Use a useful concept in trade mark law comparing vietnamese, EU and US law

S t r e n g t h e n in g L e g a l E d u c a t io n in V ie t n a m A S lD A S U P P O R T E D P R O JE C T Joint Swedish-Vietnamese Master’s Programme MASTER’S THESIS D a m T h i D ie m H a n h “Use”- A Useful Concept in Trade Mark Law Comparing Vietnamese, EU and US law S u p e r v is o r s : Hans Henrik Lidgard Pham Van Tuyet IRUP N G D A I H O C I U A T H A N O l jH O N G D p c^ Jgx j Preface and Acknowledgements A trade mark is not a concrete product as such but it is important to an undertaking wishing to enter the market and improve his reputation there In fact, a trade mark is a type o f intellectual property right and one which is infringed more easily than others; the protection of trade marks has both a national and global scope In order to be protected, trade marks must satisfy certain requirements In general, distinctiveness is the most essential o f these requirements and is normally inherent in a good trademark, but distinctiveness can also be acquired through use Use is a complicated but very useful concept in trade mark law This issue is treated in many countries but remains vague in Vietnamese legislation I think the topic is very interesting and I decided to choose it for my master thesis I would like to express my heartfelt gratitude to my supervisors, Pro Hans Henrik Lidgard and Dr Pham Van Tuyet who supported me, made valuable comments and gave me precious advices to improve my paper I am grateful to Dr Christoffer Wong for his guidance and help during my course I would also express my special thanks to the professors in the Law faculty o f Lund University and the professors o f Ha Noi Law University for sharing their knowledge with me I would like to express my sincere thankfulness to my friends and my colleagues for their warm support, help and love Finally, I am grateful to my parents, husband and children who encouraged me throughout my studies and my work on this paper Even if I tried my best, my thesis contains many shortcomings I would be grateful for any further comments and suggestions regarding my thesis Ha Noi 2009 Dam Thi Diem Hanh Table of Contents Preface and Acknowledgements Table o f Contents Abbreviations Executive Summary Introduction • 1.1 Rationale 1.2 Purpose and Research Questions 1.3 M ethod 1.4 Delimitation 1.5 Research Sources 1.6 Main Content Some Issues Relating to Trade Marks and Distinctiveness 2.1 Definition of Trade Mark under International and National Law 2.1.1 2.1.2 2.1.3 2.1.4 International L aw Vietnamese Law 10 E U L a w 10 US Trademarks Law 13 2.2 International Agreements Regulating Trade Marks 15 2.2.1 2.2.2 2.2.3 The Paris Convention 15 The Madrid System 16 T R IP s .17 2.3 2.3.1 Distinctiveness as a Requirement for Registration 19 The Notion of Distinctiveness in Trade Mark Law .19 2.3.2 2.3.3 Determining Distinctiveness 19 Distinctiveness under National Trade Mark L a w 20 Acquiring Distinctiveness through U se 29 3.1 The Notion of Use in Trade Mark Law and the Importance of Use 29 3.1.1 3.1.2 ' The Notion of Use in Trade Mark Law .29 The Importance of Trade Mark U se 30 3.2 3.2.1 3.2.2 Acquiring Distinctiveness Through Use in Vietnam .31 Elements Making a Trade Mark Distinctive Through U se 31 Certain Trade Marks can Never Acquire Distinctiveness through U se 33 3.3 Acquiring Distinctiveness in the EU 34 3.3.1 3.3.2 3.4 Elements Making a Trade Mark Distinctive Through U se 34 Certain Trade Marks Can Never Acquire Distinctiveness through Use 39 Acquiring Distinctiveness in U S 42 3.4.1 3.4.2 Secondary Meaning and Descriptiveness 42 Elements Making a Trade Mark Distinctive Through U se 44 3.4.3 Certain Trade Marks can Never Acquire Distinctiveness Through U se 46 Comparative Analysis and some Guidance for Vietnamese IP L aw 47 4.1 The Definition of Trade M ark 4.2 Signs can Acquired Distinctiveness Through Use 47 4.3 Elements Making Trade Mark Distinctive Through Use and Examining Distinctiveness 49 4.4 Certain Trade Mark Can Never Acquired Distinctiveness Through U se 50 Conclusion 51 Table o f Statutes and other Legal Instruments .52 International Treaties and Conventions 52 National Legislations 52 Vietnam 52 European U nion 52 United State of America 53 Table o f Cases 53 Bibliography .55 M onographs .55 Articles in Journals, Anthologies etc 55 Internet Resources 55 Official Reports and other Documents 56 Abbreviations Art Article BoA Boad o f Apeal CFI The Court of First Instance ECJ The European Court of Justice EU European Union Ibid Ibiden IP Intellectual property IR Commission Regulation (EC)No.40/94 No 2868/95 No Number NOIP Nation Office of Intellectual Property o f Vietnam OHIM The Office for Harmonisation in the Internal Market TMEP Trademark Manual o f Examining Procedure US United States of America Executive Summary The essential function