Protection of trademark under agreement between US vietnam on trade relations

LUND UNIVERSITY HANOI LAW UNIVERSITY FACULTY OF LAW PROTECTION OF TRADEMARK UNDER AGREEMENT BETWEEN u s - VIETNAM ON TRADE RELATIONS SPECIALITY: INTERNATIONAL AND COMPARATIVE LAW CODE : 60 38 60 MASTER OF LAW TH ;sis THƯ VIỆ N TRƯỜNG ĐAI H0C_LUAT HA NỔI PHONG GV - STUDENT : DO NGOC THANH SUPERVISORS: DR DINH VAN THANH PROF HANS HENRIK LIDGARD HA NOI - 2004 Contents ABBREVIATIONS INTRODUCTION 1.1 Background 1.2 Pupose 1.3 Method 1.4 Limitation 1.5 Content 1.6 Basic material OVERVIEW OF TRADEMARK PROTECTION 2.1 Definition, role, function of trademark insociety life and business environment 2.1.1 Definition of trademark 2.1.2 Role and function of a trademark 2.2 Definition of trademark protection 10 2.3 Objects of trademark protection 11 2.4 Requirement for trademark protection 14 2.4.1 Requirement of distinctiveness 15 2.4.2 Cases can not protected as trademark because o f lacking distinctiveness 18 2.4.2.1 Lacking distinctiveness because identification or sim ilarity with a registered trademark 18 Lacking distinctiveness because of using generic terms 20 Cases that cannot be protected because of other reasons 21 2.4.2.2 2.4.3 OBTAINING AND ENFORCING THE INDUSTRIAL PROPERTY RIGHT ON TRADEMARK UNDER VIETNAM- u s BILATERAL AGREEMENT ON TRADE RELATIONS 22 3.1 Process and procedures to obtain the trademark right 22 3.2 Rights and obligations of trademark owners 25 3.3 Measures to protect the trademark right 27 3.3.1 Trademark owner protect himself hist right 27 3.3.2 Protection of trademark right by administrative measures 29 3.3.3 Protection 31 3.3.4 Protection of trademark right by criminal measures 36 3.3.5 Protection 37 of trademark right by civil measures of trademark right on boundary SITUATION OF TRADEMARK PROTECTION IN VIETNAM AND SOME POSSIBLE SOLUTIONS TO IMPROVE VIETNAMESE LAW ON PROTECTION OF TRADEMARK 40 4.1 Situation of trademark protection in Vietnam 4.2 Some possible solutions to improve Vietnamese law on protection of trademark right 44 4.3 Some possible solutions to improve enforcement mechanism of trademark right CONCLUSION BIBLIOGRAPHY < Preface text> 40 46 49 50 Abbreviations Agreement between us and Vietnam on trade relations Intellectual property rights Trade- related aspects of intellectual property rights Paris convention on protection of industrial property Civil Code of Socialist Republic of Vietnam Civil Procedure Code of Socialist Republic of Vietnam The Agreement IP R TRIPs Paris Convention Vietnamese Civil Code Vietnamese Civil Procedure Code Introduction 1.1 Background Protection of industrial property right on trademark plays an ■nportant role, especially in the market economy Because, trademark which work as a”specific sign” expresses producer’s prestige in the market It is used to give consumer a guarantee of the identity of the market product, by the enabling the consumer to distinguish that product from those of other producers Thank to it, consumers can recognise and choose a good product among the same kinds of good Moreover, it is not fair to trade m ark’ owner when permitting other persons to use that trade mark on their goods or services without the consent of the trade mark’ owner and get profit from the prestige of this person Therefore, industrial property right on trademark in particular and intellectual property right in general must be respected and protected This right is a detail of fundamental rights of citizens, which are regulated in Vietnamese Constitution in 1992 In the integrating process into the World economy, Vietnam has become a full member of ASEAN and now she is negotiating to access WTO One of the requirements of this organization is to observe the TRIP Agreement Most concepts of TRIPs are expressed in the Vietnam-America trade Agreement Therefore, enforcement of this Agreement will facilitate for Vietnam to become a full- member of the WTO In recent years, the quantity of application for protection of trademark in the Vietnamese Department of Industrial Property has increased rapidly This proves that awareness of the role and significance of a trademark in society has been changing However, measures and mechanisms to enforce the right on trademark are not effective These cause reduction of the role of law in fact Violations of trademark are quite common, even to big enterprises that are not only prestigious in domestic market but also in international market such as Petro Vietnam, Trung Nguyen Coffee and so on Up to now, some articles, studies concerning the matter of industrial property right in general and trademark in particular have been done However, there are not any articles concerning the protection of trademark under Vietnam - America Trade Agreement to find out similarities and difficulties between them or give some possible solutions to enforce Agreement’s regulation in fact On the other hand, in order to satisfy the requirements of the Vietnam - America trade Agreement, it is required that we have to get good understandings on regulations of this Agreement Protection of trademark is one of these Therefore, having a good understanding on regulations of this Agreement and concerning matter of Vietnamese law will help us to enforce them effectively 1.2 Purpose The purpose of my thesis is to define common trademark concept under Vietnamese and American law and compare them with obligation under the Vietnam - America Trade Agreement It is also to investigate if Vietnam has satisfied the enforcement requirements of the Vietnam America Agreement The thesis will clarify what is a trademark, requirement of a trademark; find out similarities and differences between regulations of Agreement and Vietnamese law; give some possible solutions to improve Vietnamese law and enforce the industrial property right on trademark in the fact 1.3 Method The aim of the thesis is to present regulation of Agreement and Vietnamese law, so the methods, which will be used, are dcsc iptive and analytic methods I will describe and analyse regulation of them Moreover, I will compare them to find out differences and similarities Based on the result of description, analysis and comparison, synthetic method will be use to know how to enforce effectively the right of trademark in Vietnam 1.4 Limitation This paper is limited in the scope of matter concerning trademark and measures to enforce the right on