Joint Swedish-Vietnamese Master’s Programme MASTER’S THESIS “Use”- A Useful Concept in Trade Mark Law Comparing Vietnamese, EU and US law. SUPERVISORS: Han Henrik Lidgard Pham Van Tuyet Preface and Acknowledgements A trade mark is not a concrete product as such but it is important to an undertaking wishing to enter the market and improve his reputation there. In fact, a trade mark is a type of intellectual property right and one which is infringed more easily than others; the protection of trade marks has both a national and global scope. In order to be protected, trade marks must satisfy certain requirements. In general, distinctiveness is the most essential of these requirements and is normally inherent in a good trademark, but distinctiveness can also be acquired through use. Use is a complicated but very useful concept in trade mark law. This issue is treated in many countries but remains vague in Vietnamese legislation. I think the topic is very interesting and I decided to choose it for my master thesis. I would like to express my heartfelt gratitude to my supervisors, Pro. Han Henrik Lidgard and Dr. Pham Van Tuyet who supported me, made valuable comments and gave me precious advices to improve my paper. I am grateful to Dr. Christoffer Wong for his guidance and help during my course. I would also express my special thanks to the professors in the Law faculty of Lund University and the professors of Ha Noi Law University for sharing their knowledge with me. I would like to express my sincere thankfulness to my friends and my colleagues for their warm support, help and love. Finally, I am grateful to my parents, husband and children who encouraged me throughout my studies and my work on this paper. Even if I tried my best, my thesis contains many shortcomings. I would be grateful for any further comments and suggestions regarding my thesis. 1 Table of Contents Preface and Acknowledgements 1 Table of Contents 2 Abbreviations 4 Executive Summary 5 1. 1.1 1.2 1.3 1.4 1.5 1.6 2. 2.1 2.1.1 2.1.2 2.1.3 2.1.4 2.1.5 2.2 2.2.1 2.2.2 2.2.3 2.3 2.3.1 2.3.2 2.3.3 3. 3.1 3.1.1 3.1.2 3.2 3.2.1 3.2.2 3.3 3.3.1 3.3.2 3.4 3.4.1 3.4.2 Introduction 7 Rationale 7 Purpose and Research Questions 7 Method 8 Delimitation 8 Research Sources 8 Main Content 8 Some Issues Relating to Trade Marks and Distinctiveness 9 Definition of Trade Mark under International and National Law 9 International Law 9 Vietnamese Law 10 EU Law 10 US Trademarks Law 13 Brief Conclusion 14 International Agreements Regulating Trade Marks 15 The Paris Convention 15 The Madrid System 16 TRIPs 17 Distinctiveness as a Requirement for Registration 19 The Notion of Distinctiveness in Trade Mark Law 19 Determining Distinctiveness 19 Distinctiveness under National Trade Mark Law 20 Acquiring Distinctiveness through Use 29 The Notion of Use in Trade Mark Law and the Importance of Use. 29 The Notion of Use in Trade Mark Law 29 The Importance of Trade Mark Use 30 Acquiring Distinctiveness Through Use in Vietnam 31 Elements Making a Trade Mark Distinctive Through Use 31 Certain Trade Marks can Never Acquire Distinctiveness through Use 33 Acquiring Distinctiveness in the EU 34 Elements Making a Trade Mark Distinctive Through Use 34 Certain Trade Marks Can Never Acquire Distinctiveness through Use . 39 Acquiring Distinctiveness in US 42 Secondary Meaning and Descriptiveness 42 Elements Making a Trade Mark Distinctive Through Use 44 2 3.4.3 4. 4.1 4.2 4.3 4.4 5. Certain Trade Marks can Never Acquire Distinctiveness Through Use . 46 Comparative Analysis and some Guidance for Vietnamese IP Law 47 The Definition of Trade Mark 47 Signs can Acquired Distinctiveness Through Use 47 Elements Making Trade Mark Distinctive Through Use and Examining Distinctiveness 49 Certain Trade Mark Can Never Acquired Distinctiveness Through Use 50 Conclusion 51 Table of Statutes and other Legal Instruments 52 International Treaties and Conventions 52 National Legislations 52 Vietnam 52 European Union 52 United State of America 53 Table of Cases 53 Bibliography 55 Monographs 55 Articles in Journals, Anthologies etc. 55 Internet Resources 55 Official Reports and other Documents 56 Abbreviations Art. BoA CFI ECJ EU Ibid. IP IR No. NOIP OHIM TMEP US Article Boad of Apeal The Court of First Instance The European Court of Justice European Union Ibiden Intellectual property Commission Regulation (EC)No.40/94 No. 2868/95 Number Nation Office of Intellectual Property of Vietnam The Office for Harmonisation in the Internal Market Trademark Manual of Examining Procedure United States of America 4 Executive Summary The essential function of a trade mark is to distinguish one undertaking and/or its