of a trade mark is to distinguish one undertaking and/or its products from the products o f another Distinctiveness is a central criterion during the registration process Distinctiveness may arise in two ways: inherent distinctiveness or distinctiveness through use The thesis investigates how trademarks acquire distinctiveness through use The concept o f “use” is fundamental to trade mark law in many countries Is the concept always understood in the same way? In m y country, Vietnam, this issue is regulated by Intellectual property law but the notion o f “use” remains vague and unexplained Therefore, I want to compare Vietnamese, EU and US law on how trade marks may become distinctive through use and draw conclusions as to how Vietnam can improve its legislation I chose EU and US law because they are developed regions with a long tradition of trade mark law and development In this thesis, I use various methods to deal with my subject A descriptive, traditional legal method will be used to analyse regulations, doctrines and cases in Vietnamese, EU and US trade mark law with the focus always on how trademarks may become distinctive through use An analytical and comparative method is used to compare Vietnamese law, EU law and US law I also use the synthetic method to give opinions and brief conclusions on each issue The thesis will only investigate how trade marks may become distinctive through use and what elements make trade marks without any inherent distinctive character gain such distinctiveness In addition, the thesis only deals with Vietnamese, European Community and US trade mark legislation The thesis is divided into parts: In the first part, there are some general remarks concerning the rationale for the choice o f topic and the methods used for researching and delimiting it In the second part, certain general trade mark issues are-reviewed I refer to international agreements in order to underline that trade marks are important not only in each nation but also throughout the world In this part, a definition of trade mark is given and distinctive character is emphasized as a requirement for registration In part 3, the thesis will investigate how trade marks acquire distinctiveness through use in Vietnam, the EU and the US Based on statutes, doctrine and cases, I will focus on how signs can acquire distinctiveness through use and while certain trade marks can never acquire distinctiveness in this way Part is a comparative analysis of the issues mentioned in chapter 2, contrasting separately Vietnam - EU, Vietnam - US and EU - US I will investigate similarities and differences between each of these pairs and give some suggestions for improving Vietnamese legislation In part , will draw some brief general conclusions Introduction 1.1 Rationale Intellectual property plays an important role in the industrial development process Director General Arpad Bogsch introduced the World Intellectual Property Organization Conference at the Louvre, Paris on June 1-3, 1994* and said that: Intellectual Property’s prime aim is the recognition o f the moral and economic value of intellectual creation in the cultural, social and economic development of nations Trade mark is one o f area of intellectual property As we know, a trade mark is not a product but it has great significance in commerce The essential function o f the mark is to distinguish one undertaking and/or its products from the products o f another It can give the consumer a guarantee o f the identity and quality o f a product This distinctive function is the main condition for registration It is impossible to accept all signs that undertakings register as trademarks There are many grounds for refusal, including a lack o f distinctiveness However, a trade mark may become distinctive through use What is “use”? What elements make unregistered trade marks, which not otherwise meet distinctiveness requirements, become distinctive through use? The notion o f “use” in trade mark law is regulated in many countries but often in different ways Vietnamese law does attempt to regulate it, but the notion remains vague and unexplained Investigating Vietnamese law by comparing it to EU and US law is interesting My master thesis thus deals with “Use”- A useful concept in trade mark law - Comparing Vietnamese, EU and US law” 1.2 Purpose and Research Questions The purpose o f the thesis is to compare Vietnamese, EU and US law on how trade marks may become distinctive through use and to draw conclusions as to how Vietnam can improve its legislation The research questions are: How trade marks acquire distinctiveness through use? Which trade marks can never acquire distinctiveness through use? How to improve Vietnamese law on this issue? ! Trittion G (2002), p.3 1.3 Method A descriptive, traditional legal method will be used to analyse regulations, doctrines