September 10, 2010 Hà Thị Nguyệt Thu (NOIP) Well-known trademark protection Reference to the Japanese experience.

September 10, 2010

Hà Thị Nguyệt ThuHà Thị Nguyệt Thu

(NOIP)(NOIP)

Well-known trademark protection

Reference to the Japanese experience

About the researchAbout the research

Objective:

To evaluate if it is possible to adopt some of the differences of Japanese law and/or practice to Vietnam law and/or practice with benefit to the trademark examiners, other competent authorities staffs, applicants and consumers.

Steps:

•To study international framework of well-known trademark protection;•To study the situation of well-known trade protection in both countries;•To compare the trademarks laws and practices of both countries;

INTERNATIONAL FRAMEWORK OFINTERNATIONAL FRAMEWORK OFWELL-KNOWN TRADEMARK PROTECTIONWELL-KNOWN TRADEMARK PROTECTION

- Paris Convention

- TRIPs Agreement

- WIPO Joint Recommendations concerning provisions on

Protection of Well-known Marks


Art. 6bis of Paris Convention:

Well-known trademark (including unregistered TM) may:-Object to the registration-Claim cancellation, or-Prohibit the use

of a trademark that constitutes:-a reproduction-an imitation, or-a translation,

liable to create confusion

Limitation of Art. 6bis of Paris Convention:-The objectionable trademark must be use “for identical or

similar goods”- This provision is only available in respect of goods marks


-TRIPs Agreement

is characterized by its supplementary role to Art. 6bis of

Paris Convention in three ways:

-Extending the scope of well-known TM protection to

services;-Making more flexible in determining a well-known TM: well-

known in relevant sectors of public is sufficient;-Expanding the scope of well-known TM protection to

dissimilar goods or services


WIPO Joint Recommendations

Provides list of factors for determining a well-known TM-the degree of knowledge or recognition of the mark in the

relevant sector of the public-the duration, extend and geographical area of any use of

the mark-the duration, extent and geographical area any promotion of

mark-the duration and geographical area of any registrations,

applications of the marks-the record of successful enforcement of rights in the mark

The above factors are optional and the competence

authorities are available to use any other additional factors.

WELL-KNOWN TRADEMARK PROTECTIONWELL-KNOWN TRADEMARK PROTECTIONUNDER JAPANESE LAWUNDER JAPANESE LAW

-Trademark Law

- Law for the Repression of Unfair Competition


Trademark Law

Prohibition of Registration of mark identical or similar to W-

K trademark of others

-Article 4(1)(x): protects well-known unregistered trademarks

-Article 4(1)(xv): protects well-known trademark over a

broader scope of goods and services (to include dissimilar

goods and services)

-Article 4(1)(xix): protects trademarks well-known among

consumers in Japan or aboard against wrongful purposes

-Article 4(1) (xi): protects well-known registered trademark

(similar to those applies for ordinary trademark)


Trademark Law

Expansion of protection of well-known trademarks- Article 64: defensive mark registration

Once a trademark become well-known among consumers,

the right owners may obtain the defensive mark for goods or

services other than the designated goods or services

covered by registered trademark

Defensive mark is not the subject of cancellation for non-use

- Article 32: prior use

Un registered mark used prior to the application of other

person’s mark become well-known is entitled to

continuously use.

Requirement: no intention of unfair competition


Law for the Repression of Unfair Competition

Art.2(1)(i):

- This item is intended to restrict acts causing confusion

between one’s own goods or business with another person’s

goods or business.- Mark must be well-known- Confusion is required.

Art.2(1)(ii)- This item is intended to restrict acts causing confusion

between one’s own goods or business with another person’s

goods or business.- Mark must be famous.- Confusion is not required

WELL-KNOWN TRADEMARK PROTECTIONWELL-KNOWN TRADEMARK PROTECTIONIN JAPANESEIN JAPANESE

Well-known trademark can be searched in IPDL-Registered defensive marks-Marks determined as being well-known in trial decisions or

judgments

WELL-KNOWN TRADEMARK PROTECTIONWELL-KNOWN TRADEMARK PROTECTIONUNDER VIETNAMESE LAWUNDER VIETNAMESE LAW

Intellectual Property Law of Vietnam

Art. 4(20): “Well known mark means a mark widely known by

consumers throughout the territory of Vietnam”.

