Use a useful concept in trade mark law comparing vietnamese, EU and US law

S t r e n g t h e n in g
L e g a l E d u c a t io n
in

V ie t n a m

A S lD A S U P P O R T E D P R O JE C T

Joint Swedish-Vietnamese
Master’s Programme

MASTER’S THESIS

D a m T h i D ie m H a n h

“Use”- A Useful Concept in
Trade Mark Law
Comparing Vietnamese, EU and US law.
S u p e r v is o r s :

Hans Henrik Lidgard
Pham Van Tuyet

IRUP N G D A I H O C I U A T H A N O l

jH O N G D p c^ Jgx j


Preface and Acknowledgements
A trade mark is not a concrete product as such but it is important to an undertaking

wishing to enter the market and improve his reputation there. In fact, a trade mark is
a type o f intellectual property right and one which is infringed more easily than
others; the protection of trade marks has both a national and global scope. In order to
be

protected, trade

marks must satisfy certain requirements.

In general,

distinctiveness is the most essential o f these requirements and is normally inherent in
a good trademark, but distinctiveness can also be acquired through use. Use is a
complicated but very useful concept in .trade mark law. This issue is treated in many
countries but remains vague in Vietnamese legislation. I think the topic is very
interesting and I decided to choose it for my master thesis.
I would like to express my heartfelt gratitude to my supervisors, Pro. Hans Henrik
Lidgard and Dr. Pham Van Tuyet who supported me, made valuable comments and
gave me precious advices to improve my paper.
I am grateful to Dr. Christoffer Wong for his guidance and help during my course.
I would also express my special thanks to the professors in the Law faculty o f Lund
University and the professors o f Ha Noi Law University for sharing their knowledge
with me.
I would like to express my sincere thankfulness to my friends and my colleagues
for their warm support, help and love.
Finally, I am grateful to my parents, husband and children who encouraged me
throughout my studies and my work on this paper.
Even if I tried my best, my thesis contains many shortcomings. I would be grateful
for any further comments and suggestions regarding my thesis.
Ha Noi 2009

Dam Thi Diem Hanh

1


Table of Contents

Preface and Acknowledgements.......................................................................................... 1
Table o f Contents..................................................................................................................2
Abbreviations........................................................................................................................ 4
Executive Summary.............................................................................................................. 5
1.

Introduction.............................................................. •............................................7

1.1

Rationale.................................................................................................................. 7

1.2

Purpose and Research Questions...........................................................................7

1.3

M ethod......................................................................................................................8

1.4

Delimitation............................................................................................................8

1.5

Research Sources.....................................................................................................8

1.6

Main Content........................................................................................................... 8

2.

Some Issues Relating to Trade Marks and Distinctiveness................................ 9

2.1

Definition of Trade Mark under International and National Law...................... 9

2.1.1
2.1.2
2.1.3
2.1.4

International L aw ............................................................................................... 9
Vietnamese Law................................................................................................10
E U L a w ..............................................................................................................10
US Trademarks Law......................................................................................... 13

2.2

International Agreements Regulating Trade Marks........................................... 15

2.2.1
2.2.2
2.2.3

The Paris Convention....................................................................................... 15
The Madrid System.......................................................................................... 16
T R IP s.................................................................................................................17

2.3
2.3.1

Distinctiveness as a Requirement for Registration............................................ 19
The Notion of Distinctiveness in Trade Mark Law.......................................19

2.3.2
2.3.3

Determining Distinctiveness........................................................................... 19
Distinctiveness under National Trade Mark L a w ........................................ 20

3.

Acquiring Distinctiveness through U se..............................................................29

3.1

The Notion of Use in Trade Mark Law and the Importance of Use................ 29

3.1.1

3.1.2

'

The Notion of Use in Trade Mark Law.........................................................29
The Importance of Trade Mark U se............................................................... 30

3.2
3.2.1
3.2.2

Acquiring Distinctiveness Through Use in Vietnam.........................................31
Elements Making a Trade Mark Distinctive Through U se ..........................31
Certain Trade Marks can Never Acquire Distinctiveness through U se.. 33

3.3

Acquiring Distinctiveness in the EU................................................................... 34
2


3.3.1
3.3.2
3.4

Elements Making a Trade Mark Distinctive Through U se....................... 34
Certain Trade Marks Can Never Acquire Distinctiveness through Use . 39
Acquiring Distinctiveness in U S....................................................................... 42

3.4.1

3.4.2

Secondary Meaning and Descriptiveness...................................................42
Elements Making a Trade Mark Distinctive Through U se ....................... 44

3.4.3

Certain Trade Marks can Never Acquire Distinctiveness Through U se. 46

4.

Comparative Analysis and some Guidance for Vietnamese IP L aw ............ 47

4.1

The Definition of Trade M ark.......................................................................... 4 7

4.2

Signs can Acquired Distinctiveness Through Use.......................................... 47

4.3

Elements Making Trade Mark Distinctive Through Use and Examining
Distinctiveness................................................................................................... 49

4.4

Certain Trade Mark Can Never Acquired Distinctiveness Through U se .... 50

5.