and cases in Vietnamese and the EU and US trade mark law with the focus always on how trademarks may become distinctive through use Source for my work will be trade mark legislation case law and legal theories, opinions and commentaries Because this is a work which refers to the relevant position in several countries, an analytical and comparative method is used to compare Vietnamese law, EU law and US law regarding how trade marks may acquire distinctiveness through use Based on the factual presentation and the analytical comparison, the author will use a synthetic method to give her opinions and brief conclusions on each issue 1.4 Delimitation Distinctiveness may arise in two ways: “inherent distinctiveness” or “acquiring distinctiveness through use” The thesis only investigates how trade marks acquire distinctiveness through use The thesis also only deals with Vietnamese, European Community and US trade mark law The reason for my selection o f the two areas o f comparison is that they are two distinct legal systems with different approaches while both o f them have a long tradition in and experience of trade mark law 1.5 Research Sources - Trade mark legislation in Viet Nam, EU, US Cases Legal theories, articles, opinions, commentaries 1.6 Main Content Part 1: Introduction Part 2: Some issues relating to trade marks and distinctiveness Part 3: Acquiring distinctiveness through use Part 4: Comparative analysis and some guidance for Vietnamese IP law Part 5: Conclusion 3.32.5 Other Marks These signs provide protected indications o f origin for wines, spirits and # agricultural products and foodstuffs OA If, for example, a trade mark is for wine or spirits and consists of or contains a geographical identification and the wines or spirits in the application could be from a different source, the application must be refused In conclusion, EU trade mark law regulates many issues relating to what sign can be a trade mark, what sign cannot be a trade mark, and what sign can become a trademark through use The elements allowing trade mark through use were discussed in detail These provide good legal grounds for both the examiners and applicants for registration o f such trade marks 3.4 Acquiring Distinctiveness in US 3.4.1 Secondary Meaning and Descriptiveness As mentioned above, trademarks are devided into four types of mark: arbitrary and fanciful, suggestive, generic and descriptive Only suggestive, arbitrary and fanciful mark marks are strongly distinctive and easy to register Generic marks are never eligible for trademark protection because a generic term can not distinguish between the goods and services of different undertakings Nobody has the exclusive right to use terms such as “computer”, “clothes”, “furniture”.,etc According to Judge Frienly, only descriptive marks can become eligible for trademark registration through the acquisition o f secondary meaning.81 This means that, descriptive marks are not inherently distinctive and the applicant has to prove the acquisition of secondary meaning Under the doctrine of "secondary meaning," a mark that was descriptive in its primary meaning can be shown to have acquired a secondary meaning as a trademark associated only with a particular product Such proof ranges from showing extensive use o f a mark over time to promulgating market surveys demonstrating that a term, product shape, or label design that has a primary, descriptive meaning has also acquired a "secondary meaning" with the public as a trademark What is a descriptive mark? The Lanham Act does not give a definition but lists 80 See Art.7(l)(j) added by Council Regulation (EC) No 3288/94 and Art.7(l)(k) added by Council Regulation (EC) No 422/2004 o See Case Abercrombie & Fitch Co.v Hunting World, Inc (1976) 82 Anne Hiaring, 22 AMJUR POF 3d §5 42 signs presumptive of descriptive marks Such signs can acquire distinctiveness through use A distinctive mark “[CJonsists o f a mark which, (1) when used on or in connection with the goods o f the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods o f the applicant is primarily geographically descriptive o f them, except as indications of regional origin may be registrable under section 1054 of this title, (3) is primarily merely a surname, 83 Descriptive trademarks are those which describe some aspect, characteristic or quality o f the products on which they are used Descriptive marks may also consist of laudatory terms, such as Best, Superior, etc In addition, translations o f a descriptive word into another language will not rescue a word from being considered descriptive in the US A descriptive mark may become entitled to trademark protection if the trademark owner is able to demonstrate that the mark has, through use in the marketplace, become recognised by consumers as indicating a single source o f the relevant goods or services