luận văn thạc sĩ identicalness and similarity in examining trademarks in vietnam

MINISTRY OF EDUCATION AND TRAINING FOREIGN TRADE UNIVERSITY MASTER THESIS IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM Specialization: International Trade Law and Policy NGUYEN THI HONG NHUNG Hanoi, 2020 MINISTRY OF EDUCATION AND TRAINING FOREIGN TRADE UNIVERSITY MASTER THESIS IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM Major: International Economics Specialization: International Trade Policy and Law Code: 8310106 Fullname: Nguyen Thi Hong Nhung Supervisor: Assoc Prof., PhD Le Thi Thu Ha Hanoi, 2020 CERTIFICATION I hereby certify that the thesis with the title “identicalness and similarity in examining trademarks in Vietnam” is my own research and does not reproduce any other materials The data indicated in the thesis is clear, accurate and collected from the confident sources of information The Author Nguyen Thi Hong Nhung i ACKNOWLEDGEMENTS Throughout the course and completing this thesis research, I have received valuable guidance, dedication and enthusiasm of my supervisors, my teachers, my friends, my colleagues and my family With all my respect and gratitude, I would like to express my appreciation and sincere thanks to: My special thanks to my supervisor- Assoc Prof., PhD Le Thi Thu Ha, who was dedicated to guide and help me in the process of researching and writing this thesis Without her instructions and guidance, thesis might not be completed I would be grateful to my teachers in Postgraduate Education of Foreign Trade University for interesting and useful lectures, for enthusiastic transmission of valuable knowledge and for the best conditions offering in the process of the course I would like to express sincere thanks to my colleagues in Intellectual Property Office of Vietnam in general and in Trademark Examination Center in particular for supporting me with useful and plentiful data and their priceless experiences and knowledge shared with me during the interview and daily working life My sincere thanks come to my friends and my family, especially my younger sister, for their encouragement and supports during the courses, especially the period of thesis research This thesis studies on identicalness and similarity in examining trademarks, which is not a brand new topic in the world, but complicated and required various technical knowledge, skills and practical experiences Thus, the thesis has the inevitable shortcomings and limitations I am looking forward to receiving valuable comments for improvement Sincerely Nguyen Thi Hong Nhung ii TABLE OF CONTENTS CERTIFICATION i ACKNOWLEDGEMENTS ii LIST OF ABBREVIATIONS v LIST OF TABLES AND FIGURES vi CHAPTER 1: INTRODUCTION 1.1 The significance of thesis 1.2 Research questions 1.3 Research purposes .4 1.4 Scope of the research 1.5 Research methodology 1.6 Significance to knowledge 1.7 Structure of the thesis CHAPTER 2: LITERATURE REVIEW 2.1 Trademarks 2.2 Distinctiveness of trademarks and likelihood of confusion 2.3 Trademark identicalness and similarity 10 2.4 Filling the gap 11 CHAPTER 3: RESEARCH METHODOLOGY 12 3.1 Qualitative Data Collection 13 3.1.1 Data collection via desk research 13 3.1.2 In-Depth Interview 14 3.2 Qualitative Data Processing and Analysis 15 CHAPTER 4: RESEARCH RESULTS 20 4.1 Position of trademark identicalness and similarity examination 20 4.2 Demand for conducting identicalness and similarity of trademark examination in Vietnam 22 4.2.1 Numbers of filed applications 23 4.2.2 Numbers of third party’s opinions on the grant of protection titles 27 4.2.3 Numbers of appeals 28 4.3 Criteria for identicalness and similarity examination of trademarks 29 iii 4.3.1 Identicalness and confusing similarity of signs 33 4.3.2 Identicalness and similarity of goods and services 57 4.4 Subjects of comparison as the control marks 71 4.4.1 The prior registered trademarks 72 4.4.2 The widely used and recognized trademarks and the well-known trademarks 74 4.4.3 Another person’s mark which has been registered the registration certificate of which has been invalidated for no more than years 75 4.4.4 Trade names 75 4.4.5 Geographical indication and geographical indications being protected for wines or spirits 77 4.4.6 Industrial Design 78 CHAPTER 5: RECOMMENDATION AND CONCLUSION 80 5.1 Recommendations 80 5.1.1 Policy and regulations 80 5.1.2 Platform and Support Instruments 82 5.1.3 Enhancing examiners’ abilities 83 5.2 Conclusions 83 REFERENCES 87 APPENDIX 92 iv LIST OF ABBREVIATIONS IP Intellectual Property IPRs Intellectual Property Rights IPVN Intellectual Property Office of Vietnam TEC Trademark Examination Center WIPO World Intellectual