Art. 74(2)(i): protection well-known trademark against other

parties' registration for

- identical or similar trademark used for identical or similar

goods or services

- identical or similar trademark used for dissimilar goods or

services if the distinctiveness of well-known trademark may

be lessened or the registration is aimed at taking advantage

of well-known trademark

WELL-KNOWN TRADEMARK PROTECTIONWELL-KNOWN TRADEMARK PROTECTIONUNDER VIETNAMESE LAWUNDER VIETNAMESE LAW

Intellectual Property Law of Vietnam

Art. 130: protection of well-known trademark against unfair

competition

All most of acts which are cause confusion as to business

entities, business activities, commercial origin of goods or

services… shall be deemed as acts of unfair competition.

Requirements:

Acts of unfair competition are aimed to take unfair

advantage or reputation and popularity of the respective

trademark (including well-known trademark)

BRAZIL

No provision in the law.

Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use.

Any means are considered.

JAPAN

Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts:(…)

VIETNAM

Art.4(20) of IP Law

“well known mark means a mark widely known by consumers throughout the territory of Vietnam”

JAPANNo provision in the law.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANDEFINITION

BRAZIL




JAPAN


VIETNAM

Art.6 of IP Law

Industrial property right with respect of well-known trademark shall be established on the basis of use and shall not be dependent on registration procedures.

JAPANArt. 18 of JTL:

A trademark right shall arise upon registration of establishment of such right.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANESTABLISHMENT OF W-K TM RIGHTS

BRAZIL




JAPAN


VIETNAM

Art.74(2)(i) of IP LawScope of protection of W-K TM is extended to the dissimilar goods or services if the other parties’ trademark registration may affect the distinctiveness of W-K TM or is intended to misappropriate the celebrity of W-K TMIn practice:-Well-known in relevant sector of public is sufficient-Unregistered foreign W-K TM which has not been used in Vietnam may be protected under the IP Law

JAPAN

-Art.4(1)(x): unregistered W-K TM-Art.4(1)(xv): W-K TM cause confusion-Art.4(1)(xix): W-K TM in Japan or abroad for unfair purposes-Art.4(1)(xi): registered W-K TM

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANPROTECTION OF W-K TM

FROM OTHER PARTIES’ REGISTRATION

BRAZIL




JAPAN


VIETNAM

Art.130 of IP LawIn IP Law, all kinds of trademark including well-known trademark are protected from acts of unfair competition under this article. Most of the cases listed in this article required confusion. This means it is impossible to rely on this article in case of dilution in which the confusion is not required but the distinctiveness of well-known trademark may be lessened or the connection between two trademarks may be associated due to the use of similar or identical sign.

JAPAN

Art.2(1)(i) & 2(1)(ii) of Unfair Competition LawThe alleged act of unfair competition falls under the Article 2(1)(i) if this act cause confusion over the source of goods or services. The Article 2(1)(ii) does not require confusion but the well-known trademark must be famous. That means the requirement of reputation is higher than those are applied under Article 2(1)(i). The Article 2(1)(ii) is aimed to protect famous trademark from dilution caused by a free-ride on the goodwill.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANPROTECTION OF W-K TM

AGAINST UNFAIR COMPETITION

BRAZIL




JAPAN


VIETNAM

Art.75 of IP Law1. The number of involved consumers who have been aware of the mark through purchase or use of goods or services bearing the mark or through advertising; 2. Territorial area in which goods or services bearing the mark are circulated; 3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided; 4. Duration of continuous use of the mark; 5. Wide reputation of goods or services bearing the mark; 6. Number of countries protecting the mark; 7. Number of countries recognizing the mark as a well-known mark; 8. Assignment price, licensing price, or investment capital contribution value of the mark.