and has, therefore, “acquired distinctiveness through use” or “secondary meaning” In the US, geographical location is considered to be descriptive For example, if you are selling coal from the Lackawanna Valley in Pennsylvania, you cannot use as a trademark "Lackawanna" for coal Along the same lines, a producer cannot mark its coal "Lackawanna" if that region is known for its coal and the producer's coal does not in fact come from there That would be "geographically deceptively misdescriptive".84 However, if an applicant prove that a geographical mark is not associated with or the product the mark may be registrable For example, “Rodeo Drive”, the name of a street in Los Angeles, was registered for perfume because “Rodeo Drive” was not known as a place o f perfume manufacture Surnames are also considered to be descriptive because they are the proper names o f persons who produce the goods Similar to a geographical mark, only if a surname acquired secondary meaning can it be a trademark For example, “Ford” was primarily a mere name After a time, “Ford” becomes well-known and consumers know Ford as the name of the car 83 § (15 U.S.C § 1052) (e)(l)(2)(4) Lanham Act 84 See 22 AMJUR POF 3d 691 Weslaw, § 30 °5 Id Referring to Case Jacques Bernier, Inc., 43 In short, the doctrine of secondary meaning is that the mark should not only have the second meaning but also indicate the source o f those goods To establish secondary meaning, it must be shown that the primary significance o f the term in the minds of the consuming public is not the product but the producer 3.4.2 Elements Making a Trade Mark Distinctive Through Use According to TMEP86, Trademark Rule 2.41 provides: Proof o f distinctiveness under section 2(f) (a) When registration is sought o f a mark which would be unregistrable by reason of section 2(e) o f the Act but which is said by applicant to have become distinctive in commerce o f the goods or services set forth in the application, applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, affidavits, or declarations in accordance with §_ 2 , depositions, or other appropriate evidence showing duration, extent and nature of use in commerce and advertising expenditures in connection therewith (identifying types o f media and attaching typical advertisements), and affidavits, or declarations in accordance with § 2 letters or statements from the trade or public, or both, or other appropriate evidence tending to show that the mark distinguishes such goods (b) In appropriate cases, ownership o f one or more prior registrations on the Principal Register or under the Act o f 1905 o f the same mark may be accepted as prima facie evidence o f distinctiveness Also, if the mark is said to have become distinctive o f applicant's goods by reason o f substantially exclusive and continuous use in commerce thereof by applicant for the five years before the date on which the claim o f distinctiveness is made, a showing by way of statements which are verified or which include declarations in accordance with § 2.20, in the application may, in appropriate cases, be accepted as prima facie evidence o f distinctiveness In each o f these situations, however, further evidence may be required There are three basic types o f evidence that may be used to establish acquired distinctiveness under §2(f): - Prior Registrations as P roof o f Distinctiveness Rule 2.41(b) specifically provides that in appropriate cases, prior registrations of the same mark on the Principal Register may be accepted as prima facie proof of distinctiveness 86 § 2.20 refer to “Declarations in lieu of oaths” See http://www.bitlaw.eom/source/37cfr/2 41 ,htm l#(b) 44 The rule states that ownership of existing registrations to establish acquired distinctiveness "may" be considered acceptable in "appropriate cases," and that the Office may, at its option, require additional evidence of distinctiveness - Use fo r five years in commerce Section 2(f) of the Trademark Act (15 U.S.C 1052(f), provides that "proof of substantially exclusive and continuous use" o f a designation "as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made" may be accepted as prima facie evidence that the mark has acquired distinctiveness from being used with the applicant's goods in commerce The simplest form of proof is to submit a declaration from a person employed by the applicant with personal knowledge of the facts as to use of the mark in commerce for at least five years That is, the declarant must testify that the product or products bearing the mark have been sold for at least five years prior to the date of the declaration Such a proof is not only simple to prepare, but does not involve any trade secrets o f the owner - Actual evidence o f acquired distinctiveness In considering a claim o f acquired distinctiveness, the issue is whether acquired distinctiveness