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

About the research Objective: To evaluate if it is possible to adopt some of the differences of Japanese law and/or practice to Vietnam law and/or practice with benefit to the trademark examiners, other competent authorities staffs, applicants and consumers. Steps: To study international framework of well-known trademark protection; To study the situation of well-known trade protection in both countries; To compare the trademarks laws and practices of both countries;

INTERNATIONAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION - Paris Convention - TRIPs Agreement - WIPO Joint Recommendations concerning provisions on Protection of Well-known Marks

INTERNATIONAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION Art. 6bis of Paris Convention: Well-known trademark (including unregistered TM) may: -Object to the registration -Claim cancellation, or -Prohibit the use of a trademark that constitutes: -a reproduction -an imitation, or -a translation, liable to create confusion Limitation of Art. 6bis of Paris Convention: -The objectionable trademark must be use “for identical or similar goods” - This provision is only available in respect of goods marks

INTERNATIONAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION -TRIPs Agreement is characterized by its supplementary role to Art. 6bis of Paris Convention in three ways: -Extending the scope of well-known TM protection to services; -Making more flexible in determining a well-known TM: well- known in relevant sectors of public is sufficient; -Expanding the scope of well-known TM protection to dissimilar goods or services

INTERNATIONAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION WIPO Joint Recommendations Provides list of factors for determining a well-known TM -the degree of knowledge or recognition of the mark in the relevant sector of the public -the duration, extend and geographical area of any use of the mark -the duration, extent and geographical area any promotion of mark -the duration and geographical area of any registrations, applications of the marks -the record of successful enforcement of rights in the mark The above factors are optional and the competence authorities are available to use any other additional factors.

WELL-KNOWN TRADEMARK PROTECTION UNDER JAPANESE LAW -Trademark Law - Law for the Repression of Unfair Competition

WELL-KNOWN TRADEMARK PROTECTION UNDER JAPANESE LAW Trademark Law Prohibition of Registration of mark identical or similar to W- K trademark of others -Article 4(1)(x): protects well-known unregistered trademarks -Article 4(1)(xv): protects well-known trademark over a broader scope of goods and services (to include dissimilar goods and services) -Article 4(1)(xix): protects trademarks well-known among consumers in Japan or aboard against wrongful purposes -Article 4(1) (xi): protects well-known registered trademark (similar to those applies for ordinary trademark)

WELL-KNOWN TRADEMARK PROTECTION UNDER JAPANESE LAW Trademark Law Expansion of protection of well-known trademarks - Article 64: defensive mark registration Once a trademark become well-known among consumers, the right owners may obtain the defensive mark for goods or services other than the designated goods or services covered by registered trademark Defensive mark is not the subject of cancellation for non-use - Article 32: prior use Un registered mark used prior to the application of other person’s mark become well-known is entitled to continuously use. Requirement: no intention of unfair competition

WELL-KNOWN TRADEMARK PROTECTION UNDER JAPANESE LAW Law for the Repression of Unfair Competition Art.2(1)(i): - This item is intended to restrict acts causing confusion between one’s own goods or business with another person’s goods or business. - Mark must be well-known - Confusion is required. Art.2(1)(ii) - This item is intended to restrict acts causing confusion between one’s own goods or business with another person’s goods or business. - Mark must be famous. - Confusion is not required

WELL-KNOWN TRADEMARK PROTECTION IN JAPANESE Well-known trademark can be searched in IPDL -Registered defensive marks -Marks determined as being well-known in trial decisions or judgments

WELL-KNOWN TRADEMARK PROTECTION UNDER VIETNAMESE LAW Intellectual Property Law of Vietnam Art. 4(20): “Well known mark means a mark widely known by consumers throughout the territory of Vietnam”. Art. 74(2)(i): protection well-known trademark against other parties' registration for - identical or similar trademark used for identical or similar goods or services - identical or similar trademark used for dissimilar goods or services if the distinctiveness of well-known trademark may be lessened or the registration is aimed at taking advantage of well-known trademark