Property Organization EUIPO European Union Intellectual Property Office JPO Japan Patent Office KIPO Korean Intellectual Property Office IP Law Viet Nam Intellectual Property Law (IP Law) of December 11, 2005, amended in 2009 and 2019 Circular Circular No 01/2007/TT-BKHCN of February 14, 2007 of the Ministry of Science and Technology, guiding the implementation of Decree No 103/2006/ND-CP of September 22, 2006 of the Government, detailing and guiding the implementation of a number of articles of the IP Law regarding industrial property Internal Guidelines IPVN Guidelines on trademark examination v LIST OF TABLES AND FIGURES Table 1: Coding references 17 Table 2: Statistics on filed national trademark applications and granted trademark certificates in Vietnam from 1982 to 2019 24 Table 3:Trademark Identicalness and Similarity Definition 29 Table 4: Defining identicalness of two goods or two services .59 Table 5: Popularity of Legal Citations on Reasons for Refusals 73 Figure 1: Procedures of processing trademark applications in Vietnam 22 Figure 2: Filed national trademark applications in Vietnam 1982-present 26 Figure 3: Granted trademark certificates in Vietnam 1982-present .27 Figure 4: Number of third party’s opinions on the grant of protection titles filed in IPVN 28 Figure 5: Vietnamese numbers of appeals from 2005 to 2019 29 vi ABSTRACT In the context of globalization and international integrations, goods and services become more plentiful and diversified in the market Trademarks emerge to become more and more important in helping consumers distinguish goods and services provided/produced by one to another enterprise The confusion of consumers on trademarks and brands due to similarity or identicalness brings damages not only to themselves but also the goods and services suppliers Henceforth, cultivating a distinctive brand or trademark is a big question for enterprises and it is essential to assess the distinctiveness of a trademark before investing in developing their business In Vietnam, distinctiveness is assessed during in both stages of acquiring exclusive rights and enforcing the rights on basis of absolute grounds and relative grounds Identicalness and similarity of a trademark play a key role in defining the distinctiveness of a trademark on the relative grounds This article shall provide a picture on how identicalness and similarity are assessed in the process of examining trademarks in Vietnam and dig deeper in how the legal frame for the issues is interpreted and applied in the practice of examination Keywords: trademark identity, trademark identicalness, trademark similarity, likelihood of confusions vii CHAPTER 1: INTRODUCTION 1.1 The significance of thesis A trademark is a type of intellectual property consisting of a mark of any form used to distinguish products or services of a particular individual or enterprise from those of others It first appeared in the ancient world, which was thought to be first used by a sword maker in Roman Empire named Blacksmiths (Richardson, 2008), started to play an important role with industrialization, and emerging as a key factor in the modern world of international trade and market-oriented economies The first legislative act was passed in 1266 under the reign of Henry III requiring all bakers to use a distinctive mark for the bread they sold and began to be codified in modern th law since the 19 century in both civil and common law systems (Frank, 1925) For the former, the French first comprehensive trademark system in the world was passed into law in 1857 with the “Manufacture and Goods Mark Act” For the latter, the Merchandise Marks Act 1862 made it a criminal offence to imitate another’s mark with “intent to defraud or to enable another the defraud” in Britain and its first legislative act on registration of trademarks was passed in 1875 as “Trade Marks Registration Act” (Bently, 2008) All international treaties and national legal system, from Comprehensive and Progressive Agreement for Trans-Pacific Partnership to the Agreement on TradeRelated Aspects of Intellectual Property Rights, from civil law system such as French and Vietnamese to common law system such as the United Kingdom and the United States of America, share the common understanding of definition and functions of trademarks, however, differ one another in conditions governing protection and acquisition of trademark rights For instance, sound trademarks are protected in some countries and regions like the United States of America, Australia and European Unions and not protected in other countries such as Vietnam The conditions for a trademark to be protected are based on its distinctiveness