What is the Trademark Disclaimer?
“The registered trademark is wholly protected. The verbal element of […] and/or the figurative element of […] are not separately protected” is the phrase commonly appeared in certificates of trademark registration issued by the Vietnam Intellectual Property Office (VNIPO).
The above phrase originates from the term “trademark disclaimer statement” or shortly called as “disclaimer” regularly seen in trademark registrations in many countries. According to the world practice, “disclaimer” that is often understood that an element or a portion constituting an applied-for mark that is devoid of distinctive characters is not required to remove from the applied-for mark because in view of the whole, such applied-for mark is still deemed as badge of origin (trademark function). In addition, “disclaimer” is also understood as a legal limitation to the scope of protection of a registered trademark.
To understand the trademark disclaimers in practice, you are invited to read our earlier article “Practices of Inclusion of Trademark Disclaimer from 1980s and 2019 and our Comments” viewable at the link: http://bross.vn/newsletter/ip-news-update/Practices-of-Trademark-Disclaimer-in-Vietnam
Controversial Determination of Likelihood of Confusion between the Junior Mark Containing Disclaimed Portion of the Senior Mark in a Practical Case
In the below table, the VNIPO still takes the view that the element "VietCashew" under the junior mark (left column) is confusingly similar to the senior mark (right column) containing the disclaimed component “Điều Việt” (English translation as VietCashew):
Earlier Registered Trademark
App. No. 4-2014-22436
Class 29, 35 (Cashew nuts and services regarding trading in cashew nuts, etc.)
Review in progress
National Reg 262371
Class 29 (Cashew and other products)
Disclaimer recorded: Trademark is protected entirely. The element “ĐIỀU VIỆT” (English translation as VietCashew), design of cashew nuts (for cashew nuts-related goods/services) are not exclusively protected.
In disagreement with the VNIPO’s refusal, the applicant in its appeal argued that:
(1) The scope of protection of a previously registered trademark is effortlessly extended beyond its original scope already decided by the VNIPO, ie. its original scope was concluded as “the trademark is protected entirely. The element “ĐIỀU VIỆT” (English translation as VietCashew), design of cashew nuts (for cashew nuts-related goods/services) are not exclusively protected”.
(2) The fact that the VNIPO contends that the word "VietCashew" can be understood in Vietnamese as "Điều Việt” [VietCashew], “Hạt Điều Việt” [Vietnamese cashew nuts] to conclude that there would be a potential likelihood of confusion between the senior mark and junior mark would be obviously problematic and illogical because the legally decided limitation “the element “ĐIỀU VIỆT” is not protected separately” becomes meaningless. In other words, such an argument would be contradictory in that if a sign per se has been concluded that it is not protected, it cannot be automatically protected separately, a sign concluded that lack of function of trademark then it cannot be suddenly transformed into the state of availability of trademark function when compared it and the applied-for mark.
Inadequacies of Practice of Trademark Disclaimer in Vietnam
No “disclaimer” related-provisions are available in the IP Law as well as Decrees guiding the implementation of the IP Law. Disclaimer issue was not mentioned until the 4th revision of Circular 01/2007/TT-BKHCN according to Circular 16/2016 which came into effort from 15/01/2018 (“Circular 01/2007 as revised”), wherein Item 15.7(a)(iii) provides for: “where the trademark has element that must be excluded from protection, no separate protection of such element is accepted: notice of grant of protection shall identify clearly the intention and reason for not granting exclusive protection of such element and the applicant has 3 months from the notice to submit opinion”.
However, a lot of troubles and controvercies took place due to the absence of detailed provisions and practical guides for “disclaimer” determination. These have also infavourably affected to trademark examiners, applicants, right holders, competititors, IP right enforcement agencies, etc., Below are some most noteworthy significant inadequacies:
- Before the availability of Circular 01/2007 as revised, there is no mechanism for the applicant to have the opportunity to oppose the portion (component) subject to potential disclaimer under the applied-for mark as shown in the notice of grant of protection (notice of allowance) issued by the VNIPO. The additional provision newly added in Circular 01/2007 as revised is a good one because it allows applicant to object the notice wherein has concluded that one or more elements of the applied-for mark must be disclaimed, thereby applicant may file a supplemental explanation or response along with substantiated proofs claiming that the potentially disclaimed element(s) cannot be disclaimed, for the purpose of enabling applicant to save his right and legal interest timely and accurately. Nevertheless, this new provision is still considered inadequate since any third party does not have chance to oppose the VNIPO’s notice of allowance in which one or several potentially non-disclaimed elements may affect detrimentally to other businesses in the same industry as the notice of allowance is not published in the Official Gazette.
- The finding of which element (component) of the applied-for mark must be excluded from protection (ie. merely descriptive, or devoid of distinctive characters, or lack of function of trademark) are fundamentally dependent almost totally on the experience, personal knowledge and discretion of trademark examiners, thus, there would easily lead to mistakes as the result of their own subjective and emotional determination.
- It is clear that the unequality still exists between international registration and national registration related to the issue of disclaimer in Vietnam, for instance, only national registered trademark records disclaimer statement while international one does not. This inadequation also cause struggle for the enforcement process, for determining the protection limitation of internationally registered trademark, and for projecting risk of trademark infringement in business activities.
- There is no unitary principle related to dertermining which case needs to be disclaimed, which case does not, leading to the current inconsistency in the VNIPO’s decisions and as the result, the law and its philosophy have been not yet applied consistently, meaning that many cases that have the same features but their disclaimers were decided differently. For example, different trademarks including the verbal elements “Gold” or “Plus” used for milk products, or “Bio” used for medicine, supplement, were disclaimed in this circumstance but in another case were not disclaimed.
- Currently, Vietnam does not have a uniform rule on how to determine the scope of protection of the previous trademark containing disclaimed portion when compared it with the later filed trademark containing such disclaimed element. (In essence, this rule is to assess likelihood of confusion between the applied-for mark and earlier registered trademark). The absence of uniform rule leads to the occurrence of many unnecessarily complicated, lengthy disputes or complaints between applicants, earlier right holders and the VNIPO.
Bross & Partners has experience in supporting and representing clients to protect trademark (brand name). Should you have needs, please contact us at Email: firstname.lastname@example.org; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.
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