trademark under Vietnam- America trade Agreement, compare them with Vietnamese law, and in some extent, with American law (Lanham Act 1946) and TRIPs or the Paris Convention The paper does not mention to all matters concerning trademark of the above mentioned documents, it is limited in certain things: regulation on objects and requirement of trademark, procedures to obtain the rights of trademark, rights and obligations of trademark owners, measures which are applied when violating the right 1.5 Content The thesis is divided into parts as followings: Part I: Overview o f protection o f trademark - objects and requirements L i Definition, role, function o f the trademark in society life and business environment l 1.1 Definition of trademark 1.1.2 Role, function of a trademark 1.2 Definition o f protection o f trademark 1.3 Objects o f trade mark protection 1.4 Requirement fo r trade mark protection Part II: Obtaining, enforcing o f the industrial property right on trademark under Vietnam - America trade agreement 2.1 Process and procedures to establish the right o f trademark 2.2 Rights and obligations o f trade mark owner 2.3 Measures to protect the industrial property right on trade mark Part III Situation o f protection o f trademark in Vietnam and some possible solutions to improve Vietnamese law on protection o f trade mark 3.1 Situation 3.2 Some possible solutions to improve Vietnamese law on protection o f industrial property right on trade mark 3.3 Some possible solutions to improve enforcement mechanism o f Vietnam on protection o f right o f trade mark 1.6 Basic material In order to solve the problem, I will use documents as follows: Vietnamese Constitution Vietnamese law Vietnam-America Trade Agreement American trademark Law (Lanham Act) TRIPs Articles concerning this matter Doctrine and case law Conclusion: Based on the above-mentioned reasons, it is necessary to research completely on the protection of trademark under Vietnam- America trade Agreement, compare it to Vietnamese law to give out some possible solutions to nprove Vietnamese law system, give out some possible measures to enforce the industrial property right on trademark in the fact Overview protection of Trademark 2.1 Definition, role, function of trademark in society life and business environment 2.1.1 Definition of trademark In the development history of human beings, trademarks have been used to distinguish origin of goods for a long time “It is proved that 4000 years ago, Chinese, Indian and Iranian handicraft- makers used their signatures or symbols to distinguish goods In Rome, potters used more than 100 marks to distinguish their goods Handicraft- makers wanted to use marks for many other purposes: advertisement for a producer or to be an evidence of a businessman’s property when happening disputes concerning property right It also guarantees for quality of products’^ 1) Working as a sign, which points out a product produced by an experienced producer in business, in the middle- ages, marks attach to trade development Nowadays, trademarks have been working as signs to distinguish products, which are produced by other undertakings and have become a worth property in business Looking at a trademark, consumer can distinguish and choose a quality product or one thing that they used to use Trademarks express prestige of a producer/supplier in business environment It contributes to get a market- share of an enterprise Therefore, complete legal protection of trademarks has been developing rapidly This mater has been interested in by nations In Vietnam, after establishing the Republic Democracy of Vietnam, intellectual property right (IPR) protection in general and trademark right protection in particular had been considered We promulgated many legal documents on this matter such as Decree N o.l75/T Tg of Prime Minister (dated 3/1/1958) on registering trademarks; Decree No 197/ HDBT (dated 14/12/1982) which was promulgated with a Chapter on trademark; Chapter on trademark using right and technical secret purchase It can be said that, the above-mentioned documents contribute significantly to obtaining, enforcing the trademark right in other historical stages, form a legal framework of this matter Together with transforming from a centralized planning economy to a market economy, these legal documents show many out of date points and need to be replaced After 15 researching and drafting years, Vietnamese Civil Code was promulgated by the National Assembly on 28th Oct 1995 Robert p M erges, Peter s M enell and Mark A, L em ley , In tellectual p r o p e r t y in a n ew tec h n o lo g y era, (Gaithersburg,MD: A s p e n ’s publication), 2"d edition , p.563 This is a huge result of ours in a renovation stage It is quite complete to adjust civil legal relations, including trademarks Trademark is one of objects of industrial property because “industrial property right is individuals, legal entities’ property right to patents, utility solutions, industrial designs, trademarks, right to using origin of goods and property right to other subjects that are regulated by law”2 Clearly, trademark right is one of civil rights of individuals and organizations It must be protected by law In order to understand completely and protect it significantly, Vietnamese civil law in general and Vietnamese Civil Code give a definition of trademarks, signs form a trademark, process and procedures to obtaining trademark right Article 785 of the Civil Code regulates that: “Trademarks are signs to distinguish the same kind of goods, services of other undertakings Trademarks may be a word, figure or a combination of these signs which are expressed by one or more colors” This definition was based on protection criteria and functions, purposes of trademarks It is similar to one of TRIPs and Paris Convention According to this definition, trademarks must be signs, which can distinguish goods or services of an undertaking from those of others It means that trademarks have to contain information to leave impression to the consumers, helping them to recognize a quality good It sent consumers an information of goods, which are looking for by them For example “Dove” trademark is a name of a bird When using as a soap trademark, it hints many meanings of tidy, peace and pure When using name of another bird for soap trademarks as sparrow will release a quite different information (3) The