whether trademark rights are acquired via either use or registration Distinctiveness of trademarks are assessed base on two grounds: absolute grounds and relative CHAPTER 5: RECOMMENDATION AND CONCLUSION 5.1 Recommendations With the hope of providing little contribution to answer the riddles above, the research has come up with some recommendations as following: 5.1.1 Policy and regulations First of all, the government need to codify more specific regulation, interpretation and instructions on how to define the “consumers”, particularly “average consumers” and given further guidance for examination and executing because it is the telescope that every examiner will take to see through the confusing similarity of trademarks The interviews indicate that there is no point that all the interviewees have a very common conception even the overall understandings not vary so much Consequently, the results of substantive examination produced by each examiner might be slightly different It is undeniable that never comes a scenario that all examiners, legal advisor and executors share only one thought on the similarity of certain trademarks which leads to confusion and that is exactly what consumers think However, more specific regulations and guidance on the key terms are still valuable in building a clearer framework for the stated issues which is inherently vague and of personal opinions Other countries’ regulations on “average consumers” and/or “relevant public” can be consulted for Vietnam, such as EUIPO and JPO For the former, the term “average consumer” is a legal concept that refers to “relevant consumer” or “relevant public” which are different from “general public” or “public at large”, 80 EUIPO also points out two factors that define the relevant public in the context of relative grounds They are: the territory defined by the earlier mark (the relevant public is always the public in the territory(ies) where the earlier right(s) is/are protected) and the goods and services that have been found identical or similar (goods and services help to figure out whether the relevant public is the general public or a professional/specialised public) Moreover, the relevant public always comprises of actual (currently purchasing goods or services) and potential (having likelihood of purchasing in the future) consumers (EUIPO, 2020) In short, EUIPO defines “average consumers” by the targeted consumers of a certain good/service and the earlier marks’ territory However, the researcher suggests that criteria for defining “average consumers” includes: territory of earlier marks, features of goods and services and the cultural and superstitutional factors “Culture and superstitutions” affects the way consumers perceive goods/services and the mark For instance, Vietnamese are fond of “playing with words” and they are creative in referring to a mark, such as in the case of “555” cigarette Vietnamese tend to call it “3 digits” instead of “555” itself Moreover, Vietnamese language is also special because it is written on Latin-based but diversed with many diacritics, which leads to the circumstances that a similar spelling but totally different meanings Second, the government should promote the relation and creating more dialogues between examiners and consumers, as well as the enterprises, marketers Consumers or those that trademarks serve as an indicator are actual and final people to define the area of confusion However, their insight of marks and behaviours change over time according to the economic and social development Moreover, the growth of national businessmen and business women as well as penetration of multi-national conglomerates in the context of technological and global blooming result in the outnumbered trademarks in both volume and types and their diversed ways of running business Henceforth, it is important to create a space for three parties, namely, the buyers, the seller and the governments to have dialogues and have better mutual understanding 81 Third, the cultural and local factors should be more focused because the value system of each community will shape the way its members think and behave, including doing business in general and making, exploiting, using and protecting trademarks in particular The point is well backed by the principle of territory Henceforth, taking cultures and localities into consideration should also be emphasized 5.1.2 Platform and Support Instruments By this term, the researcher implies the infrastructure and practical support tools, except for legal policies and institutions, such as IP system or guidance These suggestions are specially for IPVN Truthfully speaking, it is