Conclusion...........................................................................................................51

Table o f Statutes and other Legal Instruments...............................................................52
International Treaties and Conventions........................................................................... 52
National Legislations......................................................................................................... 52
Vietnam 52
European U nion.................................................................................................................. 52
United State of America..................................................................................................... 53
Table o f Cases..................................................................................................................... 53
Bibliography.........................................................................................................................55
M onographs.........................................................................................................................55
Articles in Journals, Anthologies etc................................................................................. 55
Internet Resources............................................................................................................... 55
Official Reports and other Documents..............................................................................56


Abbreviations

Art.

Article

BoA

Boad o f Apeal

CFI

The Court of First Instance

ECJ

The European Court of Justice

EU

European Union

Ibid.

Ibiden

IP

Intellectual property

IR

Commission Regulation (EC)No.40/94 No. 2868/95

No.

Number

NOIP

Nation Office of Intellectual Property o f Vietnam

OHIM

The Office for Harmonisation in the Internal Market

TMEP

Trademark Manual o f Examining Procedure

US

United States of America

4


Executive Summary

The essential function of a trade mark is to distinguish one undertaking and/or its
products from the products o f another. Distinctiveness is a central criterion during
the registration process. Distinctiveness may arise in two ways:

inherent

distinctiveness or distinctiveness through use. The thesis investigates how
trademarks acquire distinctiveness through use.
The concept o f “use” is fundamental to trade mark law in many countries. Is the
concept always understood in the same way?
In m y country, Vietnam, this issue is regulated by Intellectual property law but the
notion o f “use” remains vague and unexplained. Therefore, I want to compare
Vietnamese, EU and US law on how trade marks may become distinctive through

use and draw conclusions as to how Vietnam can improve its legislation. I chose EU
and US law because they are developed regions with a long tradition of trade mark
law and development.
In this thesis, I use various methods to deal with my subject. A descriptive,
traditional legal method will be used to analyse regulations, doctrines and cases in
Vietnamese, EU and US trade mark law with the focus always on how trademarks
may become distinctive through use.
An analytical and comparative method is used to compare Vietnamese law, EU
law and US law. I also use the synthetic method to give opinions and brief
conclusions on each issue.
The thesis will only investigate how trade marks may become distinctive through
use and what elements make trade marks without any inherent distinctive character
gain such distinctiveness. In addition, the thesis only deals with Vietnamese,
European Community and US trade mark legislation
The thesis is divided into 5 parts:
In the first part, there are some general remarks concerning the rationale for the
choice o f topic and the methods used for researching and delimiting it.
In the second part, certain general trade mark issues are-reviewed. I refer to
international agreements in order to underline that trade marks are important not only
in each nation but also throughout the world. In this part, a definition of trade mark is
given and distinctive character is emphasized as a requirement for registration.

5


In part 3, the thesis will investigate how trade marks acquire distinctiveness
through use in Vietnam, the EU and the US. Based on statutes, doctrine and cases, I
will focus on how signs can acquire distinctiveness through use and while certain
trade marks can never acquire distinctiveness in this way.
Part 4 is a comparative analysis of the issues mentioned in chapter 2, contrasting

separately Vietnam - EU, Vietnam - US and EU - US. I will investigate similarities
and differences between each of these pairs and give some suggestions for improving
Vietnamese legislation
In part 5 , 1 will draw some brief general conclusions.

6


1.

Introduction

1.1

Rationale

Intellectual property plays an important role in the industrial development process.
Director General Arpad Bogsch introduced the World Intellectual Property
Organization Conference at the Louvre, Paris on June 1-3, 1994* and said that:
Intellectual Property’s prime aim is the recognition o f the moral and economic
value of intellectual creation in the cultural, social and economic development of
nations.

Trade mark is one o f area of intellectual property. As we know, a trade mark is not a
product but it has great significance in commerce. The essential function o f the mark
is to distinguish one undertaking and/or its products from the products o f another. It
can give the consumer a guarantee o f the identity and quality o f a product. This
distinctive function is the main condition for registration.
It is impossible to accept all signs that undertakings register as trademarks. There
are many grounds for refusal, including a lack o f distinctiveness. However, a trade

mark may become distinctive through use. What is “use”? What elements make
unregistered trade marks, which do not otherwise meet distinctiveness requirements,
become distinctive through use?
The notion o f “use” in trade mark law is regulated in many countries but often in
different ways. Vietnamese law does attempt to regulate it, but the notion remains
vague and unexplained. Investigating Vietnamese law by comparing it to EU and US
law is interesting. My master thesis thus deals with “Use”- A useful concept in
trade mark law - Comparing Vietnamese, EU and US law”

1.2

Purpose and Research Questions

The purpose o f the thesis is to compare Vietnamese, EU and US law on how trade
marks may become distinctive through use and to draw conclusions as to how
Vietnam can improve its legislation.
The research questions are:
How do trade marks acquire distinctiveness through use?
Which trade marks can never acquire distinctiveness through use?
How to improve Vietnamese law on this issue?

! Trittion. G (2002), p.3.