definition will be wide “open” meaning if it only limit in the scope “signs to distinguish goods or services of an undertaking from those of others” It will allow all signs, which have “distinctiveness” can be registered as trademark Nevertheless, Art 785 of Civil Code define that: “Trademark may he a word, figure or a combination between these signs which are expressed by one or more colors” Basing on this regulation we can understand by two ways: First one: Only word, figure or a combination between them is registered as a trademark This way of understanding will limit much “open” meaning- if any- of the first content of the definition Second one: The list in the definition is some examples, giving some typical signs, not listing completely and allowing other signs can be registered as trademark This way of understanding will make more clearly “opening” meaning of the trademark definition Nowadays, signs of word, figure and combination between them are used commonly as trademark (4) for goods or services of undertakings in most of countries in the world However, many new signs, which are perceived by persons such as olfactory, sound have not yet regulated in Vietnamese law although they are registered as trademark in many developed countries Moreover, numerals, letters are too simple and V ietn a m ese C iv il C ode, Article Kamil Idris, “A p o w e r to o l f o r eco n o m ic gro w th " , W IPO N o 888.1 0 , p l Vu Thi Hai Y en , "Definition o f trademark in V ietn am ese Civil Code", L a w M a g a z in e , (2 0 ), p.87 detail the procedures, rights and obligations of related parties in dealing with trademarks properties in the boundaries Based on that, the Parities are obliged of providing the procedures to allow the person who has rights to ask the judicial or administrative authorities to require custom agencies to postpone the use and the exchange of goods if there is clear proof showing that the import included trademarks violation This provision is not applied with the good in transit To avoid the misuse or overuse of the owner and to protect the interest of the defendant, the Agreement also provided: Contractual Party has right to request the applicant to provide all proofs to prove that there are initial signs of the trademarks property violation They also have to provide details of the goods to help Customs authority recognize the goods If the postponement is approved, the authority has right to ask the applicant to deposit a mount of guaranty money to protect the interest of defendant and other related authorities The purpose of this provision is to avoid the misuse or overuse of the rights If, in proceeding the requirement of the owner, the authorities seized the goods erroneously, the aD plicant then has to pay the importer, importer on behalf, goods owner amount equivalent to the lose they bear In a rational period of time, the authorities have to announce the applicant if the application is accepted or not, also, the time of customs action, when the application is accepted, is also indicated In the period of 10 days since the time applicant received the announcement of goods postponement, if the applicant has not applied introduction of instance, or the authorities has not applied any procedure to lengthen the time of seizing the goods, the seized goods will be of customs clearance58 Further more, the authorities also themselves act and postpone customs clearance if they found visible proof of intellectual property violation59 The provisions of application of the methods to apply over intellectual property on boundary may not be applied to non-commercial goods in baggage of individuals or small packages transferred in a non­ regular basic According to Vietnam law, the importation of goods for non­ commercial purpose is not treated as an industrial property violation60 These give a legal frame for application of procedures in the boundary Art 57, 58, 59 of the Customs Law provides of the temporary postponement of custom clearance to im port and export of the goods when the protection of intellectual property is required When there is clear proof of trademarks property violation, the owner has right to ask the customs authority to temporarily postpone custom s clearance According to Decree 12/CP (6/3/1999) and Regulation 825/TT of the Ministry of Science-Technology and Environment to implement the Decree 12, the authority has rights to apply the methods such as demolishing the goods of violation, other methods may be applied also Thus customs authority may apply the methods of administrative fine referring to the Decree of Administrative Fine and Decree 12/CP If the person who the fine 58 T h e A greem en t, A rticle 15.6 59 T h e A greem en t, Article 15.11 60 D ec ree /C P , Art 34 , Art 1; C usto m s L a w ( / /2 0 ) and D ecree 101/CP (3 /1 /2 0 ) provid ed in detail provisions o f the cu stom procedures, monitoring and inspecting procedures 38 is applied is not satisfied with the fine they are in due, they may appeal to the Customs Agency or to the Court The methods of controls in the boundary are not only applied to the imported goods but also applied to export (Art 57 Customs Law (29/6/2001), Art 14 Decree 101/CP (31/12/2001) This provision is totally appliance to the requirement of the Agreement 39 Situation of trademark protection in Vietnam and some possible solutions to improve Vietnamese law on protection of trademark 4.1 Situation of trademark protection in Vietnam u s - Vietnam bilateral agreement on trade relations has come into effect on date of 10th October 2001 In the last time, Vietnam expressed his efforts to implement regulations of the Agreement in general and regulations on intellectual property right in particular However, in the opinion of Mr G Hank w Baker, “comparing with international standards on this mater, Vietnam has to many things” Moreover, Mr Baker also points out that defining other intellectual property fields in law system is only an aspect of Law on intellectual property An important aspect is to regulate measures to implement in particular cases when violations happen because if we not compensate sufficiently for damages of trademark right, intellectual property right is unvalued With many amendments and adjustment in legal documents, Vietnamese regulations now are quite suitable to requirements of the Agreement Nevertheless, Vietnamese law on trademark protection