products from the products of another. Distinctiveness is a central criterion during the registration process. Distinctiveness may arise in two ways: inherent distinctiveness or distinctiveness through use. The thesis investigates how trademarks acquire distinctiveness through use. The concept of “use” is fundamental to trade mark law in many countries. Is the concept always understood in the same way? In my country, Vietnam, this issue is regulated by Intellectual property law but the notion of “use” remains vague and unexplained. Therefore, I want to compare Vietnamese, EU and US law on how trade marks may become distinctive through use and draw conclusions as to how Vietnam can improve its legislation. I chose EU and US law because they are developed regions with a long tradition of trade mark law and development. In this thesis, I use various methods to deal with my subject. A descriptive, traditional legal method will be used to analyse regulations, doctrines and cases in Vietnamese, EU and US trade mark law with the focus always on how trademarks may become distinctive through use. An analytical and comparative method is used to compare Vietnamese law, EU law and US law. I also use the synthetic method to give opinions and brief conclusions on each issue. The thesis will only investigate how trade marks may become distinctive through use and what elements make trade marks without any inherent distinctive character gain such distinctiveness. In addition, the thesis only deals with Vietnamese, European Community and US trade mark legislation The thesis is divided into 5 parts: In the first part, there are some general remarks concerning the rationale for the choice of topic and the methods used for researching and delimiting it. In the second part, certain general trade mark issues are reviewed. I refer to international agreements in order to underline that trade marks are important not only in each nation but also throughout the world. In this part, a definition of trade mark is given and distinctive character is emphasized as a requirement for registration. 5 In part 3, the thesis will investigate how trade marks acquire distinctiveness through use in Vietnam, the EU and the US. Based on statutes, doctrine and cases, I will focus on how signs can acquire distinctiveness through use and while certain trade marks can never acquire distinctiveness in this way. Part 4 is a comparative analysis of the issues mentioned in chapter 2, contrasting separately Vietnam - EU, Vietnam - US and EU – US. I will investigate similarities and differences between each of these pairs and give some suggestions for improving Vietnamese legislation In part 5, I will draw some brief general conclusions. 6 1. 1.1 Introduction Rationale Intellectual property plays an important role in the industrial development process. Director General Arpad Bogsch introduced the World Intellectual Property Organization Conference at the Louvre, Paris on June 1-3, 19941 and said that: Intellectual Property’s prime aim is the recognition of the moral and economic value of intellectual creation in the cultural, social and economic development of nations. Trade mark is one of area of intellectual property. As we know, a trade mark is not a product but it has great significance in commerce. The essential function of the mark is to distinguish one undertaking and/or its products from the products of another. It can give the consumer a guarantee of the identity and quality of a product. This distinctive function is the main condition for registration. It is impossible to accept all signs that undertakings register as trademarks. There are many grounds for refusal, including a lack of distinctiveness. However, a trade mark may become distinctive through use. What is “use”? What elements make unregistered trade marks, which do not otherwise meet distinctiveness requirements, become distinctive through use? The notion of “use” in trade mark law is regulated in many countries but often in different ways. Vietnamese law does attempt to regulate it, but the notion remains vague and unexplained. Investigating Vietnamese law by comparing it to EU and US law is interesting. My master thesis thus deals with “Use”- A useful concept in trade mark law – Comparing Vietnamese, EU and US law” 1.2 Purpose and Research Questions The purpose of the thesis is to compare Vietnamese, EU and US law on how trade marks may become distinctive through use and to draw conclusions as to how Vietnam can improve its legislation. The research questions are: - - - How do trade marks acquire distinctiveness through use? Which trade marks can never acquire distinctiveness through use? How to improve Vietnamese law on this issue? Trittion. G (2002), p.3. 