7


1.3

Method

A descriptive, traditional legal method will be used to analyse regulations,
doctrines and cases in Vietnamese and the EU and US trade mark law with the focus
always on how trademarks may become distinctive through use. Source for my work
will be trade mark legislation case law and legal theories, opinions and commentaries
Because this is a work which refers to the relevant position in several countries,
an analytical and comparative method is used to compare Vietnamese law, EU law
and US law regarding how trade marks may acquire distinctiveness through use.
Based on the factual presentation and the analytical comparison, the author will use a
synthetic method to give her opinions and brief conclusions on each issue.

1.4

Delimitation

Distinctiveness may arise in two ways: “inherent distinctiveness” or “acquiring
distinctiveness through use”. The thesis only investigates how trade marks acquire
distinctiveness through use.
The thesis also only deals with Vietnamese, European Community and US trade
mark law. The reason for my selection o f the two areas o f comparison is that they are
two distinct legal systems with different approaches while both o f them have a long
tradition in and experience of trade mark law.

1.5

Research Sources
-

Trade mark legislation in Viet Nam, EU, US
Cases
Legal theories, articles, opinions, commentaries...

1.6

Main Content

Part 1: Introduction
Part 2: Some issues relating to trade marks and distinctiveness
Part 3: Acquiring distinctiveness through use
Part 4: Comparative analysis and some guidance for Vietnamese IP law
Part 5: Conclusion

8


2.

Some Issues Relating to Trade Marks and
Distinctiveness

2.1

Definition of Trade Mark under International and
National Law*

2 . 1.1

International Law

Owing to the importance o f trade marks, there are many international agreements in
the trade mark field. They include the Paris Convention, the Madrid system and

TRIPs which all have members from all over the world. None o f these Agreements
have however defined the concept “trade mark” except for TRIPs.
Art. 15 o f TRIPs stated:
Any sign, or any combination o f signs, capable o f distinguishing the goods or
services of one undertaking from those o f other undertakings, shall be capable of
constituting a trademark. Such signs, in particular words including personal names,
letters, numerals, figurative elements and combinations o f colours as well as any
combination o f such signs, shall be eligible for registration as trademarks. Where
signs are not inherently capable o f distinguishing the relevant goods or services,
Members may make registrability depend on distinctiveness acquired through Use.
Members may require, as a condition o f registration, that signs be visually
perceptible.

From this, it seems that three points are relevant and will need to be considered:
Firstly, a trademark consists o f any sign, or any combination o f signs. Such signs
which can be trade marks are words including personal names, letters, numerals,
figurative elements and combinations o f colours as well as any combination o f such
signs;
Secondly, such signs may be visually perceptible or any signs which shall be
eligible for registration as trademarks;
Thirdly, such signs which are capable o f distinguishing the goods or services o f
one undertaking from those o f other undertakings.
In brief, the basic notion of the trade mark under international law is general and
flexible. Members can provide their own definition based on their social and
economic needs.

* References to trade marks include service marks unless otherwise stated.

9

2.1.2

Vietnamese Law

Vietnam is a member o f the major international trade mark treaties including the
Paris Convention and the Madrid International Trade Mark Registration System
(Madrid Agreement and Madrid Protocol), TRIPs.
In the past, intellectual property rights in Vietnam were governed by various
codes, decrees and circulars, as well as by internal regulations issued by the NOIP.
The new IP law was promulgated in late 2005 and came into effect in July 20062.
There is no provision of Vietnamese law which gives a definition o f “trade mark”.
In the IP law, some help is to be found in the section on the interpretation of
terminologies (Art4 (16)). According to this, a trade mark is “any sign used to
distinguish goods or services o f different organizations and individuals

However,

not all signs can seek protection as trade marks. There are general requirements for
marks to be eligible for protection under Art 72, which provides that:
“A mark shall be eligible for protection if it meets the following conditions:
To be a visible sign in the form o f letters, words, pictures, figures, including threedimensional figures or a combination thereof, represented in one or more colours;
To be capable o f distinguishing goods or services of the mark owners from those o f
others”

From this, a sign may only become a trade mark if it satisfies two conditions. The
first is that it is a “visible sign”. This condition is narrower than the provision in
TRIPs on “any signs”. This mean that, smell signs and sound signs cannot be
registered as a trade mark under Vietnamese law. The second, “capable of
distinguishing” is a compulsory condition for a trade mark. This also serves the main

function o f a trade mark. This character is to .be found in international agreements on
trade marks and in the laws o f other countries.

2.1.3

EULaw

A trade mark definition under EU law is to be found in Directive No.89/1043 and
Regulation No 40/94.4 In order to be capable o f registration, a mark must fall within
the definition of a trade mark as set out in Art.2 o f Directive 89/104 and Art.4 o f the

2 The Law on Intellectual property was approved by the Vietnamese Parliament in 29 November,
2005. Law No.50/2005/QH11, legislature XI, Session 8, came into force in 1 July 2006.
3 First Council Directive 89/104/EEC of December 21st 1988 approximating the laws of the
Member States relating to trade mark.
4 Council Regulation (EC) No40/94 of 20 December 1993 on the Community trade mark.