is not conformity with the Agreement These things are based on Vietnamese social-economic conditions and in order to solve them we need more time We can see a fact that, after the Vietnamese Civil Code comes into effect, registration quantity of trademarks have been developing strongly (see the following table) Year 1996 1997 1998 1999 2000 2001 Quantity of application 5441 (2223) 4810(1645) 3642(1614) 4116 (2380) 5776 (3483) 6345 (3095) Trademark Quantity of certificate 3931 (1383) 2486 (980) 3111(1095) 3798(1299) 2876 (1423) 3639 (2085) (Number in the brackets is o f Vietnamese figures Source: Note o f reformation orientation o f structure, mechanism and methods to protect the 40 intellectual property right in economic integrating process- National Office o f Industrial property 2002) Base on the above statistics, quantity of trademark registration developed by year This number in 2001 is higher times than one of the years from 1981- 1988 (1234 applications and 6345 applications respectively) This fact points out that the people’s awareness on protection of intellectual property right in general and trademark right in particular is improved day by day Along to the rapid development of registration application quantity of trademark, cases of trademark property right infringement are developed Many goods are marked by registered trademark of other persons or are marked by marks which are similar to registered ones Violation activities of trademark property happen in many fields It does not only cause damages for producers but also effect on economic aspects, health and lives of the consumers.“In the beginning of 2002, some shops in Hanoi sold products such as clothes, bags with trademark “Chanel” These products were not produced by Chanel or by a person who is allowed to produce that goods by Chanel Especially, the shop in No Nha Tho Street, Hanoi, used “Chanel fashion” for the shop This action of the shop owner will make a confusion for the consumers on origin of goods and violate legal right of trademark owner which is regulated in Art 796 Sec of Vietnamese Civil Code, Art 34 Sec.3, Art 53 Sec Decree 63/CP on Industrial property Authorized by Chanel Company, Pham and Associates applied document to Vietnamese Intellectual Property Department to ask for the above- mentioned violation action The competent authority gave a conclusion (in document No 1039/KN, that: use of “Chanel” trademark in goods without consent of trademark owner can make a confusion for consumers and inf nge trademark property right of trademark owner Base on this conclusion, Pham and Associates asked the shop owner to stop selling the goods which are marked “Chanel” trademark However, the shop in No Nha Tho Street only added one “1” to “Chanel” (It became “Chanell Fashion”) The sign “Chanell” is similar to “Chanel” trademark of Chanel Company because “Chanell” includes letters that are existed in “Chanel” trademark, position of letters is identical to ones of “Chanel” Both “Chanell” and “Chanel” includes two words with identical pronunciation Therefore, the use of sign “Chanell” of the shop in No Nha Tho Street infringed the right of trademark owner Vietnamese Intellectual Property Department agreed with Pham and Associates on this matter (by document No 13/KN dated 8/1/2002) Pham and Associates continued to discuss with representative of the shop and sent document to Market Management Department to solve Faced with being punished by administrative measures, owner of the shop had to take away marks, contact papers, name cards which were used “Chanel” m ark”6* This example points out that trademark violations in Vietnam is quite common with many different types According report of National Office of Intellectual Property, in 1994 total cases of trademark violation is 41, 2001 is 198; 2002 is 282 and 2003 is 260 cases In fact, the violation cases are much more than the above­ 61 V ietn a m ese Industrial property A ssociation (2 0 ), “S o lv in g violation o f “Chanel t r a d e m a r k r ig h t in V i e t n a m ” , N e w s o f In dustrial p ro p e r ty a c tio n s (N o 15), p 3-4 41 mentioned data “Up to now, quantity of disputes on intellectual property which are settled in the court is small In the stage from 1995 to 2001, the cases are dealt with by Provincial courts are 45 in which trademark violations is the largest There is not statistic of criminal cases which are solved in the court but through the fact we know that there are many cases concerning trademarks W hile, thousands cases are settled by Inspection Office, Market M anagem ent Office, Economic Police and Customs Office through administrative measures From January 2000 to June 2003, Market Management Office solved approximately 1500 cases in which mainly concerning trademarks and industrial designs About 400 cases violating intellectual property right are settled by Customs Office from 1999 to 2003, in which many violators are foreigners"62 In the opinion of representative of Unilever Company in Vietnam, their tradem arks which were imitated with the largest quantity are Omo, Sunlight, p/s, Sunsilk, Clear, Dove and Lifebuoy ’’According to a informal date of a M arket Researching Company, at the and of 2001, value of fakes that im itated trademarks of Unilier was approximately 10 millions USD”63 Some data above shows the situation of trademark violation in Vietnam and dam ages that it cause for manufactures and consumers It can be said that among subjects of the IPR, trademark is the most violated because it links closely with commodity flows It is exposed out of the goods and im itated easily Trademark can effect on consum er’s taste and their decision when choosing goods Although we have applied many measures to lim it trademark violation but quantity of violation cases have increasing because of a big profit from this action Moreover, because not pay for advertisement and concerning fees, so the fakes are very cheap and in some cases- goods are quite good Therefore, the consumers- because of low awareness- bought these goods This is one of reasons that causes increasing of violation cases On the other hand, many trademark owners are not active in cooperating with the competent authorities in protecting their trademark right M easures applied to violators- somewhere and some casesare not suitable, so they are not strong enough to limit v-olation actions in the future Up to now, most