7 [...]... Method A descriptive, traditional legal method will be used to analyse regulations, doctrines and cases in Vietnamese and the EU and US trade mark law with the focus always on how trademarks may become distinctive through use Source for my work will be trade mark legislation case law and legal theories, opinions and commentaries Because this is a work which refers to the relevant position in several countries,... countries, an analytical and comparative method is used to compare Vietnamese law, EU law and US law regarding how trade marks may acquire distinctiveness through use Based on the factual presentation and the analytical comparison, the author will use a synthetic method to give her opinions and brief conclusions on each issue 1.4 Delimitation Distinctiveness may arise in two ways: “inherent distinctiveness”... of distinguishing the goods and services of one undertaking from those of other undertaking” This issue will be examined in part 2.3 of this Chapter 2.1.4 US Trademarks Law US trade marks are governed by the provisions of the Lanham Act14 In contrast to Vietnamese and EU trade mark law, the Lanham Act lays down statutory boundaries for trademarks and service marks According to Sec.1127 Lanham Act, the... least distinctive: The first is fanciful marks and arbitrary marks A fanciful trademark is created for the sole purpose of functioning as a trademark For example, “KODAK” had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise Invented marks are neologisms which will not previously have been found in any dictionary Arbitrary marks use. .. trade mark law 1.5 Research Sources - Trade mark legislation in Viet Nam, EU, US - Cases - Legal theories, articles, opinions, commentaries… 1.6 Main Content Part 1: Introduction Part 2: Some issues relating to trade marks and distinctiveness Part 3: Acquiring distinctiveness through use Part 4: Comparative analysis and some guidance for Vietnamese IP law Part 5: Conclusion 8 Some Issues Relating to Trade. .. mark to goods, packages of goods, means of business or supplying services and communicating papers in business activities; b) Circulating, or offering, advertising, storing for sale of, goods bearing the protected mark; c) Importing goods or services bearing the protected mark EU trade mark law has also a provision about Use of trade mark 45 According to this, use means: (a) use of the Community trade. .. refusal of registration as a trade mark Distinctiveness is usually evidenced by exceptional features but signs can also accquire distinctiveness through use 28 Acquiring Distinctiveness through Use 3 The Notion of Use in Trade Mark Law and the Importance of Use 3.1 3.1.1 The Notion of Use in Trade Mark Law In treaties such as the Paris Convention and the TRIPs Agreement, the term use is not defined at... be found in international agreements on trade marks and in the laws of other countries EU Law 2.1.3 A trade mark definition under EU law is to be found in Directive No.89/1043 and Regulation No 40/94.4 In order to be capable of registration, a mark must fall within the definition of a trade mark as set out in Art.2 of Directive 89/104 and Art.4 of the The Law on Intellectual property was approved by... Trade Marks and Distinctiveness 2 Definition of Trade Mark under International and 2.1 National Law 2.1.1 International Law Owing to the importance of trade marks, there are many international agreements in the trade mark field They include the Paris Convention, the Madrid system and TRIPs which all have members from all over the world None of these Agreements have however defined the concept trade mark ... of a trademark shall not be a condition for filing an application for registration In national law, corresponding to the international law position, a use requirement is not obligatory for the registration of trade marks However, the notion of use is covered in more detail According to Art 124, paragraph 5 of the IP Law of Vietnam: The use of a mark means the conduct of the following acts: a) Affixing . of Trade Mark under International and National Law 9 International Law 9 Vietnamese Law 10 EU Law 10 US Trademarks Law 13 Brief Conclusion 14 International Agreements Regulating Trade Marks. Joint Swedish-Vietnamese Master’s Programme MASTER’S THESIS Use - A Useful Concept in Trade Mark Law Comparing Vietnamese, EU and US law. SUPERVISORS: Han Henrik Lidgard Pham Van Tuyet Preface. Distinctiveness under National Trade Mark Law 20 Acquiring Distinctiveness through Use 29 The Notion of Use in Trade Mark Law and the Importance of Use. 29 The Notion of Use in Trade Mark Law