not a new recommendation IPVN has already improved its IP infrastructure in the last few years Nonetheless, the matter deserves to be highlighted one more time In terms of signs, applying technological advance and learning machine in retrieving images should be considered in order to reduce the minors in searching for control marks Moreover, the differences in multi-fauceted assessments of various factors of marks shall be done faster, better and consistently In additions, for ensuring consistent assessment of trademark similarity and identicalness, the forum, seminars and workshops on technical issues should be conducted more often so that the examiners are given chances and spaces to freely and actively share and to be shared their own opinions and experiences In terms of goods and services, a “dictionary” on similar goods and services should be built up, amended and revised periodically, which acts a reference for examiners to consults during the process of examination identicalness and similarity This is the lesson from JPO, which is known as “Similar group codes” or a check table that classifies similar goods and services in a category During the process of examination, trademark examiners will search for similar goods and services of a certain one in order to decide whether two goods or services are similar or not Thanks to the industrial and technological developments, there are more and more brand new goods and services It is difficult to update equally and comprehensively to a large number of examiners Henceforth, a check table of 82 goods and services will help to ensure that all examiners will have the same conclusions on similarity of goods and services 5.1.3 Enhancing examiners’ abilities There come suggestions for both IPVN and its examiners Training examiners is always one of the key factors in boosting examination of trademark identicalness and similarity It is shown in reality that IPVN examiners in general and TEC examiners in particular receive many training programme both online and offline, both domestic and abroad This activity should be encouraged and conducted regularly Nevertheless, this research suggests that examiners themselves should learn from the markets, talk to consumers of different industries and area, and even of different generations in order to understand the way they perceive trademarks Sometimes trademarks are perceived in very different way from the registered form of expressions For instance, “555” for cigarette is usually recognized by “3 digits” because it consists of three “5” digits Obviously it is far different from the common sense of the mark itself 5.2 Conclusions Identicalness and similarity plays important role in examining distinctiveness of trademarks on relative grounds Regulations on trademark identicalness and similarity are stipulated in Law on IP, specifically, from Article 74.2e to Article 74.2n The interpretation of those articles is specified in details in Point 39.8 and 39.9 of the Circular IPVN, particularly TEC, also provides its Internal Guidelines with the aim of providing the common understanding and instructions for application of those regulations in the practice of examining Mainly, there are two primary things that need to be highlighted again: they are criteria of assessment and subjects taken into consideration On the former, identicalness and similarity of trademarks are decided by identicalness and confusing similarity of signs; identicalness and similarity of goods and services; combinations of the two criteria leading to likelihood of confusion; and strength of senior mark (as a widely used and recognized trademarks, well-known trademarks, …) Among identicalness and similarity of 83 signs and identicalness and similarity of goods and services, the second are more decisive elements, and also the more difficult criterion to assess In terms of signs, there are five aspects to take into consideration: pronunciation, meaning, content, structure, and forms of expressions The comparison shall be made between word-word, figure-figure, word-figure If a sign is composed of more than two elements, the assessment of identicalness and similarity shall be conducted mainly on the “main part” or the dominant elements which contribute to distinctiveness of a sign If there are more than one dominant elements, each element shall be examined and so will their combinations In terms of good and services, only three aspects are in need of examination: Nature, function and utility, and commercial channel Among them, commercial channel is the necessary conditions while nature, functions and utility of goods and services are sufficient condition Without