of violations are solved by administrative measure because of the above- mentioned reasons However, this measure does not meet a dem and of covering of damages of trademark owner, restore a primary situation when the property right was not violated Because, according to Decree No 12/CP, a maximum compensation is only 1.000.000 Vietnam ese dongs If asking for a compensation which is more than 1.000.000 Vietnam ese dongs, trademark owner has to sue to Civil court The fact shows that the owner can not be recovered for damages by a such low compensation “Procedures to protect the right of trademark owner are not quick, cooperation between concerning authorities is not 62 Ministry o f S c ie n c e and T e c h n o lo g y and M inistry o f Culture and Information "Report on enforcement situation o f intellectual property rights in Vietnam", K e y re p o r ts a t the N atio n al C o n fe re n c e on E n fo rc e m e n t o f In tellec tu a l p r o p e r t y rights in Vietnam Hanoi /9/20 04 , p.4 63 Ministry o f S c ie n c e and T e c h n o lo g y and Ministry o f Culture and Information "Report on enforcement situation o f intellectual property rights in Vietnam", K ey rep o r ts a t the N atio n al C o n fe re n c e on E n fo rc e m e n t o f Intellectua l p r o p e r t y rights in Vietnam Hanoi 8/9 /20 04 , p.45 42 effective”64 While, solving these cases by criminal and civil measures is limited According to statistics of Court., in the stage from 1995- 1997, the Court tried 202 cases of producing and selling fakes In others countries, especially in United State, civil measure is a common one to protect the trademark right Nevertheless, in Vietnam, this measure does not express its role This thing is decided by the fact of Vietnam in the transformation from a centralized planning economy to a market economy Reason of the situation is that the people’s thinking is no familiar with taking to the court Moreover, it is required more time, money when solving the matter in the court On the other hand, a limited experience and knowledge of judges is one reason which causes the limitation of solving by civil measures Regarding the criminal measures: Although these ones are proved in fact that it is useful for punishing the trademark right violation but it is rarely applied despite of regulating in Vietnamese law ’’This thing is a consequence of lacking knowledge, experience and necessary financial source for investigating, solving trademark right violations of both People’s Procuracy and Investigation agency” 65 While, “protection of trademark right by measures which implemented in borders faces many difficulties because sanctions of intellectual property right are overlapped, implemented for many subjects and infringement actions These things cause unfairness and difficulties in solving activities”66 Moreover, intellectual property rights are civil rights, therefore, the Customs Office only apply measures above when being required by trademark owners Articles 57, 58, 59 of Customs Law and article 14 of Decree No 101/CP show clearly that thing These regulation is adequate in general but in some extent it is hard to a person who require to protect his right because he has to supply information concerning importers, evidences that are difficult to get in a short time While, the Customs Law and Decree No 101/CP not allow the Customs Office basing on a previous supplied information to stop customs procedures on goods which are in doubt of violation Besides, there are many limitations in Customs officials as well as lacking of modem equipments, cooperation between Customs Office and concerning authorities and trademark owners Base on Vietnamese law and the fact of protecting of trademark right, it is necessary to improve Vietnamese law on this matter and mechanism to enforce this right in fact 64 Master Bach Q u oc An "Enforcement measures o f intellectual property right under Vietnam- u s bilateral A g reem ent on trade relation- Situation o f V ietn am ese law and so m e p o ssib le solutions", M a g a z in e on L a w a n d D e m o c r a c y - Ministry o f Justice- Special subject on the V ietnam - u s bilateral agreement on trade relations, 0 , p 118 65 G.Hank w Baker, "the regulations o f Intellectual property right in the B u sin ess ven tion betw een Vietnam and US", D e m o c r a tic a n d la w jo u r n a l, (Ministry o f Justice2 0 ), p 106 66 Protection o f trademark right by measures which im plemented in borders- N eed in g im provement o f law and implementation m echanism in the fact, C u sto m s research in g N e w s , ( 1 - /2 0 ) 43 4.2 Some possible solutions to improve Vietnamese law on protection of trademark right In order to protection of trademark right is really effective, first of all, we have to build a completed legal system It will create a legal framework to enforce the right in fact Now, in Vietnam, most of regulations concerning protection of trademark concentrated in Vietnamese Civil Code and detailed in many Decrees, Ordinances of Government Japanese experts commented that regulating intellectual property in the Civil Code is an inadequate matter of Vietnamese law67 This thing can be explained that Vietnam is transform ing from a centralize planning economy to a market economy and is in the first stage of implementation, enforcement of intellectual property right Therefore, put the regulation of IPR in general and of trademark in particular had been considered as a success in codifying process However, in the long time, we should regulate on “Intellectual Property Rights and Technology Transfer” in a separated Law Some pioneering countries in this field such as USA, Japan also did like that Now, the M inistry o f Science- Technology of Vietnam is drafting a such Bill In the next time, we need to promulgate a Decree of Government on solving of administrative violations in the intellectual property field This Decree will replace Decree No 12/CP on finning administrative violations in industrial property and Decree No 31/CP on finning administrative violations in culture- information field Therefore, we will have unification forms of solving adm inistrative violations to facilitate competent authorities in implementation Accordingly, we should consider function of administrative treatment, to reduce quantity of agencies that have this function, to enhance leading role of the state management authority of