In today’s competitive business environment, protecting intellectual property rights, especially trademarks, is essential to maintaining market differentiation and preventing infringement. One of the most challenging legal issues is determining whether a sign is similar enough to an existing trademark to cause confusion. Below is a detailed overview of the legal framework and practical examples of confusingly similar trademarks in Vietnam.

Introduction to Similar and Confusingly Similar Signs

A sign is considered confusingly similar to a registered trademark if its appearance, pronunciation, or meaning creates a likelihood of confusion among consumers. This confusion can mislead consumers regarding the origin, quality, or affiliation of goods and services, posing significant risks to both trademark owners and the market.

Legal Criteria for Identifying Similar or Confusingly Similar Signs

The law defines identical or confusingly similar signs based on several factors. Signs are considered identical or confusingly similar when they are used for identical or similar goods or services as a registered trademark. They may also negatively affect the distinctiveness or reputation of a famous trademark, or resemble trademarks whose protection expired within the last three years unless revoked for non-use. Such signs can confuse consumers about the origin of goods and services or geographical indications, and they may even closely resemble industrial designs or geographical indications already under protection.

As outlined in Article 74 of the Intellectual Property Law, certain signs are deemed incapable of distinguishing goods or services. These include basic geometric shapes, numbers, letters, or words in uncommon languages unless they have gained recognition as trademarks through extensive use. Conventional signs, symbols, or terms commonly used to describe goods or services also fall under this category. Similarly, descriptive signs, such as those indicating the characteristics or geographical origin of goods, are not considered distinctive unless they are widely recognized or registered as collective or certification marks.

A sign that is identical or confusingly similar to a protected or pending trademark, a famous trademark, or other intellectual property assets like industrial designs or trade names is likely to face refusal during registration.

Examples of Trademark Confusion in Vietnam

One prominent case involves the trademarks “Hao Hao” and “Hao Hang.” Both trademarks are registered for instant noodles under Class 30. The trademark “Hao Hang” shares five of the eight characters with “Hao Hao,” and their pronunciation is also similar, making them easily confused by consumers.

The visual design of “Hao Hang” also closely resembles “Hao Hao,” with red, italicized fonts and similar packaging elements, including images of noodle bowls, shrimp, lemons, and chili. This combination of similarities in both content and form causes significant confusion among consumers, who may mistakenly associate the products with the same origin or brand.

In this case, the trademark “Hao Hao” was infringed upon by the trademark “Hao Hang.” Administrative penalties were imposed, and compensation was awarded for damages caused by the infringement.

Mechanisms for Addressing Trademark Infringement

Trademark owners whose rights are infringed upon can take various measures to protect their intellectual property. They can apply technological solutions to prevent counterfeiting, demand that infringers cease their actions, issue public apologies, and compensate for damages. Administrative measures can also be pursued by reporting infringements to authorities, who will impose penalties depending on the extent of the violation.

In cases of severe infringement, trademark owners can file lawsuits in court or seek arbitration to protect their rights and interests. Criminal liability may be pursued if the infringement constitutes a crime.

If the trademark is unregistered or still awaiting a protection certificate, the current intellectual property law offers limited recourse. To safeguard such trademarks, owners must promptly file for registration and collect evidence, such as proof of creation and public recognition. After obtaining a protection certificate, owners can pursue legal action to address infringement.

It is essential to note that Vietnam adheres to the “first-to-file” principle, meaning that protection is granted to the first valid application. As a result, unregistered trademarks lack enforceable rights, even if they are infringed.

Conclusion

Trademark protection in Vietnam requires a clear understanding of intellectual property regulations, especially concerning confusingly similar signs. Proactively registering trademarks and remaining vigilant against potential infringement are critical steps for safeguarding commercial interests. Businesses navigating this complex legal landscape should ensure full compliance with the law to minimize risks and protect their rights effectively.

The above information is provided by Mys Law. For any questions regarding the content of this article, please contact 0969.361.319 or email: [email protected] for further clarification. Best regards!

Compiler: Nguyen Anh Quan