10


Regulation No.40/94. The article is entitled “Signs o f which a trade mark may
consist” and provides:
A community trade mark may consist o f any signs capable o f being represented
graphically,

particularly words, including personal names, designs, letters,

numerals, the shape o f goods or their packaging, provided that such signs are
capable of distinguishing the goods or services o f one undertaking from those o f
other undertaking.

This contains three basis requirements. To qualify a trade mark, the candidate must
be (1) a sign which (2) is capable of being represented graphically and which (3) is
capable o f distinguishing the goods and-services o f one undertaking from those o f
other undertakings.
The word “sign” in this context is understood to be very wide and makes the
definition o f trade mark “flexible and open-ended”5. Although Art.4 of the
Regulation No.40/94 gives a list of signs, i.e., words including personal names,
designs, letters, numerals, or the shape o f goods or their packaging, they are not an
exhaustive list. These signs are merely the ones most frequently used by
undertakings to identify their goods or services. In fact, there are many unusual signs
which do not fall within this list but are still registered by the competent authority.
Although not specifically stated, “sign” in this broad definition could include
slogans, sounds, smell and gestures. As the Board o f Appeal at the OHIM said, the
notion o f a sign “is to be interpreted as a very broad, open and general term
encompassing all conceivable types o f marks (including, for example, sound marks
and three-dimensional marks)”.6
Nonetheless, in order to be registered, the sign must be “capable o f being
represented graphically”. The purpose o f its character is to show what the trade mark
is. In other words, it must be possible to understand the sign and a trade mark must
be perceivable by consumers through one, or even more, o f the five senses. In recent
years, the issue o f graphical representation has become the focus o f attention in
relation to smell, sound and colour marks. For example, the smell o f freshly cut grass
for tennis balls, the sound o f NOKIA,7 the sound mark o f British Telecom’s beeps on
the speaking clock, the three-dimensional form o f the COCACOLA bottle8...

5 Kitchin, D (2005) p. 13
6 R122/98-3, Wm. Wrinley, para.17
Sandri. S (2003), Non-convention trade marks and community law, p.332, 333
? Annard. R, et al (1998), Guide to Community trade mark, p .29.

11


The requirement o f graphic representation is necessary for the following reasons.
The first is to enable publicity to be given to the fact that applicant is seeking
registration. The second reason is to determine the scope of existing trade mark
rights and to allow the owner o f earlier marks to check for similar marks in new
applications. The third reason is to make bureaucratic handling, classification and
comparison with other signs more manageable.
How is the phrase “capable of being represented graphically” to be understood?
The basic rules governing representation and the community trade mark are set
out in Rule 3 o f the IR.9 This states that if the applicant does not wish to claim any
special graphic feature or colour the mark must be reproduced in normal script, for
example by typing the letters, numerals and signs in the space provided in the
application. The use o f small and capital letters is permitted. Paragraph (2) and (3) o f
Rule 3 then go on to state that, in other cases the application must indicate this fact
and the mark must be reproduced on a separate sheet o f paper. The implication of
Rule 3(1) o f the IR is that non-stylised word, numeral and letter marks may simple
be typed or written into the applicant form. However, this could be made clearer on
the OHIM application form, which requires the applicant to represent anything other
than a work mark on the separate sheet and to specify in the application the type o f
mark applied for.
Rule 3(3) o f IR state that where registration o f a three dimensional mark is applied
for the application must indicate this fact. The representation must consist o f a
photographic reproduction or a graphic representation of the mark. Up to six
different perspectives may be supplied on the one sheet.
Where registration in colour is applied for the application must indicate this and
indicate the colours making up the mark. The applicant is free to use his own
description o f the colours. The reproduction supplied must consist of the colours

applied for.
Rule 3 o f the IR gives no guidance on the representation o f a sound mark other
than that it must be on a separate sheet of paper. The OHIM Examination
Guidelines10 state that musical notation may be an acceptable form of graphic
representation.

9 C om m ission R egulation (EC) No. 2868/95

10 Exam ination Guideline, 8.2.

12


There is no mention o f the smell/ scent mark in either the IR or the Guidelines 3.7.
Such marks are very difficult to represent, especially as they are not natural smells
and they are often refused registration as trade marks. In R a lf Siekmann, the olfactory
smell was not registered as a trade mark because “the requirements o f graphic
representability are not satisfied by a chemical formula, by a description in written
words, by the deposit o f an odour sample or by a combination o f those elements”.11
A graphic representation was one which utilizes images, lines or characters. In order
to render a sign registrable as a trade mark the graphic representation must be “clear,
precise, self-contained, easily accessible, intelligible, durable and objective”.12
There are many different techniques that applicants may use to represent their
mark graphically. For example, “word marks” are written, device or “figurative”
marks are represented by a picture.13
The basis requirement of a trade mark is that is “capable o f distinguishing the
goods and services o f one undertaking from those o f other undertaking”. This issue
will be examined in part 2.3 o f this Chapter.