intellectual property on enforcement in general and trademark right in particular We should amend the way of defining administrative violations basing on a principle: Fining level must be higher than profit that violators can get from violation Fining level must be increased The more serious violation is, the higher fining level is For exam ple, violation concerning goods that effect directly to face, health of the people; violations that many times From the fact of implementation, Inspection Office ask to amend and adjust section 1, article of Decree No 12/CP “Accordingly, not apply the form of warning in order to improve strictness of sanctions to limit violations”68 If a Decree as mentioned above will be promulgated, this possible solution should be considered 67 Ministry o f Justice, "Summary report on m e t h o d o lo g y o f Civil C o de amendment" 68 Ministry o f S c ie n c e and T e c h n o lo g y and M inistry o f Culture and Information "Report on enforcement situation o f intellectual property rights in Vietnam", K e v re p o r ts a t the N atio na l C o n fe re n c e on E n fo rc e m e n t o f In telle ctu al p r o p e r t y rights ill Vietnam Hanoi /9 /2 0 , p 91 44 Regarding trademark definition in Article 785 of Civil Code: As analyzed in Chapter I, We should give a more general definition to avoid listing types of trademark because it easily make confusion as above mentioned analysis Moreover, in comparison with American Law or regulation of the Agreement and TRIPs it is not necessary that trademark must be formed by “one or some unique signs” The term “unique” here is not quite exact and is not suitable to the fact because it does not only “unique” signs are protected as trademark Therefore, we should amend this regulation to conform to the fact Article Section Chapter II of the Agreement regulates that “trademarks shall include service marks, collective marks and certification marks” Many certificated marks are used in facts such as ISO 9000 However, Vietnam Civil Code and concerning documents have not yet regulated in details on this type of trademark In order to protect completely trademark, we should amend this matter to Vietnam Law Moreover, we should express clearly a principle of “National Treatment” in our legal documents For example we are preparing to promulgate a Or* (inance on receiving, paying and managing the industrial property fees According to this Ordinance, there is not a distinguish between Vietnamese and foreign industrial organization is receiving, paying and managing the industrial property fees Up to now, the Law on complaining and denouncement has not yet regulated that a complainer has a right to ask for “being reviewed the final decisions” as regulated in Article 11 Section Chapter II of the Agreement Therefore, we should consider for amendment of and adjustment to some articles of Law on complaining and denouncement and Ordinance on solving procedures of admiiiistrative cases The Civil Procedure Code give a defendant a right of “being informed by writing in time and sufficiently in details, including a basic of complaint” in line with Article 12 Section a of the Agreement Nevertheless, I think that in the future, the Civil Procedure Code should be amended in which regulated clearly that the Court is responsible for reporting the defendant when plaintiff changes, amends content of suing application On the other hand, the Code should mention clearly to content of violation suspension and procedures to implement this right of the court and competent authorities when allowing these agencies have right to force violators to stop their violations and compensate Moreover, need to point out method to define damages and level of compensation to facilitate for the courts when implementing in the fact Provisional measures play an important role in the fact If there is not any procedure that allows trademark owner to ask competent authority to apply provisional measures to stop violations, to seize and preserve evidences, the trademark right is not significant The Civil Procedure Code have just stipulated on secret information protection and using provisional measures These regulations have met regulation of the Agreement in some extends However, in order to more improve Vietnamese law, I think that we should allow to apply provisional measures before suing and point out determining and protecting measures of secret information At the same time, we should give a more detailed regulations of using provisional 45 measures This regulation will avoid abusing or neutralizing this right of a plaintiff because of paying too high security or assurance Article 238 of the Civil Procedure Code stipulates that when giving a judgment, the court only bases on documents and evidences which are examined in the court This regulation is conformity with Article 11 Section Chapter II of the Agreement Nevertheless, it will be better if we make clearly that: judgment has to point out verified documents and evidences which are based on to make a decision Furthermore, regulation that lawyer fee was paid by an applicant (if there is not any other agreement of parties- Article 114 Civil Procedure Code) is not suitable to the Agreement and international rules in some extends In the future, we should give a regulation that a looser has to pay that fee This regulation will harmonize with regulation of the Agreement Moreover, a method to define “serious damage” must be regulated to clarify article 171 of the Criminal Code, especially we should take into account invisible damages such as prestige of a manufacturer when clarifying the above mentioned matters When investigating trademark violations, should investigate more widely to treat concerning parties such as printing- makers, package suppliers , should not only treat violators Therefore, the treatment is completed and can prevent violations Besides improvement of law on trademark right, it is necessary to improve ability of enforcement agencies 4.3 Some possible solutions to improve enforcement mechanism of trademark right Nowadays, there are many enforcement agencies of intellectual property in genera] and trademark right in particular such as People’s Courts, People’s Committees, Industrial Property Inspections, Custom Office In order to improve enforcement mechanism of trademark right, first of all, we should rearrange structure and to improve capability