Legal consequences of the trademark with origin in Vietnam and designation EU registered under Madrid system after Brexit

After 47 years being a member of EU, UK officially left EU on January 31, 2020. This is an almost half of century relationship, thus, there would be a number of arising confusion as well as the issue which is in need of negotiation to complete the process including trademark registration with origin from Vietnam.

 

Trademark protection in Vietnam

UK is the member of Madrid system from Dec 1st, 1995, concurrently, EU has also officially become a member of this system since Oct 1st, 2004.  According to the international trademark searching Madrid Monitor, there are 292 Vietnamese trademarks registered internationally designated EU which include both the trademarks during the examination period and granted certificate.

How is the fate of these trademarks after Brexit?

According to the guidance from Intellectual Property Office of UK (“IPO”), the owner or applicant of the trademark which submitted according to the Madrid system and designated EU need to note the following points:

International trade mark registrations protected in the EU (“EUTM”) under the Madrid Protocol will no longer enjoy protection in the UK after 1 January 2021. According to Brexit Agreement, IPO will create a system: “comparable UK trademark” in relation to each international (EU) trade mark designation. In case EUTM are still in the examination period, the applicant has the right to register that exact trademark in UK in the transition period from January 1st, 2021 to September 30th, 2021. In details:

Firstly, to the trademarks which has been protected, UK will:

-Be recorded in UK registration system;

-The recorded trademark will have the same legal status as the trademark protected according to UK law;

-Keep the submitting of the application as EUTM;

-Keep the priority date according to the Madrid system or seniority date according to UK law;

-Be recognized as independently existing trademark according to UK law and may be challenged, assigned, licensed or renewed separately from the original international registration.

However, it is noted that: (i) the Comparable trademarks will be created at no cost to the holder of the international trademark, except a minimal administrative burden will be placed upon the rights holder (ii) the applicant will not receive the trademark certificate, however, they could be searched for the trademark at GOV.UK.

Secondly, for the EUTM which are still in examination phase:

In case EUTM are still in examination phase, on January 1st, 2021, the applicant has the following rights:

-Apply the trademark application in UK for EUTM during the transition, nine months from January 1st, 2021 until September 30th, 2021 as mentioned above;

-Keep the earlier filing date as EUTM;

-Enjoy other international priority claim effecting on EUTM in accordance with the seniority claim according to UK law.

However, it is noted that when applying the EUTM during the examination phase according to the UK trademark system then:

-The trademark applied in UK must be the same with the trademark in EU application which submitted previously;

-Goods/services required to protect of the trademark must be the same or included in the scale of EUTM.

In case the application submitted into UK does not satisfy the above criteria, the application would not enjoy the priority date or the priority claim of EUTM.

The application after having been submitted within that period and satisfies the criteria will be deemed as UK application and be examined according to UK law.

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP. We routinely match inventors with experienced IP attorneys for a free consultation on our platform and offer a money back guarantee. 

 

 

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What is a Trademark?

A trademark is a type of intellectual property. A trademark also commonly known as a trademark, trade-mark or a mark. A trademark consists of a recognizable sign, design, or expression which identifies products or services of a particular company and helps in distinguishing the products from those of others. The symbols ® ‘the registered trademark symbol’ and ™ ‘the trademark symbol’ are generally used to indicate trademarks; the former is only for use by the owner of a trademark which is registered.

Register trademark in Vietnam

The trademark can be owned by:

-An individual,

-Business organization,

-Or any legal entity

When a trademark is registered, it confers an exclusive right to the owner to use the registered trademark. Thus it can be said that the trademark can be used by his owner exclusively, or it can be used by a person licensed for use in return of valid consideration.

Complete assignment

In this type of assignment, all the rights are completely transferred by the owner to the assignee.

The assignee has got all the rights including rights such right to further transfer and right to earn royalties.

Partial assignment

In this type, the assignment of the trademark is made to the assignee, but with respect to only some of the goods/ services, the transfer of ownership of the trademark is restricted to specific goods or services only. The rights are not transferred completely.

Assignment with goodwill

In this type of assignment, there is also a transfer of goodwill of the product with the trademark. In this, the valuation of goodwill is calculated differently in the agreement.

Assignment without goodwill

 In this type of assignment, goodwill of the product is not transferred along with the assignment of the trademark; in this, the owner of the brand restricts the rights of the assignee and does not allow him to use such trademark of the brand for the products being used by the assignor. Such an assignment is also referred to as a gross assignment.

When can a Trademark be assignerd?

A trademark can be assigned in the following situations

The Death of the Trademark Owner

Whenever the owner of the trademark i.e. the assignor dies, its ownership is passed on to the successors of the previous owners in a will or intestate. The condition is that the Trademark must be valid and should not have been abandoned by the previous owner.