one of the two, the identicalness and similarity of goods and services can be made The comparison of goods and services are done between: goods-goods, services-services, and goods-services On the latter, the subjects of comparison taken as the control marks includes the prior registered trademarks, the widely used and recognized trademarks, the well-known trademarks, prior registered trademarks that has been invalided but no more than years, trade names, registered geographical indications, registered geographical indications for wine and spirits, and industrial design For widely used and recognized trademarks and well-known trademarks, the scope of protection is broader, which means confusion can be shaped by low-level of similarity of signs and even no limit on goods and services For trade names, it is essential for applicants to prove the likelihood of confusion based on its consumers’ impression and awareness For industrial designs, it is still a big question for both trademarks and industrial design examiners to answer because of inherent overlap of these two IPRs Besides the common understanding which can be seen in Internal Guidelines – consensus among examiners, there still exist issues that are obtained differently among them First, the problematic areas are in “similarity” and “confusion” In 84 case of double identicalness (identical signs and identical goods and services), likelihood of confusion is absolute and undoubted However, in case of similar trademarks (identical signs and similar goods and services; confusingly similar signs and identical goods and services; and similar signs and similar goods and services), likelihood of confusion is more difficult to decide Actually, the key matters lie in similar signs and similar goods and services These matters must be seen from the perspectives of consumers However, how to define average consumers are also a harsh riddle Henceforth, there are different opinions on this area among examiners In additions, the interpretation of Circular and Internal Guidelines sometimes does not seem to be coherent with each other and even does not keep up with the growth of trademarks in reality For instance, in case of translation and transliteration of verbal signs According to the Circular, only “merely translation and transliteration of well-known trademarks” is the basis for refusal However, the Internal Guidelines instructed that “it is merely a transliteration or translation of the control” In this paper, some suggestions to improve the issues are also provided for three stakeholders First, for the government, more specific regulations should be codified for further guidelines so that the examination activities will be easier for both examiners and executors Second, for IPVN, improving its infrastructure and enhancing human resources are recommended Third, for examiners, it is necessary to broaden and deepen their knowledge and skill on this technical field 85 LIMITATIONS OF THE STUDY The researcher has tried her hardest to complete the study, however, the thesis is still of shortcomings First, the number of studied cases study is limited and quite small in comparison with the applications filed in IPVN over the time Second, the information from interviews is affected by the interviewee’s points of view Moreover, the sample for interviews is mostly examiners from TEC, which may result in lack of diverse opinions from other entities of relevant market Finally, the limited researcher’s ability and time of research also hinder the better research results 86 REFERENCES Vietnamese References Anh, T Q Nguyen (2010) Trademarks applications based on forms of trademarks Journal of Science VNU, Law (26) 99-107 Application No 4-1991-03560 dated on Mar 15, 1991, at http://iplib.noip.gov.vn/WebUI/WDetail.php?intRecNum=44&HitListViewMode=Text&ref=0 Application No 4-2012-01483 dated on Feb 03, 2012, retrieved from TEC internal data database IPSearch Application No 4-2014-20861 filed on Sep 04, 2014, retrieved from TEC internal data database IPSearch Application No 4-2015-08554 filed on Apr 13, 2015, retrieved from TEC internal data database IPSearch Application No 4-2015-25226 dated on Sep 15, 2015, retrieved from TEC 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Geneva: WIPO (Publication, No 888e.) 55 JPO, Examination Guidelines for trademarks, at https://www.jpo.go.jp/e/system/laws/rule/guideline/trademark/kijun/index.html 56 Kirkpatrick, Richard C (1998), Likelihood of Confusion in 90 Trademark Law New York: Practicing Law Institute 57 Kvale, S (1996) Interviews: An Introduction to Qualitative Research Interviewing Thousand Oaks, CA: Sage 58 Kyung Pyo Ko, Kwang Hee