JAPAN

No provision in JTLIn practice, the content of criteria stated in some related parts of the Guidelines are almost the same as those stated in WIPO Joint Recommendation.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANCRITERIA

BRAZIL




JAPAN


VIETNAM No provision

JAPAN

Art.64 of IP LawRequirement:- a registered trademark already exists- a registered trademark has become well known among consumers as indicating the designated goods or services connected with his business- the two trademark are identical- there’s existence of likelihood of confusion- the applicant is the current trademark owner

Advantage:- Means of legally asserting the famousness of trademark- No obligation to use registered markDisadvantage:- scope of effects of a defensive mark is limited to identical mark- cost for registration- acts of infringement is limited to identical mark

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANDEFENSIVE MARK SYSTEMDEFENSIVE MARK SYSTEM

BRAZIL




JAPAN


VIETNAM

Art.99, 110 of IP Law- Application and registration are both published in The Official Gazette- Purpose of publication of application is used as informative reference channel about whether or not grants the trademark titles.- Petition for opposition to registration is not published

JAPAN

Art.12bis (12-2), 75(1) of JTL- Application and registration are both published in The Official Gazette- Petition for opposition to registration published.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANPUBLICATION ON THE OFFICIAL GAZETTEPUBLICATION ON THE OFFICIAL GAZETTE

BRAZIL




JAPAN


VIETNAM

Art.112 of IP Law- As from the date an Industrial property registration application is published in the Official Gazette of Industrial Property till prior to the date of issuance of a decision on grant of a protection titles, any third party shall have the right to express opinions to the concerned state management agency in charge of industrial property rights on the grant or refusal to grant a protection title in respect of such application.

JAPAN

Chapter IVbis of JTL- Any person may file with the Commissioner of the Patent Office an opposition to a registration within two months from the date of publication of the Gazette containing the trademark.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANOPPOSITIONOPPOSITION

BRAZIL




JAPAN


VIETNAM

- adopts the pre-grant opposition system- decision on the opposition is made by examiner of application- decision on the opposition is not subject of appeal procedure- opposition is only used as information source for examination- opposition with respect of registration right may be handle by the court if the NOIP is impossible to determine

JAPAN

- adopts the post-grant opposition system- decision on the opposition is handled by collegial body of three or five appeal examiners- decision on the opposition is not subject of appeal procedure- decision on the opposition can be brought to the court.

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANOPPOSITION (CONTINUED)OPPOSITION (CONTINUED)

BRAZIL




JAPAN


VIETNAM

Art. 6 of IP Law-Trademark right shall be automatically established on the basic of use process- Registration is not required- No time limit

JAPAN

Chapter IV of JTL-A trademark right shall come into force upon registration-Time limit: 10 years

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANTRADEMARK RIGHTSTRADEMARK RIGHTS

BRAZIL




JAPAN


VIETNAM

- Follow the first-to-file system- Two or more applications, same filling date or priority date – only one application shall continue to registration.- Choice made by agreement- No agreement – all will be refused for registration- Well-known trademark – EXEPTIONAL of “first-to-file” system

JAPAN

- Follow the first-to-file system- Two or more applications, same filling date – only one application shall continue to registration.- Choice made by agreement- No agreement – lottery

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANFIRST-TO-FILE SYSTEMFIRST-TO-FILE SYSTEM

BRAZIL




JAPAN


VIETNAM

- No provision- In the past: existence- Present: abolishmentArt. 74(2)(g) of IP Law – TM similar to or identical with unregistered TM which is widely used and recognized for identical goods or services shall be precluded from registration - No trademark right- In practice: can be registered after filing application

JAPAN

Art.32 of JTL Conditions:- TM which has been used in JP identical with or similar to TM in application filed by another person- no intention of engaging in unfair competition- TM become well-known among consumersThe prior use person shall have the right to continuously use

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANPRIOR USEPRIOR USE

BRAZIL




JAPAN


VIETNAM

Art.42(4) of Circular No.1/2007/TT-BKHCN:- well-known mark is recognized according to civil procedures or recognition decision of NOIP shall be recorded in the list- until now NO LIST has been compiled

JAPAN

No specific provision In practice:-Well-known trademarks have been listed in IPDL and can be searched through Internet- W-K TMs accumulated in IPDL includes1.Defensive marks2.TM recognized as W-K in decisions on opposition, appeal/trial decisions3.TM recognized as W-K in court decisions

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANWELL-KNOWN TRADEMARK LISTWELL-KNOWN TRADEMARK LIST

BRAZIL




JAPAN


VIETNAM

Art.42(4) of Circular No.1/2007/TT-BKHCN:- civil procedures - NOIP recognition - until now either court’s ruling nor NOIP decision with regard of well-known TM recognition had been issued