2.1.4

US Trademarks Law

US trade marks are governed by the provisions o f the Lanham Act14. In contrast to
Vietnamese and EU trade mark law, the Lanham Act lays down statutory boundaries
for trademarks and service marks.
According to Sec. 1127 Lanham Act, the term “trademark” is explained as follows:
The term "trademark" includes any word, name, symbol, or device, or any
combination thereof (1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to
register on the principal register established by this chapter, to identify and
distinguish his or her goods, including a unique product, from those manufactured
11 Case C-273/00 [2000] ECRI-11737, Ralf Sieckmann, para. 73
12 Case C-273/00 [2000] ECRI-11737, Ralf Sieckmann, para. 55
13 Commission Regulation (EC)No.2868/95, Rule 3(5)
14

The current federal trademark statute is the Lanham Act of 1946, most recently amended in

1996, and codified in Title 15 of the United States Code. Its purpose is toeliminate unfair competition
in marketing goods and services and to provide the owners of marks with protection against
confusingly similar marks. It covers such areas as when owners of mark are entitled to federal
protection for infringement, the types of protections available and the procedure for registering marks.
It allows for registration of service marks.

13


or sold by others and to indicate the source of the goods, even if that source is
unknown.

The definition conflates two very different functions of the trade mark: first, to
indicate the source o f goods, and second, to distinguish those goods from the goods
of others.
Traditionally, trademark protection in the United States was reserved for marks
that are easily perceived as source identifiers, such as words, names, acronyms,
logos, and graphic symbols. However, it has gradually extended trademark protection
to other categories o f marks that are not so easily perceived as source identifiers,
such as product configurations, colors, sounds, scents, motions, and holograms.
Sec. 1052 Lanham Act established which marks may qualify for registration on the
Principal Register. Provided that a mark distinguishes its goods from those of others,
there is a presumption in favor of registration unless registration is barred by virtue
of certain specific prohibitions: ‘Wo trademark by which the goods o f the applicant
may be distinguished from the goods o f others shall be refused registration on the
principal register on account o f its nature... ”.
Thus, any sign which may be distinguished from the goods of others is potentially
a trademark.
Notwithstanding what a trade mark is, that it is “capable o f distinguishing” is
always an essential characteristic. No sign will become a trade mark if it does not
satisfy this. The trademark laws of Vietnam, the EU and the US do not provide full
definitions o f the term. The notion o f trade mark is understood through other
provisions which listed signs, in particular conventional ones, which may be
registered as trade marks. Non-conventional signs (smell, sound, slogan...) were not
well covered by existing law.
Note that Vietnamese law only recognizes “visual signs” while the EU and the US
both accept “any sign” as being capable o f being trade marks.
Although there are differences in the understanding o f trade marks, in all three
jurisdictions, they serve the same function or purpose. And having a distinctive
feature is always a condition for registration.

14


2.2

International Agreements Regulating Trade Marks

2.2.1

The Paris Convention15

The Paris Convention signed in Paris, France, on March 20, 1883, was one of the
first intellectual property treaties. It can be seen, indeed, as the “ancestor” of later
conventions in the field. The Convention applies to industrial property in the widest
sense, including patents, marks, industrial designs, utility models (a kind of “small
patent” provided for by the laws o f some countries), trade names (designations under
which an industrial or commercial activity is carried on), geographical indications
(indications o f source and appellations of origin) and the repression of unfair
competition. (Copyright and unregistered designs are covered by the Bern Copyright
Convention of 1886)
The substantive provisions o f the Convention fall into three main categories:
national treatment, right o f priority, common rules.
Under the provisions on national treatment, each Convention country must grant
the same protection to nationals o f the other Convention countries as it grants to its
own nationals. These provisions also protect nationals o f non-convention countries if
they are domiciled or have a real and effective industrial or commercial
establishment in a Convention country.
The second important element was establishment o f a right o f priority in the case
o f patents (and utility models, where they exist), marks and industrial designs. This
right means that, the applicant who files the first application in one of the Convention

countries may, within a certain period o f time, apply for protection in any other
Convention country. These later applications will be regarded as if they had been
filed on the same day as the first application.
The Convention lays down a few common rules which all the Convention
countries must follow.
As to trade marks, the most important common rule is the independence o f the trade
mark in different member states. But there is no regulation o f the conditions for the
filing and registration o f marks. These issues are determined in each Convention
country by domestic law.
15

The Paris Convention for the Protection of Industrial Property was signed on 20 March

1883. It came into effect on 7 March 1884 and has been revised in Brussels in 1900, in
Washington in 1911, at the Hague in 1925, in London in 1934, in Lisbon in 1958 and in
Stockholm in 1967; it was last amended in 1979.

15


In relation to
(i)

to

trade marks, the Convention obliges its signatories:
protect well-known marks belonging to nationals o f Convention

countries (Art 6bis);
(ii)

to

prevent the use and registration o f “armorial bearing, flags anc

emblems” o f Convention countries (Art 6ter);
(iii)

to provide effective protection against unfair competition (Art 1Obis) and;

(iv)

to accept for registration any trade mark which has been duly registered ii
its countries o f origin (Art 6quinquies - the so-called “telle-quelle’
obligation)

This Convention provides certain overriding principles with the aim o f facilitating
international trade and collaboration. Substantive provisions regarding protection o:'
intellectual property rights are not covered and nor are the distinctive features of
trade marks.