o f the mark in relation to the goods or services has in fact been established in the minds o f the purchasing public, not whether the mark is capable of becoming distinctive The following are some examples of the types o f evidence that have been used, alone or in combination, to establish acquired distinctiveness: + Long use o f the mark; + Advertising expenditure; + Affidavits or declarations asserting recognition o f mark as source indicator; + Survey evidence, market research and consumer reaction studies; + Miscellaneous 87 distinctiveness considerations regarding evidence submitted to establish • No single evidentiary factor is determinative The value of a specific type of evidence and the amount necessary to establish acquired distinctiveness will vary according to the facts of the specific case « 00 _ For example, in Thompson Medical Co., Inc ,the indicia of secondary meaning 07 See detail 1212.06 at http://www.bitlaw.com/source/tmep/1212_06.html 88 Westlaw: PATLAWF § 5: 33, Pat L Fundamentals § 5:33 (2d ed.) referring to case Thompson Medical Co., Inc v Pfizer Inc., 753 F.2d 208, 217, 225 U.S.P.Q (BNA) 124, 132 (2d Cir 1985); International Star Class Yacht Racing Ass'n v Tommy Hilfiger, Inc., 33 U.S.P.Q.2d (BNA) 1610, 1614-15, 1994 WL 681720 (S.D N.Y 1994) 45 included (1) advertising expenditures; (2) consumer surveys linking the mark to a source; (3) unsolicited media coverage of the product; (4) sales success; (5) attempts to plagiarize the mark; and (6) length and exclusivity o f the mark's use In another example, the evidence relevant to the existence o f secondary meaning in the case Ford Motor Co v Summit Motor Products, Inc QQ consisted of (1) extent of sales and advertising, (2)length of use, (3) exclusivity o f use, (3)copying by another, (4)customer surveys, (5)customer testimony, (6)use in trade journals, (7)size o f the company, (8) number o f sales, (9) number o f customers,(10) and actual confusion The conclusion must be that the result will differ in each case, and likewise the evidence needed will not be the same The competent authorities will assess the evidence in deciding whether the trademark under review has acquired distinctiveness through use 3.4.3 Certain Trade Marks can Never Acquire Distinctiveness Through Use Section (15 U.S.C § 1052) Lanham Act excludes many signs from registration Except for the descriptive marks provided for in subsections (1),(2) and (4) o f this section which can acquire distintiveness through use, other marks are not capable of registration They can be listed as immoral, deceptive, or scandalous matter, the flag or coat o f arms or other insignia; a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait o f a deceased President o f the United States during the life of his widow, if any, except by the written consent o f the widow; also signs which cause confusion, or mistake, or deceive; or any matter that, as a whole, is functional These signs can never acquire distinctiveness through use 89 Westlaw: REST 3d UNCOM § 13, Restatement (Third) o f Unfair Competition § 13 (1995), reffering to case Ford Motor Co v Summit Motor Products, Inc., 930 F.2d 277 (3d Cir) Comparative Analysis and some Guidance for Vietnamese IP Law 4.1 The Definition of Trade Mark The primary function o f a trade mark is to be distinctive Vietnamese, EU and US law, in accordance with international law, each focus on the distinctive function when defining the term But, although they all focus on the distinctiveness function each area takes a different approach Under the IP law of Vietnam, there is no particular definition of the notion of trade mark but we can work it out by way o f other provisions A trade mark can be considered as a visible sign capable of distinguishing the goods or services of the mark owner from those of others EU and US provisions regarding the kinds o f sign which can be a trade mark are broader than those in Vietnamese law They allow “any signs” which can be “capable o f distinguishing” and this covers not only visible signs but also unusual signs, such as smell and sound A definition o f the term “trade mark” should be provided in order to avoid confusion Pursuant to Art 4, a sign which is distinctive can become a trade mark This is a misunderstanding because such a trade mark must be a visible sign, not any sign under Art.74 However, for the author, a trade mark need not be only a visible sign but any sign perceptible to the other senses, such as hearing, smelling Vietnam is joining the world, foreign companies invest in Vietnam more and more and it is likely that such trade marks will request protection there The definition o f trade mark which should be provided is as follows: Any signs which are capable o f distinguishing the goods or services o f different undertakings and should not be refused registration can become trade