WELL-KNOWN TRADEMARK PROTECTION UNDER VIETNAMESE LAW Intellectual Property Law of Vietnam Art. 130: protection of well-known trademark against unfair competition All most of acts which are cause confusion as to business entities, business activities, commercial origin of goods or services… shall be deemed as acts of unfair competition. Requirements: Acts of unfair competition are aimed to take unfair advantage or reputation and popularity of the respective trademark (including well-known trademark)

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.4(20) of IP Law “well known mark means a mark widely known by consumers throughout the territory of Vietnam” JAPAN No provision in the law. COMPARISION BETWEEN VIETNAM & JAPAN DEFINITION

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.6 of IP Law Industrial property right with respect of well-known trademark shall be established on the basis of use and shall not be dependent on registration procedures. JAPAN Art. 18 of JTL: A trademark right shall arise upon registration of establishment of such right. COMPARISION BETWEEN VIETNAM & JAPAN ESTABLISHMENT OF W-K TM RIGHTS

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.74(2)(i) of IP Law Scope of protection of W-K TM is extended to the dissimilar goods or services if the other parties’ trademark registration may affect the distinctiveness of W-K TM or is intended to misappropriate the celebrity of W-K TM In practice: -Well-known in relevant sector of public is sufficient -Unregistered foreign W-K TM which has not been used in Vietnam may be protected under the IP Law JAPAN -Art.4(1)(x): unregistered W-K TM -Art.4(1)(xv): W-K TM cause confusion -Art.4(1)(xix): W-K TM in Japan or abroad for unfair purposes -Art.4(1)(xi): registered W-K TM COMPARISION BETWEEN VIETNAM & JAPAN PROTECTION OF W-K TM FROM OTHER PARTIES’ REGISTRATION

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.130 of IP Law In IP Law, all kinds of trademark including well-known trademark are protected from acts of unfair competition under this article. Most of the cases listed in this article required confusion. This means it is impossible to rely on this article in case of dilution in which the confusion is not required but the distinctiveness of well- known trademark may be lessened or the connection between two trademarks may be associated due to the use of similar or identical sign. JAPAN Art.2(1)(i) & 2(1)(ii) of Unfair Competition Law The alleged act of unfair competition falls under the Article 2(1)(i) if this act cause confusion over the source of goods or services. The Article 2(1)(ii) does not require confusion but the well-known trademark must be famous. That means the requirement of reputation is higher than those are applied under Article 2(1)(i). The Article 2(1)(ii) is aimed to protect famous trademark from dilution caused by a free-ride on the goodwill. COMPARISION BETWEEN VIETNAM & JAPAN PROTECTION OF W-K TM AGAINST UNFAIR COMPETITION

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.75 of IP Law 1. The number of involved consumers who have been aware of the mark through purchase or use of goods or services bearing the mark or through advertising; 2. Territorial area in which goods or services bearing the mark are circulated; 3. Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided; 4. Duration of continuous use of the mark; 5. Wide reputation of goods or services bearing the mark; 6. Number of countries protecting the mark; 7. Number of countries recognizing the mark as a well-known mark; 8. Assignment price, licensing price, or investment capital contribution value of the mark. JAPAN No provision in JTL In practice, the content of criteria stated in some related parts of the Guidelines are almost the same as those stated in WIPO Joint Recommendation. COMPARISION BETWEEN VIETNAM & JAPAN CRITERIA

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM No provision JAPAN Art.64 of IP Law Requirement: - a registered trademark already exists - a registered trademark has become well known among consumers as indicating the designated goods or services connected with his business - the two trademark are identical - there’s existence of likelihood of confusion - the applicant is the current trademark owner Advantage: - Means of legally asserting the famousness of trademark - No obligation to use registered mark Disadvantage: - scope of effects of a defensive mark is limited to identical mark - cost for registration - acts of infringement is limited to identical mark COMPARISION BETWEEN VIETNAM & JAPAN DEFENSIVE MARK SYSTEM

