Identical, confused trademarks and distinguishing capacity of trademarks

Identical or similar factors of a trademark are important signs to determine its protection during the registration process as well as to determine the infringement of rights to a protected trademark. Identical or confusingly similar trademarks pose a serious threat to businesses, as it can lead to unfair competition and loss of consumer trust. Therefore, determining whether a trademark is identical or confusingly similar according to Vietnamese law is extremely necessary.

1. Signs that are identical or confusingly similar are not protected as trademarks

A trademark will not be protected as a trademark when it contains a sign that is identical or confusingly similar to one of the following:

1. National flags, national emblems, national anthems of countries, and the Internationale;
2. Symbols, flags, emblems, names of state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations, social-professional organizations of Vietnam, and international organizations (except in cases where such agencies or organizations give permission);
3. Real names, nicknames, pseudonyms, images of leaders, national heroes, and famous individuals of Vietnam or foreign countries;
4. Certification marks, inspection marks, and warranty marks of international organizations which require not to be used (except in cases where these organizations themselves register these marks as certification trademarks);
5. Other misleading signs: Signs containing elements that mislead or deceive consumers about the origin, features, uses, quality, value, or other characteristics of goods and services.

2. Factors of trademark infringement

The factors of trademark infringement are the use of signs attached to goods, packaging, service means, transaction documents, signage, advertising media, and other business means that are identical or similar to the extent of confusing the protected trademark.

To determine if a sign constitutes trademark infringement, it is important to compare the sign with the trademark. Additionally, it also must compare the goods or services associated with the sign to the goods or services protected by the trademark.

A factor of infringement can only be confirmed when both of the following conditions are met:

Condition 1: The sign is suspected to be identical or similar enough to cause confusion with the trademark within the scope of protection

• A sign is considered identical to a trademark within the scope of protection if it has the same structure and method of expression;
• Any of these characteristics in a sign can make it confusingly similar to a registered trademark:
  • Some components completely overlap; or
  • Similar enough to not be easily distinguishable from each other in terms of structure, pronunciation, phonetic transcription, meaning, presentation, color for visible signs, music, tone for audio signs, and the use of signs is likely to cause confusion among consumers about the goods and services bearing the mark.

Condition 2: Goods and services bearing suspected signs are identical or similar in nature or function, use and have the same consumption channels with goods and services within the scope of protection; or are related to each other in nature or function or method of implementation.

3. Distinctiveness of the trademark

Enterprises need to determine the limits of a trademark’s distinctive ability. This will help to determine whether the trademark is identical or confusingly similar.

A trademark is considered distinctive if it is made up of one or several easily recognizable and memorable factors. Alternatively, it can be distinctive if many factors combined into a recognizable and memorable unit. Accordingly, a trademark consists of many complex and difficult-to-recognize factors. These factors may not satisfy the distinctiveness of the trademark.

Regarding this issue, the current Vietnamese intellectual property law system has attempted to quantify the criteria for a distinctive trademark. The law system identifies instances and signs that make a trademark non-distinctive.

A trademark becomes non-distinctive when it contains any of the following:

1. Simple geometric shapes and figures, numbers, letters, and words in uncommon languages (except in cases where these signs have been widely used and recognized as a trademark before the filing date. For example: Nike’s “Swoosh” symbol A black object with a white background is a simple geometric shape but has been widely used and recognized, so it is still protected as a trademark);
2. Signs, conventional symbols, drawings, common names of goods or services in any language, the usual shape of goods or part of goods, usual shape of packaging or the container was in regular and widely recognized use before the filing date;
3. Signs indicating time, place, method of production, type, quantity, quality, properties, ingredients, purpose, value, or other characteristics that describe goods, services, or signs that significantly enhance the value of the goods (except where the sign has acquired distinctiveness through use before the filing date) ;
4. Signs describing the legal form and business field of the business entity;
5. Signs indicating the geographical origin of goods or services (except in cases where the sign has been widely used and recognized as a trademark before the filing date or is registered as a collective trademark or certification mark);
6. Signs that are identical or confusingly similar to a previously registered trademark with identical or similar goods or services (except in cases where the trademark registration has been terminated or invalidated) ;
7. Signs that are identical or confusingly similar to another person’s trademark that has been previously used and widely recognized for identical or similar goods or services before the filing date or the priority date if the application enjoys priority rights;
8. Signs that are identical or confusingly similar to trademarks of other organizations or individuals that have been protected for identical or similar goods or services whose trademark registration has expired for less than three years. ;
9. A sign that is identical or confusingly similar to a trademark is considered a well-known trademark if the use of that sign may affect the distinctiveness of the well-known trademark or the registration of the trademark for purposes of taking advantage of the reputation of famous brands;
10. Signs identical or similar to the trade name being used: If the use of that sign may cause confusion for consumers about the origin of goods or services;
11. A sign identical or similar to a protected geographical indication: If the use of that sign may cause consumers to misunderstand the geographical origin of the goods;
12. A sign that is identical to a geographical indication or contains a geographical indication or is translated or transcribed from a protected geographical indication for wine or spirits if the sign is registered for use on wine or spirits not originating from the geographical area bearing that geographical indication;
13. Signs that are identical or not significantly different from industrial designs that have been or are being protected based on an industrial design application with an earlier filing date or priority date compared to the filing date or priority date of the trademark application;
14. Signs that are identical or confusingly similar to the name of a plant variety that has been or is being protected in Vietnam: If such a sign is registered for goods that are plant varieties of the same or a similar species, or products harvested from these plant varieties;
15. Signs that are identical or confusingly similar to the names, images of characters, or images in another person’s work under the scope of copyright protection that was widely known before the filing date, except with the permission of the owner of that work.

4. In conclusion 

In summary, in the context of today’s fierce competition, protecting trademarks from duplication or confusion is important. This protects the legitimate rights of enterprises and helps maintain their reputation and consumer trust. To achieve this, enterprises need not only to thoroughly understand the relevant legal regulations. In specific cases, seeking in-depth advice from intellectual property experts is crucial.

At PLF Law Firm

Protect your brand and ensure its long-term success. PLF Law Firm offers expert advice and comprehensive services to help the business safeguards the trademark from infringement. Visit our Intellectual Property Service page for more information or to schedule a consultation on trademark registration.

Contact PLF Law Firm today via email at inquiry@plf.vn or +84913 902 906  to receive a Free 30-Initial Minute Consultation.