JAPAN

Art.64 – defensive markIn practice:- Defensive mark- Opposition and appeal/trial procedures- Judicial procedure

COMPARISION BETWEEN VIETNAM & JAPANCOMPARISION BETWEEN VIETNAM & JAPANWAYS TO BE RECOGNIZED AS WELL-KNOWNWAYS TO BE RECOGNIZED AS WELL-KNOWN

CONCLUTION AND RECOMMENDATIONCONCLUTION AND RECOMMENDATION

Amend Art.4(20) of IP Law with respect of well-known TM

Reasons:

- Compliance with Article 16(3) of TRIPs Agreement: awareness

of relevant sector of the public is sufficient to be recognized as

well-known

- Compliance with the practices.


Upgrade Examination Guidelines

To attain the goals of uniformity, consistency and certainty, it is

essential for the NOIP to include in TM Examination Guidelines

the following contents:

- Illustrative cases to explain which case falls under the Article 74(2)(i) of IP Law- Illustrative case to distinguish the difference between the Article 74(2)(i) and 74(2)(g) of IP Law - Trademarks well-known among consumers include not only marks well-known among end consumers but also marks well-known within a certain specific areas and in the relevant sector of the public.- Which situation unregistered well-known trademark can be recognized as well-known trademark in Vietnam


Compile well-known trademark List

The list of compilation of well-known trademark list is vital in

implementing IP Law.

Benefits:

- Single, uniform well-known trademark database

- Evidence of reputation in litigation


Publish a summary of appeal/trial decisions

In Japan, summary of appeal/trial decisions has been published

by the JPO on a monthly basis to keep examiners well-informed

of the latest trend of their professional fields.

This type of material is very useful for examiners and especially

important for new comers to improve their experiences in daily

work. Besides, there would be preferred that the typical cases

collected in this material can be used as reference for other

related competences authorities in dealing with intellectual

property enforcements and also the trademark owners in protect

their legitimate right effectively.

With so many advantages of the above-mentioned material, it is

a time for the NOIP to publish the same document.


Adjust the opposition procedure with respect of W-K TM

In Japan, with the goal of making the granting of the registrations

faster, the opposition proceedings which in the past occurred

before registration are now made after it. An examination

concerning an opposition and the ruling thereon shall be

conducted by a collegial body of three or five trial examiners. The

procedure is similar to that of an administrative trial. Review of

the application by a three or five-judge panel is important to

ensure that the examiner’s decision is correct.


Adjust the opposition procedure with respect of W-K TM

In Vietnam, the opposition can be filed any time from the date of

application publication to the date prior to the decision of provisional

refusal or registration shall be issued. The opposition including the case

with respect of well-known trademark recognition shall be conducted by

examiner who is responsible for the related application. Well-known

trademark right is automatically established without registration. Once a

trademark has been recognized as well-known, it will have full rights as

ordinary registered trademark. Therefore, conducting a well-known

trademark related case is always very important. In author’s point of

view, regarding to well-known trademark related case opposition, it

should be handled separately from the substantive examination process.

The opposition should be conducted by collegial body to ensure the

objectiveness and accuracy of the decision.


Improve the public awareness regarding W-K TM

In order to improve the protection of Well-known Trademarks

activity in Vietnam, there is an urgent need to device and

implement an action plan to sensitize academia, enterprises and

general public about the importance of this kind of IP creation.

- Early-stage awareness: introduce the topics related to W-K TM

by demonstrating the delight of creativity at schools

- There should be more awareness of the economics of IP,

appreciating the economics of intellectual property is critical for

the success of businesses.

- Universities, research centers and academia in general should

popularize a practical approach to create culture for IP protection

in all fields including “Well-known Trademarks”.

THANK YOU!

CẢM ƠN

ARIGATO GOZAIMASU

September 10, 2010 Hà Thị Nguyệt Thu (NOIP) Well-known trademark protection Reference to the Japanese experience.

Documents

similar trademark

trademarks wellknown

trademark examiners

objectionable trademark

ordinary trademark slide

japanese law law

mark identical

registered mark