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.99, 110 of IP Law - Application and registration are both published in The Official Gazette - Purpose of publication of application is used as informative reference channel about whether or not grants the trademark titles. - Petition for opposition to registration is not published JAPAN Art.12bis (12-2), 75(1) of JTL - Application and registration are both published in The Official Gazette - Petition for opposition to registration published. COMPARISION BETWEEN VIETNAM & JAPAN PUBLICATION ON THE OFFICIAL GAZETTE

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.112 of IP Law - As from the date an Industrial property registration application is published in the Official Gazette of Industrial Property till prior to the date of issuance of a decision on grant of a protection titles, any third party shall have the right to express opinions to the concerned state management agency in charge of industrial property rights on the grant or refusal to grant a protection title in respect of such application. JAPAN Chapter IV bis of JTL - Any person may file with the Commissioner of the Patent Office an opposition to a registration within two months from the date of publication of the Gazette containing the trademark. COMPARISION BETWEEN VIETNAM & JAPAN OPPOSITION

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM - adopts the pre-grant opposition system - decision on the opposition is made by examiner of application - decision on the opposition is not subject of appeal procedure - opposition is only used as information source for examination - opposition with respect of registration right may be handle by the court if the NOIP is impossible to determine JAPAN - adopts the post-grant opposition system - decision on the opposition is handled by collegial body of three or five appeal examiners - decision on the opposition is not subject of appeal procedure - decision on the opposition can be brought to the court. COMPARISION BETWEEN VIETNAM & JAPAN OPPOSITION (CONTINUED)

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art. 6 of IP Law -Trademark right shall be automatically established on the basic of use process - Registration is not required - No time limit JAPAN Chapter IV of JTL -A trademark right shall come into force upon registration -Time limit: 10 years COMPARISION BETWEEN VIETNAM & JAPAN TRADEMARK RIGHTS

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM - Follow the first-to-file system - Two or more applications, same filling date or priority date – only one application shall continue to registration. - Choice made by agreement - No agreement – all will be refused for registration - Well-known trademark – EXEPTIONAL of “first-to-file” system JAPAN - Follow the first-to-file system - Two or more applications, same filling date – only one application shall continue to registration. - Choice made by agreement - No agreement – lottery COMPARISION BETWEEN VIETNAM & JAPAN FIRST-TO-FILE SYSTEM

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM - No provision - In the past: existence - Present: abolishment Art. 74(2)(g) of IP Law – TM similar to or identical with unregistered TM which is widely used and recognized for identical goods or services shall be precluded from registration - No trademark right - In practice: can be registered after filing application JAPAN Art.32 of JTL Conditions: - TM which has been used in JP identical with or similar to TM in application filed by another person - no intention of engaging in unfair competition - TM become well-known among consumers The prior use person shall have the right to continuously use COMPARISION BETWEEN VIETNAM & JAPAN PRIOR USE

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.42(4) of Circular No.1/2007/TT-BKHCN: - well-known mark is recognized according to civil procedures or recognition decision of NOIP shall be recorded in the list - until now NO LIST has been compiled JAPAN No specific provision In practice: -Well-known trademarks have been listed in IPDL and can be searched through Internet - W-K TMs accumulated in IPDL includes 1.Defensive marks 2.TM recognized as W-K in decisions on opposition, appeal/trial decisions 3.TM recognized as W-K in court decisions COMPARISION BETWEEN VIETNAM & JAPAN WELL-KNOWN TRADEMARK LIST