Sale of Business

 Intellectual properties are assets for the company, just like all properties, even the trademark can be sold with the company. Provided it is registered under the company’s name. If a party acquires trademark rights of a company by acquiring a business with regard to the sale of assets of the company, the intellectual properties are also said to be transferred.

Change of the owner of businesses

When two companies decide on having a merger or an amalgamation of the company, a notification is sent to the registry. All the intellectual property of the acquired company are transferred to the new owner through the trademark assignment agreement between the parties.

Change in Form of Business

Whenever a business plan on changing its form of business or its business structure an assignment is a boon for those businesses.

If you are looking for an experienced trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark.

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What happens if I have a trademark without registering?

Trademark registration provides protection and exclusive rights to the owner of a Trademark in relation to his goods and services used commercially.

Trademark registration services in Vietnam 

A Trademark differentiates the identity and brand name of a business and separates the goods and services of a business from that of other similar goods or services in the market.

If your Trademark is not registered, it can be easily infringed upon by someone. In such case, you cannot file an infringement suit, but only claim remedy for passing-off. Passing off in trademark is when infringement of an unregistered trademark happens. The mark is not only deceptively similar to the trademark of other company but also creating confusion for the customers, which ultimately results in damage to the business of company.

Legal Remedy In Case Of Passing Off

The trademark owner can file a suit in district court/ High Court within the local limits of the jurisdiction, where the person instituting actually and voluntarily resides or carries on business or personally works for gain.

Where the passing off does not involve the use of trademark or where there is no sale of goods, the suit may be filed in a subordinate judge’s court or a court of superior to it. The plaintiff in a suit for passing off must be the owner of an unregistered trademark which has acquired reputation in relation to some goods or the owner of the goodwill in a trade name, or get-up relating to some goods or business or profession.

The defendant in the suit must be a person who has passed off or whose activities are likely to pass off his goods or business as the goods or business of the plaintiffs. Passing off actions may be instituted by many plaintiffs in a representative capacity provided there is a common interest, common grievance and a remedy beneficial to all. The rules governing the preparation of the plaint and the subsequent proceedings are the same as in any other suit and are governed by the Code of Civil Procedure.

If you are looking for an experienced Trademark attorneys in Vietnam to help you with your trademark application, you should visit ANT Lawyers.vn. Our attorneys have experience with the trademark process and will work closely with you as you apply for your trademark. We routinely match inventors with experienced Trademark attorneys for a free consultation on our platform and offer a money back guarantee.

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What are The Advantages of Trademark Registration?

A Trademark is essentially a brand name. It may comprise of a word, name, combination of words or names or a symbol used to identify and also differentiate goods/ services produced/ provided by one seller from those offered by other sellers. It is also used to indicate source of the commodities.

Trademark in Vietnam

Trademarks allow you to protect your company’s name, and to specify which types (classes) of goods and services your company’s trademark should be applied to. For example, coffee mugs vs. outdoor apparel. It’s important to point out that trademarks are intangible assets, and can be bought, sold or licensed.

Other Advantages of Registering a Trademark:

-It grants the right to use the registered trademark symbol: ®;

-It grants the right to file a trademark infringement lawsuit in federal court and to obtain monetary damages;

-It acts as a bar to the registration of another confusingly similar mark;

-Ability to have the customs service block the importation of goods bearing an infringing mark; and

-It may serve as the basis for an international trademark application.

If you’re considering registering for trademarks then you should hire a competent Trademark Lawyers in Vietnam who will make sure everything is protected from the get-go. Feel free to visit ANTLawyers.vn for this. We’re a legal marketplace that makes it easy for entrepreneurs to hire and work with quality, vetted lawyers.

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Can a trademark expire?

Once your trademark is 10 years old, it would expire. This is a primary caveat with trademark; it only lasts for about 10 years. Once the 10 years have come close and you haven’t applied for renewal or restoration, the expiration process begins.

Time limit of trademark protection extension

To that end, it is definitely important for you to either renew or restore it:

1. Trademark renewal: Application for the trademark renewal has to be applied 6 months before the expiration date has come near. Once this period is not taken heed to, the trademark shall expire and you are only left with the next measure.

2. Trademark restoration: trademark restoration takes place after the expiration date is over. How is this option? The answer is a pretty simple one! Once the trademark has been expired, the most definite and the logical way to make sure that you still have access to it are through trademark restoration. Once you apply for the restoration, you would go through the same strides as you went through when you applied for trademark registration for the first time. You would go through the initial application. This application might be objected against by the department, and you would have to file a reply for it. This restoration process also involves putting the trademark in the journal for about 4 months. Once the mark is restored, you would again receive a certificate from the department that implies the same.

