kirkpatrick 1998). It is possible that in a marketplace setting, where factors other than
name may vary among brands, greater consumer care or involvement may result in a
lesser likelihood of confusion because more diligent consumers will notice more
differences between brands. The value of this research lies in the demonstration that
greater consumer involvement may also result in people noting similarities between

brand names that might otherwise go unnoticed under low-care/low-involvement
conditions. Furthermore, consumers expending less care might not experience greater
confusion if comprehension of the trademark similarities requires a level of cognitive
processing that does not typically occur under low-involvement conditions.

It is convincing to say that the question of trademark infringement is primarily
one of the psychology of consumers (Richard C. Kirkpatrick, 1998). The average
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consumer normally perceives a trademark as a whole and does not analyze its
various details. It entails that two trademarks, in general terms, are deemed to be
similar when they are at least partially identical in terms of one or more relevant
aspects, namely the visual, aural, and conceptual aspects (from the point of view of
the relevant public). While the likelihood of confusion must be assessed globally,
each visual, aural, and conceptual component must be analyzed individually. In
order to assess the degree of similarity between the trademarks concerned, it is
necessary to assess the degree of visual, aural, or conceptual similarity between
them and, where appropriate, to assess the importance that has to be attached to
each of these factors, taking account of the category or categories of goods or
services in question and the circumstances in which they are offered for sale. (Paul
Maeyaert and Jeroen Muyldermans, 2013). Similarity between trademarks has been
called the “most important consideration and the “seminal factor” in determining
likelihood of confusion in trademark infringement cases. (EUIPO, 2020)
The likelihood of confusion arising from similarity in the sight, sound, and
meaning of trademarks is related to the degree of care consumers employ when
making marketplace evaluations and decisions. Degree of care refers to the extent to
which consumers consider product information when making purchases, such that
they will be more or less likely to distinguish trademarks and other source-related
information. The current position of the courts is that the higher (lower) degree of

care consumers exercise when evaluating goods, the lesser (greater) is the likelihood
of confusion between similar trademarks. Despite their important roles in testing
allegations of trademark infringement, the relationship between the concepts of
similarity and degree of care is not precisely specified in the legal domain
(Kirkpatrick 1998).
2.3 Trademark identicalness and similarity
Trademarks are considered identical or similar to one another if the signs and
goods and services bearing those signs are identical or similar. Henceforth, in order
to assess the similarity of marks, the global appreciation of the visual, aural or
conceptual similarity of the marks in question, must be based on the overall
impression given by the marks, bearing in mind, in particular, their distinctive and
10


dominant components. (EUIPO, 2020). In order to assess the similarity of the
phonetic similarity measurement of trademarks means to compare two words or two
sentences numerically (Kyung Pyo Ko, Kwang Hee Lee, Mi So Jang, and Gun
Hong Park, 2018).
2.4 Filling the gap
Identicalness and similarity emerging as a vital part of examination of trademarks draw
great attention from many institutions and researchers. Researches on trademarks are
plentiful. However, further studies on how to assess identicalness and similarity of
trademarks that lead to confusion to consumers is still needed, especially in Vietnam.
Henceforth, this research is hoped to fill a dot in the worldwide picture on trademark
identicalness and similarity examination in Vietnam.

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CHAPTER 3: RESEARCH METHODOLOGY

Qualitative research approach shall be used to conduct this research. Primarily,
it is exploratory research which is used to obtain an understanding of underlying
reasons, opinions, and motivations and bring forward insights into the problem or
helps to develop ideas or hypotheses for potential quantitative research, as well as
discover trends in thought and opinions, and dive deeper into the problem.
Qualitative research is different from quantitative which is used to quantify
attitudes, opinions, behaviors, and other defined variables and generalize results
from a larger sample population by generating numerical data or data that can be
transformed into usable statistics.
In this paper, qualitative research is chosen for several reasons. First of all, the
thesis aimed at providing a deep understanding and realization of regulations
regarding trademark identicalness and similarity in the practice of examination in
Vietnam. To that ends, qualitative research is a perfect choice. Moreover, in order to
gain insights in the said issues, diving deeper in the technical field of trademark
examination is needed. In additions, the object of research itself (identicalness and
similarity) itself is unquantifiable. Henceforth, qualitative research is appropriate
approach to the topic research.
Specifically, the qualitative methods of collecting data include desk-research in
order to collect documents and information on cases study and in-depth interviews. For
the first, it is hoped to enrich the picture of the examination practice with solid
theoretical background and in comparison with other countries. For the second, it helps
to dive into the insights of examiners who perform examination in person. There are
differences between qualitative data collection and quantitative data collection.
Quantitative data gathered by desk research and interviews can be transformed into
numbers for further analysis with a set of variables so that the patterns are uncovered.
Unlikely, qualitative data are non-numeric and processed by text analysis so as to
discover the insights of issues. Accordingly, the questions for qualitative and
quantitative interviews are different. For the former, interview questions are usually
unstructured or semi-structured and leave space for interviewee interactions and flows
of conversation. For the latter, interview questions are well structured with

