RIGHTS AND SOLUTIONS
TO IMPROVE
TRADEMARK PROTECTION IN VIETNAM
PART I: TRADEMARK AND THE IMPORTANCE OF
TRADEMARK
1. Trademark
a. Definition
Trademark is either a word, phrase, number, picture, design, or combination of
those, used by manufacturers or merchants to identify their own goods and
distinguish them from goods made or sold by others. Thus, a trademark identifies
the source of a product and fixes responsibility for its quality. If customers like
the goods, the trademark enables them to know what to purchase in the future;
if they dislike the product, they will avoid goods with that trademark. The name
of a type of product cannot be a trademark, because every maker of that product
is free to use its name. Sony, for example, is a well-known trademark for
televisions, radios, and audio equipment, but no one can have trademark rights to
the word television or radio. On several occasions, however, words intended by
manufacturers to be used as trademarks for new products were instead used by
customers to name the products; such words then lost their legal status as
trademarks, i.e. aspirin.
Before the 20th century, trademarks were usually symbols or pictures rather than
words, since most people could not read. As trade increased in the 19th century,
legal rights of trademark owners were recognized, and laws prevented other
sellers from using a similar mark that could confuse customers as to the source
of products. In 1883 a group of nations created the Paris Convention, an
international treaty organization that required member countries to recognize
trademark rights of foreign producers. The Paris Convention has been revised
several times; most nations are now members.
b. Trademark symbol
- TM: The TM symbol informs the world that you have (or you think you have)
a protect able trademark to indicate the origin of your goods. Anyone can use a
"TM" after their product or service letting the public know that they are using this
word or words as their trademark. For example, if you’re selling T-shirt and put
the word "Hoang Tan™" on your product, that tells people that you’re using this
word as a trademark.
- SM: The SM symbol informs the world that you have (or you think you have) a
protect able service mark to indicate the origin of your service.
- ®: The ® symbol informs the world that you have officially registered
your trademark in the market.
c. Examples
Nike Coca-Cola
d. Other concepts
To identify a clearly conception of trademark, some concepts which are easy to
mistake trademark for them are mentioned.
- Trade Name
A trade name or commercial name is any individual name, surname, firm name
and name used by manufacturers, industrialists, merchants, agriculturists, or
others to identify their business, vocation, or occupation. They are names or
titles lawfully adopted and used by persons, firms, associations, corporations,
companies, unions, and any manufacturing, industrial, commercial, agricultural,
or other organization engaged in trade or commerce. A trade name may be any
name used by a person to identify his or her business or vocation.
The terms "trade name" and "trademark" are not interchangeable, although a word
can often be both. Trung Nguyen is both — a trade name (short for Trung Nguyen
Coffee Company) and a trademark (when used to identify the source of Trung
Nguyen coffee product).
- Service Mark
Any word, name, symbol, device, or any combination thereof adopted and used by
a person or any word, name, symbol, device or any combination thereof which a
person has a bona fide intention to use in commerce to identify and distinguish
the services of one person from the services of others.
A service mark identifies the source of services the way trademarks identify the
source of products. A service mark also functions to assure the quality of the
services performed in the same way trademarks do.
2. Why does trademark need to be protected?
In comparison with other industrial property objects, such as patent and industrial
designs, a trademark is an object that has a direct relation and strong effect on the
commercial activities of a company.
a. Trademark is an invisible property
When a trademark is first created, it is merely a word, drawing or other sign. If
the commercial value of the trademark were to be calculated at that time, it
would be practically zero or roughly equal to the cost of creating the mark.
However, as a result of advertising and use on the market, the trademark becomes
a factor which generates income and potential profits for the business. Of course,
the commercial value of the trademark will vary from case to case, depending on
the income-generating capacity acquired over the years. In developed nation,
trademark is always highly appreciated and mat account for more than a half of a
corporation’s value due to its importance. For example, it is estimated that the
Coca Cola trademark, generally ranked among the world’s most valuable
trademarks, has an income-generating capacity of billions of dollars.
b. Trademark acts as a customer collector
The ability to generate income mentioned above is due to the fact that the
trademark is a tool able to create and stabilize the relationship between a
company and its customers. It is trademark that makes the company’s products
and services recognizable; if trademarks did not exist, products would be
anonymous and consumers would tend to make random decisions. Besides,
trademark is a substantial factor which guides the consumption of customers.
A recent survey by Vietnamese Trade Promotion Department (The Ministry of
Trade-MOT.) shows that trademark contributes about 70% of purchasing
decisions. The main reason is that customers believe a prestigious trademark
hand-in-hand with excellent quality. In practice, this is often right.
c. Trademark enhances product’s competitiveness
Basing on distinctive features such as symbols, colors, and shapes, consumers
can well recognize a product among thousands others of the same kind. Lavie is
still the best seller in Vietnam thought there are many imitations such as Lavi,
Lavive. The more prestigious trademarks are, the more competitiveness the
companies have. So they will be more facile in business negotiating, borrowing
from banks and expanding manufacture. Moreover, trademark holders have the
ability to prevent their competitors and other third parties from using their
registered trademark without permission. A trademark is protected during the
period of registered, essential for all companies that profit from product name
or business name recognition. If any company intends to imitate the trademark
of others, it will surely be punished as long as the trademark is registered.
d. Losing trademark causes damages to companies
In practice, late filling and registration of trademark may badly affect the
business activities of the enterprise. Many companies have been taken by
surprise when they discovered that their trademarks have been registered in
international market. In quite a few cases, the enterprise must choose an
unexpected solution to avoid a trademark dispute, such as to buy back its
trademark or change or cease the use of an already-used trademark to avoid
industrial property right infringement.
It is easy that both solution badly influence the business of the enterprise and it
takes time and money to negotiate the assignment of the trademark when,
sometimes, the mark indeed belongs to the possible assignee. If the enterprise
change the mark, time and costs for promotion and advertising a new mark are
great.
As a result, in any case, the enterprise will bear unexpected damages which would
not have happened if the enterprise foresaw the importance of registration of its
trademark in the country where the goods are exported.
