Registering a trademark is a procedure to establish the intellectual property right of an individual or an organization with respect to their trademarks, which is an essential sign to distinguish the products of different manufacturers, increase marketing effectiveness as well as attract consumers.
Every year, the National Office of Intellectual Property of Vietnam (NOIP) receives about 40,000 – 50,000 domestic and foreign trademark application. However, not all trademark applications are awarded a degree by the NOIP. One of the reasons given by the NOIP to refuse to award a degree is that their trademark is descriptive of products / services.
- What is a descriptive trademark?
A descriptive trademark is understood as a trademark that is indistinguishable if it is signs falling under one of the following cases:
- Signs indicating the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the goods or services, except for signs having acquired distinctiveness through use before the filing of mark registration applications;
- Signs describing the legal status and activity field of businesses
According to Article 74 of the 2005 Law on Intellectual Property (amended and supplemented in 2009 and 2019)
- A word or set of words that contain the main description of the goods / services bearing the trademark, such as an indication of time, place or geographical origin (except where the registered trademark is a trademark. certification of geographical origin of goods or collective marks, for example: Đào Nhật Tân, Xoài Cát Hòa Lộc, …), production methods, types, quantity, quality and properties (except for cases where The registered trademark is a trademark certifying the quality of goods and services, for example: High-quality Vietnamese goods, a certification mark of Da Lat vegetables, …), utilities, ingredients and value of goods and services;
Trademark: “LƯƠN CAY – Ngon Tuyệt” registered for family’s restaurant service, eel’s restaurant service:
This trademark only includes text. In which the text includes: “Lươn – eel” is the name of the dish, the word “Cay – Spicy” describes the characteristics of the dish, the word “Ngon tuyệt – delicious” means a description of the quality of the Eel provided by the restaurant. As a result, the “LƯƠN CAY – NGON TUYỆT” label may be rejected for descriptive nature.
- A meaningful word or set of words that describe the legal form or area of business of the trademark owner;
For example:The signs are: limited liability Company, joint stock Company, partnership, cooperative, corporation, credit fund, hospital, bank,… (legal form); construction, investment, insurance, law, consulting, commerce, real estate, transportation, … (field).
- Exceptions – trademarks are descriptive but still protected:
Although clearly stated in Article 74 of the Intellectual Property Law regarding cases which are considered non-discriminatory, a descriptive trademark may still be protected if the “mark has gained the ability to distinguish through the use process before the time of trademark registration” thanks to the marketing and communication of the business.
To apply for this exception, applicants must provide two types of evidence:
- Evidence of the widespread use of that trademark (time of commencement, scope, extent of use, etc., of which the mark is considered to be “used” only when such use is available conducted in lawful production, business, commercial, advertising and marketing activities)
- Evidence of distinctive ability of the trademark to related goods and services of the trademark owner. In this case, the mark is only recognized as being distinguishable when presented in the same form as it is used in a continuous and common manner in practice.
The trademark “BIA SAI GON” (product name + place of manufacture) has achieved a distinction through a use process that came before the time of application registration. So, protection will be accepted:
- Pictures and images that describe the main goods or services bearing the mark; location, production method, geographical origin, type, quantity, quality, nature, composition, utility, value or other characteristics of branded goods or services.
When carrying out the registration procedure, marks that include only descriptive elements will often be notified by the registrar of refusal to protect.
From the above analysis, it shows that if the trademark is to be protected by law, it is not descriptive. In order to meet this condition, individuals and organizations need specific and thorough advice and support from professional organizations on Intellectual Property to avoid losing time, effort and money because easy to get denied.