12


multiple choices and some open questions for interviewees to express their ideas. In
terms of sample, qualitative quota is small while quantitative needs to be large.
However, in the thesis, some statistics are collected and compared in order to make
the picture of the practice of examination in Vietnam more colourful.
On analysis data, both general research methods of social sciences and
humanities and specific research methods of legal science are applied. In terms of
former, they are historical, statistic, analytic-synthetic and descriptive methods. In
terms of the latter, they include regulation analysis, cases study discussion and
interpretation, and comparing laws. Those collecting and analysis methods shall be
presented in details.
3.1 Qualitative Data Collection
3.1.1 Data collection via desk research
Sources of information that is intended to be exploited for this dissertation
comprise of articles and pieces of research findings by Vietnamese and foreign
experts and researchers in intellectual property fields, guidelines and statistics
conducted and introduced by national and international intellectual property
institutions and organizations in order to build up the overall system of basic
concepts regarding trademarks, likelihood of confusion of trademarks and similarity
and identicalness of trademarks. Specifically, the main sources include Vietnam
National Office of Intellectual Property (IPVN), World Intellectual Property
Organization (WIPO), International Trademark Association (INTA), European
Union Intellectual Property Office (EUIPO), and other national offices of
Intellectual Property such as Japan Patent Office (JPO) and United States Patent and
Trademark Office (USPTO) database and publications. Another informative source
includes articles, books and other references
This method of collecting data has been popular for its tremendous advantages.
First, it provides a large-scale source of information, not only nationwide but also

worldwide scientific research findings shall be collected in order to draw out a bigger
picture of the same issue for comparison and self-reflection. Moreover, what have been
already found over the times are also inherited and analyzed and systemized

13


again. As a research, a comprehensive overview of the issue shall be conducted for
readers. In additions, secondary data is, nowadays, easier to access online thanks to
development of technology. Finally, desk research is quite cheap in comparison with
other data collection methods. Most of pieces of data are free to access to public,
some are free to members and those who registered. Only small percentage of
articles require payment. Moreover, one paid articles are willing to be shared by the
author if there is a contact via email. Henceforth, desk research is quite easy and
cheap to access and grasp.
However, desk research has revealed some disadvantages. First, since the
research findings has been proved for ages, they might be outdated and inaccurate
for the current rapid developing context. Due to the breakthrough of technology and
communications, the world has changing so fast in every perspective, including IP.
For instance, in the past, only visible trademarks were used for goods and services
to differentiate one’s from one another’s. However, trademarks have been evolved
to other forms such as sounds, smells, single colours, positions, short video clips,
and so on. Along with that, trademark infringement related to internet domain name
is an emerging issue which attract lots of attention in time being. Therefore, the
research conducted on simply traditional trademark infringement seems to not to be
timely and completely comprehensive despite of its undeniable contribution to
scientific fields. Second, the secondary data from previous researches is designed
for this research, which make it not totally suitable for the paper. Third, the data
might be biased and it is hard to know the information was collected is accurate. As
the result, in-depth interview shall also be conducted to gather information filling in

the gap that desk research leaves behind.
3.1.2 In-Depth Interview
In-depth interviews are chosen to collect primary data on the practice of
examining trademark identicalness and similarity with the aim of fulfilling the gap
that desk research left behind.
3.1.2.1 Designing interview questions
The interview questions are designed in the semi-structured format. Henceforth,

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some questions are drafted by the thesis author before the interview and revised
after mock interview with two mock interviewees: a researcher at Vietnam- Japan
university and a trademark examiner at TEC. The pre-designed questions are
presented in Appendix I of the thesis in both Vietnamese and English versions.
During the time of interview, the researcher may ask more or skip some questions
depending on the conversation with interviewees depending on the flows of
conversations and time limitation of each interview.
3.1.2.2 Choosing sampling
Convenience sampling is chosen for this research due to several reasons. First,
it is easy for researchers to approach experts in the area, who are trademark
examiners, intellectual property policy makers and advisors because she is working
in the field of intellectual property or more specifically, trademark related issues.
Second, this type of sampling is time and cost effective thanks to the “convenience”
that the researcher enjoyed due to the geographical advantages.
The targeted interviewees of this research are mostly trademarks examiners
and some legal officers. The researcher shall get access to at least every two
examiners from each division of Trademark Examiner Center in Vietnam (TEC).
Moreover, TEC has five divisions, thus at least 10 examiners shall be involved in
the interviews. Other interviewees shall be those from Legal Division of IPVN.

3.2 Qualitative Data Processing and Analysis
For interviews, the “raw materials” including recordings and notes shall be
transcribed in Vietnamese and translated into English before coding.
Data collected via desk research and interview shall be coded into different
categories using Hyper Research or manually in excel files. Demonstration is given
as the following image and as in the image.
For analysing data, both general research methods of social sciences and
humanities and specific research methods of legal science are applied. In terms of
former, they are historical, statistic, analytic-synthetic and descriptive methods. In
terms of the latter, they include regulation analysis, cases study discussion and
interpretation, and comparing laws.
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Historical methods are used to study the process of development of trademarks as
well as examining trademarks in Vietnam and other countries while statistic and
analytic-synthetic methods are utilized to draw out the continuously increasing demand
for trademark identicalness and similarity examination since 1982 until now.

The descriptive methods, together with regulation analysis, cases study
discussion and interpretation are applied in order to examine different aspects of
practical cases so that the picture on the practice of assessing identicalness and
similarity in Vietnam as well as support other methods.
The methods of comparing laws are also utilized in the research in order to find
out the similarities and differences between Vietnamese law and other countries’. As a
result, some lessons and experiences for Vietnam shall be drawn out.

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