Losing Trademark Distinctiveness – New Regulations under the Draft of Revised IP Law
Tran Dieu Linh, Vision & Associates (Vietnam)
I remember when performing a quick search during my IELTS exam last year, I found an interesting trademark “” under Registration No. 353416 for services in Classes 35 & 41. The problem here is that the above-mentioned mark is protected in its entirety, while the element “IELTS” is not separately protected. This mark was filed in 2017 and passed the substantive examination (without any refusal) at the IP Office in Vietnam (“IP Vietnam”) in 2020. Meanwhile, “IELTS” (word mark) is still protected under Reg. No. 72082 in the name of The Chancellor, Masters and Scholars of the University of Cambridge (“The Chancellor”) for identical services in Class 41 (i.e. “education and training services”). I wondered if the disclaimer statement regarding the former meant that the IP Vietnam had implicitly considered “IELTS” to be a generic term, and no longer exclusively owned by the Chancellor? The “IELTS” case also raised a question as to how long a registered trademark lasts. Could it be “forever” provided that the holder duly proceeds with the renewal procedures at the IP Vietnam and keeps using the said mark properly?
Genericide – an old issue without any bonding relation to the current laws in Vietnam
Losing trademark distinctiveness (genericide of trademarks) is not an entirely new issue in Vietnam. Most Vietnamese consumers have learnt that “aspirin”, “formica”, “PowerPoint” used to be protected marks, but have become generic names of relevant products in certain countries, including in Vietnam. A notable example of trademark holders who are actively policing their IP rights, to prevent their trademark from genericide is the “Maggi – Magi” case. In these old days, “Magi” or “Maggi” were terms often used by a large number of Vietnamese people to refer to a kind of sauces. In 2010, the Vietnamese Dictionary published by the Institute of Linguistics defined the word “Magi” (pronounced as /ma-gi/) as a type of black sauce that was made from ingredients containing high protein. In 2012 and the following years, Société des Produits Nestlé S.A. (“Nestlé”) – the owner of “MAGGI” trademarks in various versions, took great effort to correct the proper definition of the word “Magi/Maggi” in Vietnamese dictionaries. Nestlé successfully cooperated with the IP Vietnam and the Vietnam Institute of Dictionaries and Encyclopedias, as well as the Institute of Linguistics, to protect their registered marks from potentially becoming a generic term.
It has been the experience in many countries, that even with ongoing efforts to enforce proper trademark use and maintain the validity of a trademark, marks can become generic as the use of the language evolves and public perception changes. That is the reason why several jurisdictions allow any third parties to cancel/revoke one’s trademark, if his/her trademark is evidently a generic term. Nevertheless, under the current IP Law, there is no regulation on the loss of trademark distinctiveness. Therefore, until now, we are not aware of any cases in Vietnam where the trademark rights have been revoked by an official decision of the IP Vietnam or other competent authorities.
A new regulation in the latest draft of the revised IP Law
Joining the EU-Vietnam Free Trade Agreement (“EVFTA”), Vietnam has been on the way to amend and supplement its IP Law in compliance with the said FTA. Accordingly, in the draft of the revised IP Law, a new legal ground for cancellation of a trademark registration if the mark becomes generic is added, signalling the commitment by Vietnam under the EVFTA . In particular, Article 95 of the revised IP Law will read as follows:
Article 95.1: A Registered Trademark can be partially or entirely cancelled in the following cases:
…(i) The Registered Trademark becomes a generic name of the goods/services applied for this Trademark;
It appears to us that this revocation ground will be applicable to any third party, those who filed the cancellation request against a registered trademark. The burden of proof will first lie with the Requester. However, what evidence is sufficient to prove that a mark has become a generic term? Will a survey on the genericide regarding this mark be conducted among all Vietnamese users or just the relevant consumers? How could the IP Vietnam’s examiners assess and make their decision on the loss of trademark distinctiveness? Until now, the draft of IP Law is still silent on such details.
Furthermore, from the “IELTS” case, I question – if the “IELTS” mark (or other similar famous mark) is not cancelled by any third party’s requests, will the IP Vietnam tacitly consider it as a generic term and not to be exclusively protected by the mark owner (as reflected in the disclaimer statements of the later trademark applications)? I believe that it will be a hot potato for trademark holders as everyone wishes that his/her marks will become famous. However, is there any consequence to being too famous? Will his/her mark fall victim to genericide?
Keynotes for trademark’s owners not to be victims of genericide
Although the draft of the revised IP Law has not been approved and passed yet, we believe that, in near future, IP laws and regulations in Vietnam shall be more concrete and stringent in providing for trademark genericide. Trademark owners should be proactive in protecting their marks from unintentionally falling victim to genericide and loss of rights. The following are recommended practices for holders who still struggle with how to do so:
– Firstly, the mark holder should issue and execute a strict protocol or guide on the correct usage of the mark, for example, a particular font, a particular colour, use the symbols “TM” or “R” when registered, usually at the upper right of the mark, always use the general name/noun of the product after the trademark, etc.;
– Secondly, sometimes clever advertising can be used to educate the public about proper usage. The mark owners also should not forget to educate individuals within their company and/or supply chain, such as distributors and dealers, of the correct use of the registered mark; and
– Most importantly, trademark owners need to be vigilant to ensure that their trademarks are not being used (-or abused) in an unauthorized manner, by third parties. The holders can hire an experienced search vendor and/or IP arttorneys to monitor print and online publications, as well as the Internet, to identify improper uses of a mark.
If trademark owners do not follow these guidelines, genericide can take place, and even a well-known trademark can lose its status and consequently cannot function as a source indicator, becoming just a common name of the products/services, and losing its ability to protect its proprietor’s rights and products.