Lee, Mi So Jang, Gun Hong Park, Sejin Mind, 2-gram-based Phonetic Feature Generation for Convolutional Neural Network in Assessment of Trademark Similarity 59 Legard, R., Keegan, J & Ward, K (2003) In-depth interviews In: Richie, J and Lewis, J., Eds., Qualitative Research Practice, Sage, London, 139168 60 Patton, M Q (1987) How to Use Qualitative Methods in Evaluation California: Sage Publications, Inc 61 Robert G Bone,(2012), Taking the confusion out of “likelihood of confusion”: Toward a more sensible approach to trademark infringement 62 Rossitza Setchi, Fatahiyah Mohd Anuar (2016), Multi-faceted assessment of trademark similarity Elsevier 63 Rubin, H.J., & Rubin, I.S (1995) Qualitative Interviewing: The Art of Hearing Data Thousand Oaks, CA: Sage 64 Semila Fernandes (2013), A case study approach - an analysis of the infringement of trademark by comparative advertising, Elsevier Ltd 65 Sople, V V (2014) Managing Intellectual Property (4 ed.) Delhi: PHI Learning 66 USPTO (2018), Trademark Manual of Examining Procedure, at https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-700d1e1.html access on Mar 19, 2020 67 W Mcias, I.Cervino (2016), Trademark dilution and practical efect on purchase decision, Elsevier Ltd 68 WIPO and KIPO (2009) IP Panorama Geneva: World Intellectual Property Organization 69 World Intellectual Property Organization (2013) World Intellectual Property Report: Brands – Reputation and Image in the Global Marketplace Geneva: WIPO publication 91 APPENDIX I: LIST OF INTERVIEW QUESTIONS (Lists of interview questions are flexible It is up to the specific circumstances that the interviewer can ask more questions or skip some questions) VIETNAMESE VERSIONS (ACTUALLY USED IN INTERVIEWS) Mức độ tương tự coi “gây nhầm lẫn cho người tiêu dùng”? Trong hai yếu tố, trùng tương tự dấu hiệu trùng tương từ hàng hóa dịch vụ, yếu tố đóng vai trị định hơn? Vì việc đánh giá tính trùng tương tự nhãn hiệu mang tính định tính, với số lượng lớn thẩm định viện nay, việc đảm bảo tính thống việc cấp từ chối cấp văn bảo hộ thực nào? Việc thực đánh giá tính trùng tương tự nhãn hiệu tên thương mại tiến hành nào? Có ý kiến cho rằng, có chồng lấn “nhãn hiệu” “kiểu dáng công nghiệp”, ông/bà suy nghĩ nhận định ENGLISH TRANSLATED VERSION (USED IN ANALYZING DATA) Which extent of similarity will cause confusion to consumers? Which is more decision in shaping trademark identicalness and similarity: identicalness of signs or identicalness of goods and services? Assessment of trademark identicalness and similarity is qualitative, how to ensure that all examiners (more than sixty) will have the same decision on grant or refusal of trademark protection title? In practice, how is assessment of identicalness and similarity between trademark and trade name conducted? Some argue that there is an overlap between “trademark” and “industrial design”, what you think about that? 92 APPENDIX II: LIST OF INTERVIEWEES No Name Position The interviewee wants his Examiner identity to remain Institution TEC anonymous The interviewee wants his identity to remain Examiner Division 1, TEC Examiner Division 1, TEC Examiner Division 2, TEC Examiner Division 2, TEC Examiner Division 3, TEC Examiner Division 3, TEC Examiner Division 4, TEC Examiner Division 4, TEC anonymous The interviewee wants her identity to remain anonymous The interviewee wants his identity to remain anonymous The interviewee wants his identity to remain anonymous The interviewee wants her identity to remain anonymous The interviewee wants his identity to remain anonymous The interviewee wants his identity to remain anonymous The interviewee wants his identity to remain 93 anonymous 10 The interviewee wants her identity to remain Examiner Division 5, TEC anonymous 11 The interviewee wants her identity to remain anonymous 12 The interviewee wants her identity to remain anonymous 13 The interviewee wants his identity to remain Legal officer Legal Division, IPVN (already retired) Legal officer Legal Division, IPVN (already retired) Legal officer anonymous 94 Legal Division, IPVN ...MINISTRY OF EDUCATION AND TRAINING FOREIGN TRADE UNIVERSITY MASTER THESIS IDENTICALNESS AND SIMILARITY IN EXAMINING TRADEMARKS IN VIETNAM Major: International Economics Specialization: International... initiated and published in 1994 and revised in 2010 (but not published yet) (Internal Guideline) 12 Examining identicalness and similarity of signs is guided more specifically in Point 39.8 in. .. identicalness and similarity in examining trademarks are always in need of studying, especially in scope of national levels for three main reasons, which are the dramatic increase in quantity and emerging