marks 4.2 Signs can Acquired Distinctiveness Through Use The IP Law o f Vietnam lists cases in which a mark can not be registered because of a lack of distinctiveness.90 on See Art.74 (2) Law on IP o f Vietnam 47 EU law separates the grounds for refusal o f registration of a mark into two types: Absolute grounds and relative grounds Absolute grounds for refusal apply when the mark, standing alone, is examined for compliance with specific provisions of the Regulation.91 Relative grounds for refusal apply when a proprietor o f an earlier mark opposes registration on the grounds that it is identical or confusingly similar with their mark O '? Unlike the EU, US trade mark law separates the Federal registration system into two parts: the Principal Register and the Supplemental Register The Supplemental Register accepts registration of signs which were initially non-distinctive, ie descriptive signs, after five years, if there is “prima facie evidence that the mark has become distinctive ” The trade mark can then move to the Principal Register There is no minimum use period needed to establish acquired distinctiveness in Vietnamese or EU law As regards signs which can acquire distinctiveness through use, there are similarities among three legal systems, although they may classify different types o f sign differently For example, Vietnamese and US law treat geographical origin marks under a particular provision while they are just considered descriptive marks in EU law There are also differences between the three areas regarding “generic terms” EU law considers that generic term can become registered through use but this is not the case in Vietnam and the US 94 Moreover, US law considers surnames as descriptive marks though they can acquire distinctiveness through use All three legal systems provide marks which acquired distinctiveness through use in provision on grounds for refusal o f registration Vietnamese IP law does not divide the grounds but lists the ground for refusal EU law divide them into two classes of grounds for refusal (absolute and relative grounds) and US law divides refused marks between two registrable systems 91 See Art 7(1) Regulation 40/94 92 See Art Regulation 40/94 93 Lanham Act, 15 U.S.C § 1052(f) 94 See A rt.7 (l)(c) Regulation 40/94 48 Each area has a different aproach based on its state of development On this aspect, Vietnamese IP law need not change However, Vietnam should have an official gazette reporting on pending trade marks acquired distinctiveness through use People have the right to oppose before a trade mark may be registered A gazette would help the competent authorities when they examined an application and would also reduce applications requesting cancellation o f a trade mark after registration Another advantage is that undertakings would be able to test their mark before regsitering it 4.3 Elements Making Trade Mark Distinctive Through Use and Examining Distinctiveness Because o f differences in their legal system, the elements for making a trade mark distinctive through use are not the same in the three areas Vietnam bases itself on statute law Case law is also important in both the EU and the US When case law is used in interpreting the law, there will be detailed review of the elements which make trade marks distinctive through use athe competent authorities in the EU and the US can then provide guidelines and rules on how to examine the elements making a trade mark distinctive through use Case law remains important in each particular case In the EU and the US, survey results tend to be the most important evidence o f usage The proprietor o f a mark has to expend much money to provide this evidence In Vietnam, the NOEP also requires evidence be provided by the applicant As mentioned above, there are no clear criteria for determining the acquisition of distinctiveness through use in Vietnam In then end, whether or not a trade mark aquired distinctiveness is based on the examiner’s opinion The procedure which examines an application for the registration of trade marks acquired through use is: The application is examined by two examiners It may happen that: There is a contrast between the opinion o f two examiners There is a contrast between an examiner and a chief of bureau ; There is a contrast between an chief of bureau and a chief of departm ent; - A third person opposes registration o f a mark In such cases, the opinion of the highest chief prevails The third person has the right to complain to the Ministry of Science and Technology or to the Court 49 In order to reduce a contrast between examiners, Circular 01/2007 should be revised guidelines on elements making trade mark acquirable through use For the author, this Circular should provide as follow: - The trade mark has been used at least five years before the date of registration The time