2.2.2

The Madrid System

The “Madrid system” collectively refers to two separate treaties:
(a) The Madrid Agreement concerning the International Registration o f Marks
which was concluded in 1891, entered into force in 1892 and was last revisec
at Stockholm in 1967 (the Madrid Agreement); and
(b) The Protocol Relating to the Madrid Agreement which was adopted in 1989

entered in force on 1 December 1995 and came to operation on April 1996
(The Madrid Protocol)
Each treaty provides for the international registration o f mark for goods and services
and creates what is essentially a filing system.
While the Paris Convention was o f some assistance to transnational traders, ii
failed to create a mechanism for international applications for marks. However, the
Madrid system provides just such a mechanism. Under these arrangements, aftei
making a “home registration” or “home application”, an individual or company maj
apply to the Bureau o f the WIPO for an international registration. The Bureau passes
the application on to relevant national trade mark offices. If the Offices of the
contracting parties do not refuse the application within the time limit given, it i;
treated as registered. The simplification of the process o f international registratior
has obvious advantages for trade mark owners.
The Madrid Agreement built upon the basis tenets of the Paris Convention, anc
indeed became part of it, but only for those countries that ratified the new treaty.

16


The Madrid protocol makes the Madrid system more attractive to non members.
Similar to the Madrid Agreement, the Madrid Protocol provide for trade mark
registration in several countries through the filing o f a single application. However
the Protocol differs from the Agreement in a number of ways.
The advantage for the trade mark owner is that by filing a single application at
one office in one language with one international registration fee paid in one
currency, he can obtain a single registration with one registration number and one
renewal date covering a number o f jurisdictions.
The Madrid Protocol attempted to overcome the shortcomings of the Madrid
Agreement by adopting provisions that addressed the concerns voiced against it.
First, unlike the Madrid Agreement, the Madrid Protocol permits international

registration to be based on a national application rather than an existing national
registration.
Second, it provides that if the national registration or application upon which the
international application was based on is cancelled; the owner o f the international
registration may convert the international registration into distinct national
applications, while retaining the effective filing date of the original international
registration.
Third, it allows filings in English as well as in French, whereas the Madrid
Agreement, by requiting filing to be in French, presents greater procedural hurdles
for non-francophone countries.
Four, it enables countries to charge fees that cover filing costs under the
international application procedures.
Finally, the Protocol extends the deadlines within which countries have to notify
applicants o f the denial of their national applications. O f these innovations, the most
important is that, the Protocol was the first system that provided for a truly
international application system.
In brief, the Madrid system consists o f two treaties which only relate to trade
marks and not to other industrial property rights.

2.2.3

TR IPs16

T R IPs is an international agreement administered by the WTO) that sets down
minimum standards for many forms of intellectual property regulation. It was
16

TRIPs is an abbreviation for “Agreement on Trade-Related Aspects of Intellectual Property

Rights”. The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World

Trade Organization, signed in Marrakesh, Morocco on 15 April 1994.

T H U VIE M
fRlfONG DAI HOC lLIAT HA NQ l

17

PHONG D O C

::

negotiated at the end o f the Uruguay Round of the General Agreement on Tariffs and
Trade (GATT) in 1994.
The areas o f intellectual property that it covers are: copyright and related rights ;
trademarks including service marks; geographical indications; industrial designs;
patents; the layout-designs of integrated circuits; and undisclosed information .
The three main features of the Agreement are:
Standards: This is the first international agreement that sets out the minimum
standards o f protection for many forms o f intellectual property.
Enforcem ent. The second main set o f provisions deals with domestic procedures
and remedies for the enforcement of intellectual property rights. This is the first
international agreement which lays down certain general principles applicable to all
intellectual property right enforcement procedures. In addition, it contains provisions
on civil and administrative procedures and remedies, provisional measures, special
requirements related to border measures and criminal procedures, which specify, in a
certain amount of detail, the procedures and remedies that must be available so that
right holders can effectively enforce their rights.
Dispute settlement. This is also the first international intellectual property
agreement covering disputes between WTO Members about whether they respect the

TRIPS obligations which are subject to the WTO's dispute settlement procedures.
The TRIPS Agreement is a minimum standards agreement, which allows
Members to provide more extensive protection o f intellectual property if they so
wish. Members are left free to determine the appropriate method o f implementing the
provisions o f the Agreement within their own legal system and practice.
As to trade marks, TRIPs defines the protectable subject matter. For the first time,
there is an international agreement stipulating that registration depends on
distinctiveness acquired through use. “ Where signs are not inherently capable o f
distinguishing the relevant goods or services, Members may make registrability
depend on distinctiveness acquired through use ” (Artl 5(1))
In addition, Art 15(3) provides that:
“M em ber may make registrability depend on use. However, actual use o f a trade
m ark shall not be a condition fo r fillin g an application fo r registration. ”

Basing themselves on TRIPs, many countries adopted this provision in their
domestic law. But the concept of “use” is not explained in the same way in each

18


country. For example, in Vietnamese law, the distinctiveness of trade mark
depending on use concept is vague and unclear.