of enforcement agencies In details: Function of People’s Court is to solve civil cases concerning trademark It has right to issue an order to apply provisional measures to ensure implementation of civil obligations or to issue an order to investigate violation, a decision of solving measures such as forcing to stop violations, to compensate, to apologize At the same time, a court also has a function of judgment by criminal procedure on crime of intellectual property in general and trademark right in particular In order to avoid abusing, “should consider to re-assign functions of each agency We should establish a agency which is responsible to receive administrative treatment applications, consider and give a treatment measure as well as implementation agency, send application and result of consideration to that agency”69 6J Ministry o f S c ie n c e and T echnolog> and Ministry o f Culture and Information "Report on enforcement situation o f intellectual property rights in Vietnam", K e y re p o r ts at the 46 It is necessary to improve cooperation among these agencies, to limit avoiding responsibility or overlapping when solving cases At the same time, these authorities have to often transfer information, draw on experience to find the best solution for case We need to establish a close relation between trademark owner and the National Office of Intellectual Property and Customs Office in preventing imported and exported goods which violate trademark right We should improve relation between Market management Department and Customs Office in detecting and investigating the above -m entioned goods in domestic market which are going to be exported to abroad We should give more details on the right to stop customs procedure of the Customs Office when recognizing trademark violation without requirement of the trademark owners Up to now, the trademark ow ner only register to protect intellectual property right in the National Office of Intellectual Property They not have to that in the Customs Office Therefore, we should amend a requirement in which trademark owner has to register in a system in customs Offices at the border These regulations will help the Customs office actively recognize trademark violations Besides, we need to set up training professional skill of trademark right enforcem ent officials The fact shows that m ost of officials inn these authorities, especially judges have not been trained on intellectual property It is necessary to establish a department that is responsible for intellectual property in general and trademark right in particular in competent authorities such as Custom s Office, M arket M anagem ent Office Pushing up close cooperation between these authorities and trademark owners to bring out quickly and sufficiently trademark violations, to solve appropriately cases in order to punish violators and lim it violations of other people in the future In my opinion, a state management function of trademark registration and management which has ju st been given to Ministry o f Trade is not satisfactory The reason why I made a such comment is because this is a professional field, not a mere trade activity although it links closely with trade Therefore, it must be given to a professional agency as National Office of Intellectual Property of Vietnam (This office did this work previously) In order to more improve results of trademark right enforcement, it is necessary to pay more money to buy equipm ents, machines to preserve information, helping enforcement authorities to get necessary information quickly to serve professional activities On the other hand, State has to pay more money for activities of these authorities because the enforcement activities are not effective if lacking money for renting stores, keeping goods, demolishing goods that violate trademark right Besides, we should give a clear reward and fine to enforcement officials This action does not only encourage working attitude of them but also limit bribe takers, limit ignorance of trademark right violations in implementation process On the other hand, we have to “build up an equal relation, mutual benefit between the trademark owner and consumers, look for solutions to N a tio n a l C o n fe r e n c e on E n fo rc e m e n t o f In telle ctu a l p r o p e r t y rig h ts in Vietnam Hanoi /9 /2 0 , p 16 47 replace goods, products that are in a big demand or concerning to many people”70 Therefore, it is necessary to make an agreement, between a person who has demand of exploring and using a mark with the trademark owner This action will reduce pressure between supply and demand on a good which bearing mark A certain concession of the trademark owner will create a fact that there are enough quantity of good with a reasonable price to limit fakes with a low price in the market 70 Ministry o f S c ie n c e and T e c h n o lo g y and Ministry o f Culture and Information "Report on en forcem ent situation o f intellectual property rights in Vietnam", K e y rep o r ts a t the N a tio n a l C o n fe re n c e on E n forcem en t o f Intellectual p r o p e r t y rights in Vietnam Hanoi /9 /2 0 , p 18 48 Conclusion Intellectual property right in general and trademark right in particular is a quite new matter in Vietnam now However, it is playing an important role in our economy In order to protect significantly on one of the civil rights which are regulated in the Constitution 1992, we not only codify it in the Vietnamese Civil Law but also sign many international conventions concerning intellectual property right, including Agreement between the United States of America and the Socialist Republic of Vietnam on trade relations We can say that the Agreement has been expressing cooperation spirit of Vietnam on globalization tendency Being a party of this Agreement, it is required that Vietnam has to carry out adequately and strictly regulations of this Agreement, including regulations on trade mark right which are regulated in Chapter II Comparing with u.s - one of pioneering countries in intellectual property right, when implementing this Agreement, certainly Vietnam will meet many difficulties because of lacking in domestic law and awareness of the people and officials who work for relevant authorities On the other hand, the fact also points out that trade mark violations have been increased strongly, to violate right of trade mark owners, consumers