To that end, it would be better if you go by the former part of renewal and don’t wait for the restoration process.

ANT Lawyers - A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property rights in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

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Is it necessary to hire a lawyer when applying for a trademark?

The basic answer is No. Applying for a trademark can be done on your own initiative and there are no requirements that a lawyer be involved on your end.

 Trademark registration services in Vietnam 

But, to be honest, it really would be in your best interest to speak with an attorney first. Of course no one wants to hear this, and I hate to be "that guy." However, obviously you care about your company, and you want to make sure it is in the best hands.

Particularly when dealing with IP issue, there are certain fears/concerns about protecting all of your rights. Of the many reasons to hire a lawyer for a Trademark (TM), here are few...

1. The process can be complex and lengthy. You are most likely focused on developing your company and are probably working full-time in that capacity. Taking up this task on your own can really limit your ability to focus on your company.

2. The research and background work required for TM's is also exhaustive and can be tricky. Although you may be able to do this yourself, there is a chance you might make a mistake, overlook something, or simply take a path that is not the best for your company. A lawyer is a safe-guard against these problems.

3. Hiring a lawyer who is business savvy and well-versed in your particular industry cannot only help you with your Trademark (TM), but can also develop a strong business plan moving forward. IP is a particularized field, and getting a lawyer on board who has helped similar clients in the past with IP issues can make a HUGE difference for your business.

If you do decide to go it alone, here is a link to the US TM and Patent Office website; How do I file a Trademark Application? They give you some direction and guidance, as well as links to the relevant documents/forms you will need.

ANT Lawyers -  A Law firm in Vietnam is supported by a team of experienced patent, trademark, design attorneys with qualification and skills handling full range of legal services relating to intellectual property in Vietnam.  We have specialized in the preparation and registration of patents, trademarks and designs for our clients.

We assist our clients in all steps of the prosecution phase of IP management.

Source: Quora

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What is the difference between a trademark and a wordmark?

We have established that a wordmark is a logo, but not every logo is a wordmark.

A wordmark or logotype is usually a distinct text-only typographic treatment of the name of a company, institution, or product name used for purposes of identification and branding.

A trademark on the other hand can be a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.

 Trademark registration services in Vietnam  

The number one difference between logos and wordmarks is that wordmarks are text-based logos. These types of logos are completely devoid of extra pictures, meaning that logos such as Pepsi and MasterCard are not wordmarks, since these logos contain images as well. You can probably think of several examples of wordmarks off the top of your head, but some of the most famous are FedEx, Coca-Cola and even world-famous Google. These are all examples of highly successful and easily recognizable wordmarks that are easily identified with around the world.

Why would someone use wordmarks over something like a pictorial graphic?

It ties into the fact that they are a more direct type of branding. When you provide just a picture, such as Joomla's logo, you have to have faith that a person can learn the association between a picture and a name and service, keeping them separate from other pictorial logos. Imagine if all of our favorite brands and companies were only identified by a simple graphic. We would have hundreds or even thousands of these little pictures to remember. Trying to keep them straight would become very confusing!

When providing a wordmark, such as Google, you provide a name while still providing a recognizable image for the viewer. Wordmarks are becoming the standard when it comes to designing logos, as it has been observed by some studies that they are more effective than their pictorial counterparts are.

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and TrademarkOffice. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled “Basic Facts about Trademarks”.

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Why Trademarks Are So Important

Trademark is a sign for consumers to identify the goods or services of each company from those of others.

Trademarks are an important part of client company’s competitive edge. As consumers, our purchasing decisions are constantly influenced by trademarks. As business people, we should have a better understanding of why trademarks are so important to effective commerce. Trademarks are also used as a way of protecting consumers. When businesses are responsible for any products or services bearing their trademark, they tend to take more pride in products. To maintain a good reputation, trademarked companies will often work harder to provide quality services and products. Reasons 

Trademark registration services in Vietnam 

 Trademarks Are Important to Your Business.

- Trademarks make it easy for consumers to find you.

- Trademarks help prevent marketplace confusion

- Trademarks are a very economically efficient communication tool

-Trademarks are your most enduring assets.

-Trademarks support stronger sales volume, stronger margins, and can provide price maintenance legally

-Trademarks are relatively inexpensive to protect

-Trademarks allow businesses to most effectively utilize the Internet

-Trademarks are very effective against unfair competition

1. Trademarks make it easy for consumers to find you.

◦ Trademarks help you distinguish your products and services from those of competitors and help identify you as the source.