2.3

Distinctiveness as a Requirement for Registration

2.3.1

The Notion of Distinctiveness in Trade Mark Law

One o f the primary requirements for a trademark to be protectable is that it must be
distinctive. Some trade marks meet this requirement by being “inherently
distinctive”. Inherently distinctive marks tend to be more creative, avoiding any
actual description of the related goods or services. Other marks must acquire the
necessary distinctiveness through use.
Note that there is no definition of “distinctiveness” in trade mark law. Art. 6
quinquies B.2 of Paris Convention only imposes the implicit requirement that a
trademark must have distinctive character to be registrable. This is made more
explicit in Art. 15 (1) of TRIPs which provide: “where signs are not inherently
capable o f distinguishing the relevant goods or services, Members may make
registrability depend on distinctiveness acquire through use”.
In spite of this lack o f a definition, “distinctiveness” is understood similarly
in Vietnam, EU and US trade mark law. It is that which makes it possible to identify
the goods and services for which the mark was registered as coming from a particular
undertaking, and thus to distinguish those goods or services from those of other
undertakings.
In contrast, non-distinctive marks are “incapable of performing the essential
function o f a trade mark, namely that o f identifying the commercial origin o f the
goods or services, thus enabling the consumer who acquired them to repeat the
experience if it proves to be positive, or to avoid it if it proves to be negative, on the
occasion o f a subsequent acquisition”.1'
In brief, “distinctiveness” is a significant concept in trade mark law but it has
no definition in law; the term “distinctiveness” can be determined by contrast with
non-distinctive marks.

2.3.2

Determining Distinctiveness

“Distinctiveness” is a decisive if one wishes to determine whether a mark can
become a registered trade mark. Neither international nor national law provides a
17 Case T-79/00, Rewe-Zentral, para. 26

19


definition of the concept. How can the distinctive character o f a particular trade mark
be determined?
Whether a trade mark has distinctiveness is based on consumer perception. A
trade mark is considered to be distinctive if it is perceived or capable of being
perceived by concerned consumers to identify the mark as coming from a particular
undertaking. It is impossible to list all types of distinctive mark. Therefore, trade
mark law provides types o f non-distinctive mark under consumer’s eyes in order to
determine distinctiveness. From that, the competent authority accepts or refuses
registration.

2.3.3
2.3.3.1

Distinctiveness under National Trade Mark Law
Vietnamese Law

Art 72 states general requirements for a mark to be eligible for protection,
distinctiveness being one o f two such conditions. What is distinctiveness here?
Art 74 (1) states that:
A mark shall be considered as distinctive if it consists o f one or several easily
noticeable and memorable elements, or o f many elements forming an easily
noticeable and memorable combination, and is not those signs provided for in
paragraph 2 of this Article.

Art.74(2) lists marks which shall not be considered as distinctive. They are signs
18
which are: not inherent distinctive; have been widely and often used and are
•

common knowledge;19 have descriptive character;20 indicate the geographical origin
of the goods or services;
18

01

identical with or confusingly similar to other signs.

"JO

Art 74(2)(a)Simple devices and geometric figures; numerals, letters, or words of

uncommon languages, except for signs having been widely used and recognized as a mark;

19 Art 74 (2)(b)Signs, symbols, pictures or common names in any language of goods or
services that have been widely and often used and are common knowledge;
20

Art 74 (2) (c)Signs indicating the time, place, method of production, kind, quantity, quality,

property, composition, intended purpose, value or other characteristics, which is descriptive of
the goods or services, except for signs having acquired distinctiveness through use before the
filing of mark registration applications;
Art 74(2)(d) Signs describing the legal status and activity field o f businesses;

21 Art 74(2)(dd) Signs indicating the geographical origin of the goods or services, except for
signs having been widely used and recognized as a mark or signs registered as collective marks
or certification marks as provided for in this Law.
22 Art 74(2)(e-n).

20


Some o f such signs may still be registered as trade marks if they acquire
distinctiveness through use. They are: signs without inherent distinctiveness; signs of
a descriptive character, signs indicating the geographical origin o f goods or services.
- Non-inherently distinctive marks
Art (74)(2) o f IP law states that a mark shall not be considered as distinctive if it
consists o f “simple devices and geometric figure, numerals, letters, or words o f
uncommon languages..
These signs are not inherently distinctive as they are too simple. It is very difficult
for consumers to remember them; if a sign is not easily noticeable and memorable
for consumer it will not be considered distinctive.23 We think here of a common or
geometric figure, such as a circle, ellipse, triangle, quadrangle, etc., or a simple
drawing; a picture or image used merely as a background or ornamental pattern of a
product or a product package.24
If a figure is too simple and not impressive enough to be stored in the memory of
consumers and remembered as a distinctive sign, it will not be able to distinguish the
goods or services o f particular undertakings. In contrast a picture or image that is “too
tangled or complicated for consumers to easily perceive and memorize its details, i.e. a
sign that consists o f too many combined or overlapped images or lines”25 can be
equally hard to distinguish and will not be registered as a trademark.
Other unacceptable signs include text numbers and letters in an uncommon
language: think o f "Characters of languages that are imperceptible and unmemorable
to Vietnamese consumers (unreadable, incomprehensible and unmemorable), such as

characters not of Latin origin: Arabic, Slavonic, Sanskrit, Chinese, Japanese, Korean
or Thai characters, etc”.26 Even though “A Latin-origin character that consists of only
one letter or consists of numerals only, or consists o f two letters which cannot be
pronounced as a word, even if it is accompanied with numerals...”27 shall be
considered indistinctive. Notwithstanding, if these signs are presented in a graphic or
other special form, they may be able to gain distinctive character.