enough to examine the use of trade marks in fact The area of use should be examined in the whole country because Vietnam is not large (only over 300 thousands km2) with 63 provinces To examine how many relevant consumers perceive the trade mark based on the product However, if the result of survey indicate at least fifty percents (50%) relevant consumers who perceive the trade mark it is enough to accept distinctive character o f such trade mark; - Level o f use is a element which is not easy to examine However, the examiner can base on factual evidence to know trade mark use strong or weak; - The factual evidence o f use should be provided in guideline such as turnover, advertising expenditure, survey evidence, market share, the size o f company These elements need not cover all cases but they will be grounds which applicants can use when providing evidence and they would also assist the competent authorities 4.4 Certain Trade Mark Can Never Acquired Distinctiveness Through Use In accordance with the Paris Convention, marks can never be protected as trade marks when they are contrary to morality or public order or deceive the public Marks such as armorial bearings, flags and other State emblems., etc also not receive protection as trade marks Notwithstanding this, there is a difference between the three areas regarding “generic term” Vietnam and US not accept generic terms or terms which become generic through use EU law still grants such marks if they acquired distinctiveness through use Both EU and US law exclude functional trade marks from registration In Vietnam, this sign is still remain different ideas Vietnamese IP law has not yet explained this and it does need to be regulated in particular provision Functional trade mark should not be protected 50 Conclusion Trade mark law is one IP area which nations pay special attention to because of the ease o f infringement The Lanham Act which was passed ini 946 and then revised sevaral times is considered a rather sound law EU trade mark law was first regulated in Directive 89/104 with the aim of providing for harmonization at the Community level After thats Regulation 40/94 was established in order to further promote harmonization by way o f the Community Mark The IP Law of Vietnam was bom later (2005 and tended to follow international law and the rules of developed systems like the EU and the US The notion o f use is a useful concept in trade mark law One o f its aspects relates to distinctiveness acquired through use - one requirement for registration trade mark The issue is regulated in all o f three areas but not in the same way This thesis dealt with some issues such as when a trade mark can acquire distinctiveness through use; how a trade mark can become distinctive through use; and which trademarks can never acquire distinctiveness through use However, because o f the different characteristics o f the three areas, these issues are understood in different ways In Vietnam, some issues remains vague and unexplained both in legislation and in practice The author tried to review the issues under EU and US trade mark law and compare them to Vietnamese IP law and then gave some proposals on Vietnamese law These proposals consisted of: revising the law on the definition of trade mark; to publishing an office gazette on pending trade marks; providing guidelines on the elements making a trade mark distinctive through use; and regulating the functionality o f trade marks It is difficult to deal with all these issue in a complete way because o f the complexity of the legislation and related factual issues Further research is still needed 51 First Council Directive 89/104/EEC in December 21st 1988 approximating the laws o f the Member States relating to trade mark OJEC No.L40/l 1.2.1999, p l-7 (Directive 89/104) United State o f America Lanham Act o f 1946 available at http://www.law.comell.edu/usc0de/15/usc sup 01 15 10 22.html (Lanham Act) Table of Cases Case C-273/00, R a lf Sieckmann v Deutsches Patent-und Markenaml, [2002] ECR 1-11737 (Cit Case C-273/00, RalfSieck) Case C-191/01, OHIM v Wm Wrigley Jr Company, [2003] ECR 1-12447 (Cit Case C-191/01 Doublemint) Joint cases 108/97 and 109/97 [1999], Windsurfing ChiemseeProduktionsund Vertriebs GmbH (WSC) v Boots- und Segelzubehor Walter Huber and Franz Attenberger, ECR 1-2779 (Cit.Joint cases 108/97 and 109/97 Windsurfing Chiemsee) Case C-383/99, Procter & Gamble Company v OHIM, [2001] ECR I6251 (Cit Case C-383/99 Baby-Dry) Case T-402/02, August Storck KG v OHIM, [2004] ECR 11-3849] (Cit Case T402/02 August KG) Case T-262/04, BIC SA v OHIM, [2005] ECR 11-5959 (Cit Case T262/04, BIC SA ) Case C-299/99, Koninklijke Philips Electronics N V v Remington Consumer Products, [2002] ECR 1-5475 (Cit.Case C-299/99 Philip Electronics NV) Case T-79/00, Rewe- Zentral v OHIM [2002] ECR 11-00705 (Cit.Case T79/00, Rewe- Zentral) Case Abercrombie & Fitch Co v Hunting World, Inc 537 F.2d 4, 189 U.S.P.Q 759 (1976) (Cit Case Abercrombie & Fitch Co v Hunting World) Case C-363/99, Koninklijke KPN Nederland N V v Benelux-Merkenbureau[2004] ECR 1-1619 (Cit C-363/99, Koninklijke KPN Nederland N V ) Joined cases C-473/01P and C-474/01P, ProcterAGamble v OHIM, [2004] ECR 1-5173.