BRAZIL No provision in the law. Brazilian guidelines give examples of what is considered to be use of a trademark in order to prove it in case of a request for cancellation for non use. Any means are considered. JAPAN Art. 2(3): “Use” with respect to a mark as used in this Act shall mean any of the following acts: (…) VIETNAM Art.42(4) of Circular No.1/2007/TT-BKHCN: - civil procedures - NOIP recognition - until now either court’s ruling nor NOIP decision with regard of well-known TM recognition had been issued JAPAN Art.64 – defensive mark In practice: - Defensive mark - Opposition and appeal/trial procedures - Judicial procedure COMPARISION BETWEEN VIETNAM & JAPAN WAYS TO BE RECOGNIZED AS WELL-KNOWN

CONCLUTION AND RECOMMENDATION Amend Art.4(20) of IP Law with respect of well-known TM Reasons: - Compliance with Article 16(3) of TRIPs Agreement: awareness of relevant sector of the public is sufficient to be recognized as well-known - Compliance with the practices.

CONCLUTION AND RECOMMENDATION Upgrade Examination Guidelines To attain the goals of uniformity, consistency and certainty, it is essential for the NOIP to include in TM Examination Guidelines the following contents: - Illustrative cases to explain which case falls under the Article 74(2)(i) of IP Law - Illustrative case to distinguish the difference between the Article 74(2)(i) and 74(2)(g) of IP Law - Trademarks well-known among consumers include not only marks well-known among end consumers but also marks well- known within a certain specific areas and in the relevant sector of the public. - Which situation unregistered well-known trademark can be recognized as well-known trademark in Vietnam

CONCLUTION AND RECOMMENDATION Compile well-known trademark List The list of compilation of well-known trademark list is vital in implementing IP Law. Benefits: - Single, uniform well-known trademark database - Evidence of reputation in litigation

CONCLUTION AND RECOMMENDATION Publish a summary of appeal/trial decisions In Japan, summary of appeal/trial decisions has been published by the JPO on a monthly basis to keep examiners well-informed of the latest trend of their professional fields. This type of material is very useful for examiners and especially important for new comers to improve their experiences in daily work. Besides, there would be preferred that the typical cases collected in this material can be used as reference for other related competences authorities in dealing with intellectual property enforcements and also the trademark owners in protect their legitimate right effectively. With so many advantages of the above-mentioned material, it is a time for the NOIP to publish the same document.

CONCLUTION AND RECOMMENDATION Adjust the opposition procedure with respect of W-K TM In Japan, with the goal of making the granting of the registrations faster, the opposition proceedings which in the past occurred before registration are now made after it. An examination concerning an opposition and the ruling thereon shall be conducted by a collegial body of three or five trial examiners. The procedure is similar to that of an administrative trial. Review of the application by a three or five-judge panel is important to ensure that the examiner’s decision is correct.

CONCLUTION AND RECOMMENDATION Adjust the opposition procedure with respect of W-K TM In Vietnam, the opposition can be filed any time from the date of application publication to the date prior to the decision of provisional refusal or registration shall be issued. The opposition including the case with respect of well-known trademark recognition shall be conducted by examiner who is responsible for the related application. Well-known trademark right is automatically established without registration. Once a trademark has been recognized as well-known, it will have full rights as ordinary registered trademark. Therefore, conducting a well-known trademark related case is always very important. In author’s point of view, regarding to well-known trademark related case opposition, it should be handled separately from the substantive examination process. The opposition should be conducted by collegial body to ensure the objectiveness and accuracy of the decision.

CONCLUTION AND RECOMMENDATION Improve the public awareness regarding W-K TM In order to improve the protection of Well-known Trademarks activity in Vietnam, there is an urgent need to device and implement an action plan to sensitize academia, enterprises and general public about the importance of this kind of IP creation. - Early-stage awareness: introduce the topics related to W-K TM by demonstrating the delight of creativity at schools - There should be more awareness of the economics of IP, appreciating the economics of intellectual property is critical for the success of businesses. - Universities, research centers and academia in general should popularize a practical approach to create culture for IP protection in all fields including “Well-known Trademarks”.

THANK YOU! CẢM ƠN ARIGATO GOZAIMASU