Trademark is a feature of identifying the goods and services of owners as well as it plays an important role to help consumers distinguish these goods and services from those of other enterprises. Therefore, the issues related to trademarks are constantly concerned by manufacturers and enterprises. The article will provide a general view about one aspect of trademarks: the period of trademarks’ protection according to Vietnam law.
With general trademark
Term of trademark protection is the term of a trademark protection title or certificate. According to Clause 6, Article 93 of the 2005 Intellectual Property Law (amended and supplemented in 2009 and 2019), the validity of trademark protection titles or Certificates of registered marks shall have a validity starting from the grant date and expiring at the end of 10 years after the filing date and may be renewed for many consecutive terms, each of 10 years.
Thus, the term of Trademark protection is 10 years and can be renewed for many consecutive 10-year terms. It is noticeable that the trademark can be protected forever if the owner renews the mark on time. According to Vietnamese IP law, the owner has to pay validity prolongation fees 6 months before the certificate of registered mark’s expired date. Vietnam also allows late application of the renewal protection files but not later than 6 months from the expiration date of the certificate of Registered mark, however, the owner has to pay an extension fee plus 10% of the prolongation fee with each late month.
Vietnamese law is quite limited on the extension of trademark protection. Compared to Australian law, this country regulates that the owner can pay the renewal fees from 12 months before the renewal due date or up to six months after the date expires.
With well-known marks
Criteria for evaluation of well-known marks
The international legal documents such as the Paris Convention, the TRIPS Agreement only raise the issue of the protection of a well-known trademark without specifying the specific criteria for how a mark will be considered as a well-known one. Vietnam is a member of the two above documents, thus it is obliged to establish a specific legal corridor in order to put into practice the provisions of the Paris convention and the TRIPS.
According to Article 75, IP law in 2005 (amended and supplemented in 2009, 2019), The following criteria shall be taken into account when a mark is considered well-known:
- 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;
- Territorial area in which goods or services bearing the mark are circulated;
- Turnover of the sale of goods or provision of services bearing the mark or the quantity of goods sold or services provided;
- Duration of continuous use of the mark;
- Wide reputation of goods or services bearing the mark;
- Number of countries protecting the mark;
- Number of countries recognizing the mark as a well-known mark;
- Assignment price, licensing price, or investment capital contribution value of the mark.
Therefore, if a mark has all standards above, a mark will be considered as a well-known mark.
Protection well-known marks
According to Article 6bis of the Paris Convention and Article 16(2) of TRIPS, Well-known (foreign) trademarks are entitled to protection without registration. The owner only provides documents to determine the property with trademark as well as determine the mark has all standards to be considered a well-known one.
The term of well-known mark protection
Currently, the law does not have any specific provisions on the term of well-known trademark protection. However, according to the Paris Convention and TRIPS agreement when a mark is considered as a well-known mark, it will be protected automatically. If the above criteria are not met, it will no longer be considered a well-known trademark. Accordingly, it can be understood that the term of protection of a famous trademark is indefinite. Only when it is no longer considered a well-known trademark, it can no longer be protected as a well-known trademark.
In conclusion, a normal trademark is protected for 10 years and can be continuously renewed, each of 10 years. The well-known trademark’s term of protection is indefinite. This term of protection ends only when the mark is no longer considered as a well-known trademark.