September 10, 2010

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

2. 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;

3. International framework of well-known Trademark protection • Paris Convention • TRIPs Agreement • WIPO Joint Recommendations concerning provisions on Protection of Well-known Marks

4. 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

5. 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

6. 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.

7. well-known Trademark protection Under japanese law • Trademark Law • Law for the Repression of Unfair Competition

8. 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)

9. 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

10. 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

11. 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

12. 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

13. 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)

14. Comparision between Vietnam & Japan Definition

15. Comparision between Vietnam & Japan Establishment of w-k TM rights

16. Comparision between Vietnam & Japan Protection of w-k tm from other parties’ registration

17. Comparision between Vietnam & Japan Protection of w-k tm against unfair competition

18. Comparision between Vietnam & Japan Criteria

19. Comparision between Vietnam & Japan Defensive mark system

20. Comparision between Vietnam & Japan Publication on the official gazette

21. Comparision between Vietnam & Japan opposition

22. Comparision between Vietnam & Japan Opposition (continued)

23. Comparision between Vietnam & Japan Trademark rights

24. Comparision between Vietnam & Japan First-to-file system

25. Comparision between Vietnam & Japan Prior use

26. Comparision between Vietnam & Japan Well-known trademark list

27. Comparision between Vietnam & Japan Ways to be recognized as Well-known

28. 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.

29. 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

30. 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

31. 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.

32. 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.

33. 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.

34. 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”.

35. THANK YOU! CẢM ƠN ARIGATO GOZAIMASU