23 See Art 74 (1) o f Law on IP.
24 See Circular No.01/2007 guiding the implementation of the government’s decree
No. 103/2006.ND-CP o f September 22,2006, detailing and guiding the implementation of a
number of articles of law on IP regarding industrial property (Circular 01/2007).
25 Circular 01/2007 39.4 (b).
26 Circular 01/2007 39.3 (a).
27 Circular 01/2007 39.3 (b).

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Thus, in principle, these signs do not have the ability to distinguish themselves
and will not be registered as trademarks. However, Vietnamese law stipulated that if
“the signs have been widely used and recognized as a mark”28 they are able to
distinguish themselves and be registered as trademarks.
- Descriptive signs
Descriptive signs are "signs indicating the time, place, method o f production, kind,
quantity,

quality, property,

composition,

intended purpose,

value or other

characteristic which is descriptive o f the goods or services...”.
These signs do describe characteristics o f goods and services so can be sued with
all types o f goods having similar characteristics. So they could be used equally well
by all undertakings producing such goods and services and will not determine their
origin. This not only impacts consumers but also providers of such products and
services. For example, general terms of quality and value, such as "Super-cheap",
"Super-durable", "Best", "most beautiful" ... can not be used as trademarks. Nor can
the phrase "fermented via microbiology" be registered as trademark as this describes
the only method of production o f beer. Equally bad are signs describing components
or functions. "Milk for people with diabetes" can not be a trade mark for milk
products as it not help consumers distinguish the goods of services o f the undertaking
from those o f other undertaking.
However, signs which have acquired distinctiveness through use before the filing
of a trademark registration may still be registered as trademark.
- Signs which indicate the geographical origin o f goods, services
The geographical origin o f goods, services is relevant where production, supply o f
goods or services is linked to a specific area. They provide information on origin o f
products.
Using a sign o f geographical origin as a trademark for goods and services not
produced or provided there will mislead consumers about their origin. For example,
the taste o f tea grown in Thai Nguyen is delicious and famous. If an undertaking uses
“Thai Nguyen” as a trade mark for their tea not actually from Thai Nguyen, it will
result in consumers becoming confused about the origin of the tea. The use of signs
for the geographical origin of goods or services as trademarks will be rejected if the
tea is not in fact from Thai Nguyen.

28 See Art 74(1 )(a) Law on IP.
29 See Art74 (2)(c).

22


In short, a mark will be considered as distinctive if it consists of easily perceivable
and memorable elements, and is not one o f the signs provided for in paragraph 2 of
this Article. But what “easily perceivable and memorable elements” is not stated.
EU Law

2.3.3.2

Art.3, Art.4 o f the Directive 89/104 and Art.7 and Art. 8 of Regulation No.40/94
provide for absolute grounds and relative grounds for refusal or invalidity.
Distinctive character is assessed by way of exception as in Vietnam. The exceptions
may be listed as follows: signs which cannot constitute a trade mark; Trade marks
which are devoid o f distinctive character; Descriptive trade marks; Generic trade
terms; Signs consisting exclusively of certain shapes; Signs violating public and
accepted principles o f morality; Deceptive trade marks; Trade marks to be refused
pursuant to the Paris Convention, marks identical or confusingly similar to earlier
marks.30
As with Vietnamese law, some o f these signs may still be registered as trade
marks if they acquire distinctiveness through use. These are signs devoid of
O |

distinctive character, and descriptive and generic marks.
- Signs devoid o f distinctive character marks
Art.3(l)(b) of Directive 89/104 and Art 7(l)(b) o f Regulation No.40/94 provide that
trade marks which are devoid o f any distinctive character shall not be registered.

Simple geometric devices such as rectangles, circles, or even pentagons, are non distinctive. Commonplace or usual figurative elements are usually devoid of
distinctive character. For example, the naturalistic representation o f a wine leaf is not
distinctive for wine, the design o f an ice cream to designate that ice cream is sold are
not distinctive. Graphic symbols commonly used in a functional manner have to be
refused, such as the @ - symbol or currency symbols such as £, $.
Single letters or numerals unless represented in an unusual fashion, would, except
in special circumstances, be devoid of distinctive character. For example, the

30

See Art2, A rt.3(l), Art.4 of Directive 89/104 and Art.4, A rt.7(l), Art.8 o f Regulation

No.40/94.
A See Art.7(3) o f Regulation No.40/94.

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