11 October, 2017
The National Office of Intellectual Property in Vietnam (“NOIP”) has granted a significant number of trade mark registrations for 3D marks. Recently there are around 1-3 3D marks granted each month, but unfortunately there is no specific information on the number of 3D marks in Vietnam to date.
In comparison with other non-traditional signs such as sounds, scents, tastes, motions or colors per se, etc., three-dimensional mark (“3D mark”) is more popular and up to now is the only one which has been recognised in Vietnam in respect of both legal and practical perspectives.
By law, 3D marks are registrable in Vietnam. However, except for a requirement regarding 3D mark specimen, there is no further detailed regulation giving guidance on the criteria and procedure for getting a 3D mark. One would then have to refer to the protection conditions, standard requirements and examination procedures for normal 2D marks. In addition, it should be noted that whilst most 3D mark are kinds of product or product packaging design / shape / configuration (“shape”), some 3D marks are simply 3D logos / symbols, which in practice do not face any obstacles that might face 3D product shapes. In this article, we will focus on 3D product or product packaging design / shape / configuration marks.
Inherent distinctiveness and secondary meaning
The major ground for refusing a 3D mark is that it lacks distinctiveness. The three most common grounds for refusal are that the mark is
(i) a simple shape which only consists of functional features,
(ii) a conventional sign or common device which is a generic representation of the designated goods and/or services in connection with the goods, or
(iii) a descriptive sign of the designated goods and/or services in connection with the goods.
There is no clear borderline between such grounds, and in fact NOIP examiners may have different views when choosing either of the functional / generic / descriptive grounds or a combination of grounds to refuse a 3D mark. For example, the following 3D marks were refused because of indistinctiveness, the first one was based on descriptive grounds only and the second one was based on both generic and descriptive grounds:
If the mark is deemed inherently indistinctive, the owner may try to overcome the refusal by proving that the 3D mark has acquired secondary meaning through use in the marketplace in Vietnam. Whilst the functional and descriptive grounds have obvious legal basis for secondary meaning arguments, it is still unclear whether or not conventional signs or common devices can overcome the refusal by way of acquired distinctiveness, since the law does not provide such an exception as with functional and/or descriptive cases. In practice, however, the brand owners tend to prove secondary meaning in all situations and some cases have been successful. For example, the following marks were registered as a result of proving that they have acquired distinctiveness through use:
In certain cases, although the 3D mark was accepted for registration, NOIP imposed a disclaimer that “the device / representation of the device is not separately protected”. This means that only the combination of the shape and specific other distinctive elements is protected as a whole, as opposed to the shape per se. Currently there is no guidance on this practice and the application of disclaimers totally depends on each NOIP examiner’s discretion. We have seen real life examples where very similar 3D marks have been accepted for registration, some with a disclaimer (i.e. certain elements are not protected) and some without.
Borderline between 3D mark and industrial design
In general, intellectual property in Vietnam consists of (i) copyright on originality principle, (ii) patent on novelty principle and (iii) mark on distinctiveness principle. These types of intellectual property may be separate but in certain circumstances, they can be overlapped. For example, a design of the product shape is protected as a copyrighted work if it is original. Then when the design is applied to industrial product manufacturing, it can be protected as an industrial design if all conditions are satisfied. Thereafter, once the shape is commercialised and becomes a sign to indicate commercial origin of the product, it is eligible to be protected as a mark.
A potential conflict can arise between an industrial design patent and a mark registration for the same or similar 3D shape. Although the current law has provisions to address this matter on a first to file basis, namely (a) a mark will be refused if it is identical or does not significantly differ from a prior industrial design (Article 74.2(n) Law on IP as amended ) and (b) an industrial design will be refused if it has been disclosed under a mark application. In practice some examiners skip this cross-database check or in some cases, the 3D mark specimen is not clear enough to cross-check with the industrial design (since under the current practice, all 3D representations and 2D projected views are included in a specimen of mark which must not exceed 80mm x 80mmin size).
Another issue is whether a 3D shape can be simultaneously protected as an industrial design and a mark. Under the current practice, most 3D shape marks were at first instance refused as to indistinctiveness, but have a much better chance of registration by establishing secondary meaning. However, once the 3D shape has acquired distinctiveness through use and therefore is eligible to be protected as a mark, it is also considered to lack novelty and therefore cannot be protected as an industrial design. In this context, the common filing strategy for protection of a 3D product shape should be to initially file an industrial design application for the novel shape design, which may grant up to 15 years of protection. Within this period, the owner should use the 3D shape as a sign to distinguish its products with others’ and obtain as much evidence of distinctiveness acquirement as possible; thereafter with sufficient evidence in hand, file a mark application for the 3D product shape to have an unlimited term of protection.
Summary
In summary, we have learned from handling many 3D trade mark applications in Vietnam that although there are still some uncertainties as to the registration criteria, a good number of trade mark owners have been successful in getting 3D mark registrations in Vietnam. This is a very powerful tool which should not be overlooked.
