Evaluation criteria for famous trademarks to be protected

A famous trademark is an invaluable asset of a business, helping to enhance competitiveness and build a reputation in the market. For a trademark to be considered a famous trademark, it must meet certain criteria according to regulations. The article below provides specific information about the criteria for evaluating famous brands.

What is a famous trademark?

Pursuant to Clause 20, Article 4 of the Law on Intellectual Property 2005, amended and supplemented in 2022, a famous trademark is a trademark widely known to the relevant public in the territory of Vietnam.

Criteria for evaluating famous brands

Pursuant to Article 75 of the Law on Intellectual Property 2005, amended and supplemented in 2022, criteria for evaluating famous trademarks are selected from some or all of the following criteria:

• The number of relevant consumers who know the mark through purchasing, using goods and services bearing the mark or through advertising;
• Territorial scope in which goods and services bearing the mark have been circulated;
• Revenue from the sale of goods or provision of services bearing the trademark or the quantity of goods sold, the amount of services provided;
• Time of continuous use of the brand;
• Wide reputation of goods and services bearing the mark;
• Number of countries protecting trademarks;
• The number of countries in which the trademark is recognized as famous;
• Transfer price, transfer price of use rights, investment capital contribution value of the brand.

Famous trademark protection mechanism

Famous trademark protection mechanisms are:

1. Passive protection mechanism:

Pursuant to Point a, Clause 3, Article 6 of the Law on Intellectual Property 2005, amended and supplemented in 2019), industrial property rights to famous trademarks are established on the basis of use, regardless of registration procedures. The owner of a famous trademark only needs to have documents proving ownership that meet the criteria specified in Article 75 of the Law on Intellectual Property 2005 to be considered famous.

2. Mechanism for establishing rights:

From the grounds in Article 75 of the  Law on Intellectual Property 2005, amended and supplemented in 2022, the basis for establishing rights to a famous trademark is actual use, so even though there is no need to go through registration procedures, same as regular brands. However, the owner of a famous trademark still has to prove to the competent State agency in Vietnam the continuous use or recognition of the trademark.

How to determine infringement of well-known trademark protection rights?

Pursuant to Article 77 of Decree 65/2023/ND-CP, signs to determine infringement of famous trademark protection rights are:

The sign is suspected to be identical or similar enough to cause confusion with a trademark within the scope of protection in there:

• A sign is considered identical to a trademark within the scope of protection if it has the same structure and manner of expression;
• A sign is considered confusingly similar to a protected trademark if it has a number of components that are completely identical or similar to the point of being indistinguishable from each other in terms of structure, pronunciation, transcription, meaning, presentation, color for visible signs, and rhythm and tone for audio signs, and the use of the sign is likely to confuse consumers about the goods and services bearing the trademark;

Goods and services bearing suspected signs of being identical or similar in nature or function, use and having the same consumption channels with goods and services within the scope of protection; or are related to each other in nature or function or method of implementation.

Or the goods or services are not identical, not similar, not related to goods or services bearing a famous trademark but are likely to cause confusion for consumers about the origin of goods or services or create an impression misrepresentation of the relationship between the producer or seller of that product or service and the owner of a famous trademark.

Consulting services on evaluation criteria for famous trademarks to be protected

Understanding the criteria for evaluating famous trademarks will help businesses optimize opportunities to protect legal rights and enhance brand value in the market. Consulting services on evaluation criteria for famous trademarks to be protected at Long Phan help businesses understand and effectively apply the provisions of law on famous trademark protection. We provide a range of related services to help businesses improve their ability to protect famous trademarks:

• Consulting on criteria to determine famous brands
• Consulting on mechanisms for forming famous brands
• Consulting on building documents to prove famous brands
• Evaluate the ability to protect well-known trademarks
• Consulting on grounds and signs to determine infringement of famous trademarks
• Famous trademark protection representative: representing customers in trademark disputes, and protecting legal rights against infringements from competitors.
• Consulting on strategies to enhance brand value: building a sustainable brand development strategy, enhancing recognition, and ensuring long-term brand ownership.

Long Phan is proud to be a reliable partner, helping you capture and protect the rights of famous brands in the most optimal way. Please contact us immediately via hotline 0906735386 to receive in-depth and accurate advice on the criteria for protecting famous trademarks.