Last updated: May 19, 2020

The concept of a well-known mark was first provided for in Article 6bis of the Paris Convention for the Protection of Industrial Property (as revised in 1967) and more clarified and expanded in Articles 16(2) and 16(3) of the TRIPS Agreement, to both of which Vietnam is party.

The well-known provisions, though incomplete, unclear, and unreasonable in some areas, are provided for in the present industrial property legislation (national).

The above well-known mark protection provisions (both international and national) are summarized as follows:

• In Vietnam, a well-known mark enjoys protection against marks (trade marks or service marks) which are considered “a reproduction, an imitation, or a translation” of the well-known mark if such marks are likely to cause confusion in “the relevant sector of the public”.

• Well-known marks are protected in Vietnam, through “use” rather than “registration”, in respect of goods/services which are identical with, or similar to, those for which they have gained their reputation, and even dissimilar goods/services in certain circumstances.

• Vietnam does not keep a register of well-known marks. The Intellectual Property Office of Vietnam (IP  Vietnam) or civil court or administrative enforcement authorities must determine whether a mark is well-known on a case-by-case basis.
   

• When determining whether a mark is a well-known mark, the IP Vietnam/civil court/administrative enforcement authorities may consider relevant factors, as provided for in Art. 75 of the Law on Intellectual Property, including: the extent of recognition of the mark, the extent to which the mark is used, advertised, registered and the duration of the use, the amount/volume of sales of goods/services offered under the mark, commercial value attributed to the mark.

Anheuser-Busch, adidas AG,  DC COMICS, represented by LÊ & LÊ, won their disputes in Vietnam wherein, among other things, their marks BUDWEISER, adidas, three stripes, and SUPERMAN, respectively, have already been held to be well-known in Vietnam by the IP Vietnam.