as well as society In an international economic integration tendency now, how to limit the above situation to contribute on implementing strictly international conventions ? Based on the above reasons, with this thesis, the writer would like to clarify trade mark regulations in the Agreement, to compare with Vietnamese ones to find out similarities and different Based on these result, it is to improve Vietnamese law and enforcement mechanism of trade mark right to meet requirements of the Agreement, to speed up assessment process of Vietnam to WTO 49 Bibliography I/ Law and Conventions Constitution of Socialist Republic of Vietnam (1992), National Political Publishing House, Ha Noi and Resolution on amendment of constitution 1992 which is approved by the National Assembly in November 2001 Civil Code of Socialist Republic of Vietnam (28/10/1998), National Political Publishing House Civil Procedure Code of Socialist Republic of Vietnam (15/6/2004), National Political Publishing House Criminal Code of Socialist Republic of Vietnam (21/12/1999) Customs Law Law on complaint and denouncement (2/12/1998) Decree 63/CP (24/12/1992) of the Government on industrial property Decree No 12/CP issued by the Government on solving administrative violations in industrial property Decree No 6/CP on amendment of and adjustment to some articles of D ecree No 63/CP on industrial property 10 Decree No 101/CP dated 31/12/2001 promulgating in details the implementation of provisions of Law on Customs 11 Ordinance on procedure of solving civil cases (29/11/19% ) 12 Ordinance on procedure of solving economic cases (21/5/1996) 13 Ordinance on procedure of solving administrative cases (21/5/1996) and Ordinance on amendm ent of and adi istment to some article of Ordinance on procedure of solving administrative cases (28/12/1998) 14 Circular No 3055/TT-SHCN 15 Paris Convention (1283) on protection of industrial property 16 Agreement between the United States of America and the Socialist Republic of Vietnam on trade relations (13/7/2000) 17 Trade- related aspects of intellectual property rights (TRIPs) II/ Vietnamese Articles and Books 18 Bach Quoc An (2003), "Enforcement measures of intellectual property right under agreem ent between the United States of America and the Socialist Republic of Vietnam on trade relations - situation of Vietnamese Law and some possible solutions", Democratic and Law Magazine, (num ber specializing on agreement between the United States of America and the Socialist Republic of Vietnam on trade relations), p 1 -7 22 Dang Xuan Dao (2003), "Regulations of agreement between the United States of America and the Socialist Republic of Vietnam on trade relations as regard to solving the administrative complaints on intellectual property rights"- D emocratic and Law Magazine, (number specializing on agreement between the United States of America and the Socialist Republic of Vietnam on trade relations), p 121 - 130 19 G hank w baker (2003), "Regulations on intellectual property right under agreement between the United States of America and the Socialist 50 20 21 23 24 25 26 27 28 29 30 Republic of Vietnam on trade relations" - D emocratic and Law Magazine, (num ber specializing on agreement between the United States of America and the Socialist Republic of Vietnam on trade relations), p.99 - 112 Ministry of Science and Technology - M inistry of Culture Information, key reports and speeches in National conference on enforcement of intellectual property right Ministry of Justice - General report of conference on methodology to amend Civil Code Tran Vu Hai (2003), "Mutual effects between agreem ent between the United States of America and the Socialist Republic of Vietnam on trade relations and Vietnam ese Civil Procedure Law", Democratic and Law Magazine, (num ber specializing on agreement between the United States of America and the Socialist Republic of Vietnam on trade relations), p 148 - 152 Le Hong Hanh (2003), “Trade mark or trade nam e”, Law Magazine (number 6, p 19-25 Vietnamese Industrial Property Association (2002), "solving violation of industrial property right on Chanel trade mark in Vietnam ", News o f industrial property actions (number 15) p - Nguyen Thi Khe (2003), “Trade mark and trade nam e” Law m agazine, (number 5), p.36 - 39 Vu Thi Phuong Lan (2002), Comparison of Law on trade mark protection of Vietnam and some international conventions and law of some developed Industrial countries, M aster thesis, Hanoi Customs D epartm ent-Custom Research Institute (2003), “Protection of intellectual property right in the border- Need to im prove law as well as implementation mechanism in the fact”, Customs research N ew , (Number 11-12/2003), p 10-18 Vietnamese D ictionary (1994), Social Science Publishing House Vu Thi Hai Yen (2001), “Some matters on protection of industrial property right of trade mark in Vietnam under Vietnam ese civil law”, M aster thesis, Hanoi IIƯEnglish articles and books 32 Lanham Act 1946 33 Linda Annika Erlandsson (2004), The future o f scents as trademarks in the European Community based on a comparison to the American experience, Faculty of Law- University of Lund 34 Kamil Idris (2003), A pow er tool fo r economic grow th, W IPO No 888.1 35 Charles M artin, “The meaning of distinctiveness in the trade mark Law”, Illinois Law Review , Northwestern U niversity, Volume 45 NovDee (Number 5), p 535-581 36 Peter M einhardt and Keith R Havelock (1989), Concise trademark law and practice, Gower 37 Robert p Merges, Peter s Menell and Mark A, Lembley, Intellectual property in a new technology era, Gaithersburg, MD: A spen’s publication 51 IV /W ebsites 38 http://www.vnn.vn/khoahoc/hoso/2004/04159230/ 39 http://www.vietnamembassy-usa.org/tintuc/newsitem -v.php3datesamp 40 http://heinonline.org 52 ... 3.3.3 Protection 31 3.3.4 Protection of trademark right by criminal measures 36 3.3.5 Protection 37 of trademark right by civil measures of trademark right on boundary SITUATION OF TRADEMARK PROTECTION. .. Role and function of a trademark 2.2 Definition of trademark protection 10 2.3 Objects of trademark protection 11 2.4 Requirement for trademark protection 14 2.4.1 Requirement of distinctiveness... PROTECTION IN VIETNAM AND SOME POSSIBLE SOLUTIONS TO IMPROVE VIETNAMESE LAW ON PROTECTION OF TRADEMARK 40 4.1 Situation of trademark protection in Vietnam 4.2 Some possible solutions to improve Vietnamese