◦ Trademarks indicate a consistent level of quality of your products and services.

◦ Awareness of your brand and the goodwill embodied in your trademark can often take decades to establish.

◦ Aggregate cost of advertising, promotion, marketing, and sales efforts can easily reach into tens of millions or even billions of dollars, depending on the product/service.

◦ Differentiating your product/service from competitors is increasingly difficult to achieve, especially over a protracted period.

◦ Trademarks are the most efficient commercial communication tool ever devised to:

• "cut through the clutter";

• capture the consumer's attention; and

• make your products/services stand out.

2. Trademarks help prevent marketplace confusion

◦ Trademarks protect the consuming public by preventing confusion as to the source of goods or services.

◦ If the product made under a brand turns out to be defective, consumers have accurate information about the source of a product and can return it to the manufacturer or supplier for a refund.

◦ Trademarks give consumers the ability to protect themselves by relying upon known brands of products or services.

◦ Trademarks provide consumer convenience by allowing consumers to identify (by word, logo, slogan, package design, or other indicators of origin) which product or service they would like to purchase or to avoid purchasing.

◦ Trademarks provide consumer convenience by allowing consumers to base their purchasing decisions on what they have heard, read, or experienced themselves.

◦ Trademarks motivate companies to provide a consistent level of quality, helping the consumer to decide whether to purchase a desirable product or service again or to avoid an undesirable one.

3. Trademarks are a very economically efficient communication tool

◦ Trademarks dramatically reduce the costs of decision-making by allowing consumers to rapidly select the desired product or service from among competitive offerings.

◦ Trademarks can wrap up in a single brand or logo intellectual and emotional attributes and messages about your:

• Company;

• Reputation;

• Products and services; and

• Consumers' lifestyles, aspirations, and desires.

◦ Trademarks can work effectively across borders, cultures, and languages.

◦ Famous marks can be recognized as brands even when the native population speaks a different language and reads a different alphabet (i.e., the McDonalds "arches" logo, the NIKE "swoosh" logo).

4. Trademarks are your most enduring assets.

◦ Trademarks are one of the few assets that can provide you with a long-term competitive advantage.

◦ Trademarks are usually the only business asset you have that can appreciate over time.

◦ Trademarks are leverageable - they provide value beyond your core business, and can pave the way for expansion (or acquisition, if desired) of your business.

• Brand Expansions:

• KELLOGG'S - from "ready-to-eat cereals" to "snack bars and breakfast bars"

• ARMANI - from "runway apparel" to "perfumes and eyewear"

• VIRGIN - from airline services to entertainment media and carbonated drinks

5. Trademarks support stronger sales volume, stronger margins, and can provide price maintenance legally.

◦ It is often difficult to see significant differences among competing products.

◦ Your brand can be the critical factor in driving the consumer's purchase decision.

◦ The price variance among competitive offerings can also be substantial, often by 100% or more in the same setting, such as a newspaper. Once again, your brand can make the difference.

6. Trademarks are relatively inexpensive to protect

◦ Once you have successfully registered a trademark, it has a potentially infinite lifespan with the filing of renewals. Renewals can be filed every 10 years after registration in the U.S. so long as the mark is being used in commerce (there are certain exceptions to this use requirement that will not be discussed here).

• COLT (first registered in 1889))

• QUAKER (first registered in 1895)

• PEPSI-COLA (first registered in 1896)

• MERCEDES (first registered in 1900)

◦ Trademarks share attributes with other forms of property, like real estate, as they can be:

• Bought and sold ("Assignments")

• In the acquisition of a business

• In the acquisition of a specific product line

• Pledged (as security, like a mortgage)- to secure loans to a business

• Licensed (like renting or leasing)

• Character merchandising

• Sports endorsements and sponsorships

• Co-branding promotions, sweepstakes, contests.

7. Trademarks allow businesses to most effectively utilize the Internet

◦ Trademarks are often the "top-of-mind" address for an Internet user seeking information about a company and its products/services.

◦ Higher traffic on a website translates into higher rankings on search engine results, bringing even more traffic.

◦ As a result of the importance of the Internet to marketing, it is crucial to obtain desirable domain names at the same time that a trademark is adopted.

◦ The Internet also has the potential for widespread unauthorized use of your brand, requiring vigilance to police both proper use of your brand and infringements of it:

• META tags

• Embedded or hidden text

• Counterfeits and design knockoffs

• Gray market goods

8. Trademarks are very effective against unfair competition

◦ In the United States, deceptive and misleading advertising is prohibited by: Consumer protection laws; Unfair competition laws; and The U.S. Trademark statute.

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