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Vietnam: The benefits of three-dimensional Marks

November 2005 was a significant time in Vietnam as this marked the significant step towards bringing Vietnam’s IP system in line with the WTO regulations, since this was the issuance year of Vietnam’s IP Law. This also meant that for the first time, the protection of three-dimensional trademarks was officially stipulated.

3D marks are considered and treated the same as all other types of trademarks including two-dimensional trademarks. Up to date there isn’t actually any law, guiding regulations or examination processes that provide certain criteria for 3D trademarks. Only one basic requirement was put forth and that was to ensure that all applicants submit representations and descriptions of three-dimensional signs. [Circular No. 01/2007/TT-BKHCN dated 14 February 2007 (circular 01)]

An Industrial Design is distinguished from a trademark primarily because it is constituted by the appearance of a product, which does not necessarily need to be distinctive (a prime requirement for a trademark). A trademark, in spite of the fact that it may consist of all kinds of visible signs, which may or may not be ornamental, must always be distinctive, since a trademark must always be capable of distinguishing the goods and services in commerce. Therefore the functions of, and justifications for protecting industrial designs and trademarks are quite different. In light of this, the holder of an industrial design can expand their exclusive rights from the original specific form to variants of the industrial design taken out from the different motional positions of the products. However, the owner of a trademark can only prevent the unauthorized use and imitation of the mark in a fixed form. Under Vietnamese laws, a 3D mark will not be a good option for dynamic three-dimensional shapes, including bags or transportation means. On the other hand it is suitable for static three-dimensional shapes such as perfume bottles.

Complicated or multi-part three-dimensional shapes are also ineligible for trademark registration. Article 39.4.b of circular 01 excludes intricate signs that can not be understood by the regular consumer from trademark registration. This means that it therefore is very difficult to obtain 3D mark protection for example, the external shapes of machines in Vietnam.

Like laws of other countries, 3D mark rights under Vietnamese IP laws may be unlimited so long as the marks remain distinctive and the appropriate request for the renewal of registration is made. This demonstrates the advantage of 3D marks over for example industrial design marks in relation to the 15 year maximum term of protection for an industrial design. On the contrary, manufacturers have to ensure that their 3D marks are unrevealed until the application for industrial design protection has been filed. Failure to comply will result in the industrial design application being deemed disclosed, therefore lacking novelty.

Considering the benefits, 3D marks become very good options for owners of three-dimensional goods in Vietnam. It is possible for owners of disclosed industrial design applications to seek 3D trademark registration. It is also possible for manufacturers, who foresee the three-dimensional shapes of their products lasting for a long time, to invoke the unlimited term of 3D mark protection, rather than the maximum 15-year period for industrial designs.

Taking into consideration the benefits and drawbacks, it is actually advisable to seek cumulative protection for both 3D marks and industrial designs. It is a good strategy to attempt to obtain the broadest scope of protection possible to a three-dimensional shape. However, this is not always smooth sailing, because the laws of Vietnam may sometimes put up hurdles to applicants, due to discrepancies in the interpretation of it.

Even if a three-dimensional shape has already been submitted for a 3D mark, the National Office of Intellectual Property of Vietnam may still refuse an industrial design application on the grounds that the applied industrial design has lost its novelty. Article 65.1 of the IP law states that an industrial design application will be considered as lacking novelty if the industrial design was previously disclosed in any manner in any documents. Article 65.3 gives some exceptions for some types of limited disclosure without losing novelty, but these exceptions do not seem to include previous applications for a 3D mark. It could be argued that a previous 3D mark application may not be considered a limited disclosure because the information contained therein is accessible to anyone through a trademark search request. Therefore, filing a 3D mark application prior to filing an industrial design application for the same may pose a risk for the latter. At this point, the cumulative protection for a 3D mark and an industrial design is not clear, in spite of the fact that no specific regulation totally rules out industrial design protection for a previously applied 3D mark.

Vietnamese IP Law officially recognises three dimensional trademarks, but there still is room for improvement. In addition to industrial design applications, there seems to be a new option for owners and creators of three dimensional shapes. Hopefully with the progressing laws, 3D marks will eventually allow for owners and inventors of three-dimensional shapes to be awarded a broad level of protection for their IP rights.