(Cit Joined cases C-473/01P and C-474/01P, Procter&Gamble ) 53 Table of Statutes and other Legal Instruments International Treaties and Conventions Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994 Paris Convention for the Protection of Industrial Property was signed on 20 March 1883, came into effect on March 1884 and has been revised at Brussels in 1900, at Washington in 1911, at the Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and it was emended in 1979 (Paris Convention) The Madrid Agreement concerning the International Registration of Marks, which was concluded in 1891, entered into force In 1892 and was last revised at Stockholm in 1967 (the Madrid Agreement) The Protocol Relating to the Madrid Agreement which was adopted in 1989, entered in force on December 1995 and came to operation on April 1996 (The Madrid Protocol) National Legislations Vietnam Circular N o.01/2007 guiding the implementation o f the government’s decree No.l03/2006.ND-CP of September 22,2006, detailing and guiding the implementation o f a number o f articles of law on IP regarding industrial property (Circular 01/2007) Intellectual property law was approved by the Vietnamese Parliament in 29 November, 2005 Law N o.50/2005/Q H ll, legislature XI, Session 8, came into force in July 2006 (Law on IP) European Union Commission Regulation (EC)No.2868/95 Council Regulation (EC) No 3288/94 available at http://oami.europa.eu/en/mark/aspects/reg/reg4094.htm Council Regulation (EC) No 422/2004 available at http://oami.europa.eu/en/mafk/aspects/reg/reg4094.htm Council Regulation (EC) No40/94 of 20 December 1993 on the Community trade mark, OJEC No.Ll 1/1,14/01/1994, pl-32 (Regulation No.40/94) 52 Case T-345/99, Harbinger v OHIM [2000] ECR II-3525(Trustedlink) (Cit.Case T-345/99, H arbinge) Case T-325/04, City Group, In v OHIM [2008] ECR Page 00000 (Worldlink).(Cit Case T-325/04, City Group) Case T-88/06, Dorel Juvenile Group, Inc v OHIM [2008] ECR Page 00000 (Cit Case T-88/06, Dorel Juvenile Group, Inc) Board of Appeal: R122/98-3, Wm Wrinley v Light Green, [1999] ETMR 214 (R 122/98-3 Wm Wrinley) 54 Bibliography Unless otherwise stated, all Internet links shown in this bibliography have been assessed on 1st December 2008 Monographs Annard, R et al (1998), Guide to the Community trade mark, Blackstone Press Limited, London Bently, L and Sherman (2004), Intellectual property Law, 2nd ed, Oxford University Press, New York Kitchin, D et al, (2005) K erly’s Law o f Trade marks and Trade names, Sweet&Maxwell, London, 14th ed Sandri, S and Rizzo, S (2003), Non-convention trade marks and Community law, Marques, London Trittion, G (2002), Intellectual property in Europe, Sweet&Maxwell, London 2nd ed, Articles in Journals, Anthologies etc Anne Hiaring, J.D (2008) “Proof of Distinctiveness and Secondary Meaning of Trademark or Service Mark”, 22 AMJUR POF 3d 691, available at http://www.westlaw.com Accessing November 29, 2008 (Cit.Anne Hiaring, 22 AMJUR POF 3d 691) Internet Resources Bitlaw legal resource http://www.bitlaw.com The Europa website http://europa.eu/index en.htm The public library o f law http://www.plol.org/case-law/537-F2d-4.aspx The UK Government IPwebsite http://www.ipo.gov.uk United States Patent and Trade mark Office http://uspto.gov The Trade marks and Designs registration Office of the European Union http://oami.europa.eu/ows/rw/pages/index.en.do 55 Official Reports and other Documents Guidelines 3.7 o f the OHIM Examination Guidelines, OHIM OJ 9/96 Available at http://oami.europa.eu/EN/mark/marque/directives/exam.htm, (Guideline 3.7) Guidelines concerning proceeding before the office for harmonization in the Internal market (trade marks and designs), part B, Examination, Final version: April 2008 available at http://oami.europa.eu/EN/mark/marque/pdf/examination- 23042008-EN.pdf (Examination Guideline) Material of Conference in the NOIP, March 2008 56 ... vague and unexplained Investigating Vietnamese law by comparing it to EU and US law is interesting My master thesis thus deals with ? ?Use? ??- A useful concept in trade mark law - Comparing Vietnamese,. .. the validity o f trade marks 3.1.2 The Importance of Trade Mark Use Trade mark use is very important in trade mark law because: Firstly, use in fact can create distinctiveness in customers’ minds... Lanham Act14 In contrast to Vietnamese and EU trade mark law, the Lanham Act lays down statutory boundaries for trademarks and service marks According to Sec 1127 Lanham Act, the term “trademark”