HO CHI MINH CITY UNIVERSITY OF LAW
MANAGING BOARD OF SPECIAL PROGRAMS
------ ---------- ---------- -----

BACHELOR THESIS
MAJOR OF INTERNATIONAL LAW

TRADEMARK DISPUTE SETTLEMENT IN
VIETNAMESE LAW AND REFERRING TO THE
EUROPEAN UNION LAW

Student
Student Code
Class
Guidance Teacher

HO CHI MINH CITY
2013

Ngo Thanh Hai
0955010063
CLC 34
Dr. Phan Ngoc Tam


HO CHI MINH CITY UNIVERSITY OF LAW
MANAGING BOARD OF SPECIAL PROGRAMS
------ -----

BACHELOR THESIS
REGULAR TRAINING

COURSE 34 (2009 - 2013)

TRADEMARK DISPUTE SETTLEMENT IN
VIETNAMESE LAW AND REFERRING TO THE
EUROPEAN UNION LAW

Student
Student Code
Class
Guidance Teacher

HO CHI MINH CITY
2013

Ngo Thanh Hai
0955010063
CLC 34
Dr. Phan Ngoc Tam


I hereby affirm that this thesis is my own study under the supervisor’s
guidance. All of the information other than my idea to be used or quoted has
been acknowledged by means of complete references. I would bear
full responsibility for my protest.

HCMC, 16 July 2013

Ngo Thanh Hai



LIST OF ABBREVIATIONS

IP Law

Intellectual Property Law 2005

CP Code

Civil Procedure Code 2004

CA Law

Commercial Arbitration Law 2010

Joint Circular 02

Joint Circular No. 02/2008/TTLT-TANDT-VKSNDTCBVHTT&DL-BKH&CN-BTP.

TRIPS

Agreement on Trade-Related Aspects of Intellectual
Property Rights

BTA

Agreement between the United States of America and
the socialist republic of Vietnam on trade relations

NOIP


National Office of Intellectual Property of Vietnam

WIPO center

WIPO Arbitration and Mediation Center

EU

European Union

ECJ

European Union Court of Justice

CTM

Community Trademark

IPR

Intellectual property rights

IP

Industrial property


TABLE OF CONTENTS
INTRODUCTION .............................................................................................................. 1
CHAPTER


1.

GENERAL

THEORY

OF

TRADEMARK

DISPUTE

SETTLEMENT................................................................................................................... 6
1.1. Overview of trademark .................................................................................. 6
1.1.1. The concept of trademark .......................................................................... 6
1.1.1.1. Trademark in international legislation .................................................... 6
1.1.1.2. Trademark in Vietnamese Law ............................................................... 7
1.1.2. The functions of trademark ........................................................................ 9
1.1.3. Trademark protection............................................................................... 12
1.2. Trademark dispute settlement .................................................................... 13
1.2.1. The concept of ―trademark dispute‖ ........................................................ 13
1.2.2. Features of a trademark dispute ............................................................... 14
1.2.3. Subject and object of a trademark dispute ............................................... 15
1.2.4. Classification of trademark disputes ........................................................ 16
1.2.5. The distinction between the trademark dispute and the trademark
infringement ....................................................................................................... 21
1.2.6. Mechanism of trademark dispute settlement ........................................... 23
1.2.6.1. Trademark dispute settlement via way of negotiation and mediation .. 24
1.2.6.2. Trademark dispute settlement via way of jurisdiction.......................... 25



1.3. SUB-CONCLUSION .................................................................................... 27
CHAPTER

2.

VIETNAMESE

LAW

ON

TRADEMARK

DISPUTE

SETTLEMENT – SHORTCOMINGS AND REMEDIES ..................................... 29
2.1. Mechanism of trademark dispute settlement in Vietnam ........................ 29
2.1.1. General provisions of trademark dispute settlement in Vietnamese law 29
2.1.2. Dispute settlement via way of negotiation, mediation ............................ 31
2.1.2.1. Negotiation ........................................................................................... 31
2.1.2.2. Mediation .............................................................................................. 32
2.1.3. Dispute settlement via way of jurisdiction .............................................. 36
2.1.3.1. Dispute settlement in the People‘s Courts ............................................ 36
2.1.3.2. Dispute settlement in the arbitration ..................................................... 44
2.1.4. Situation on trademark dispute settlement in Vietnam ............................ 47
2.1.4.1. Statistics on trademark dispute in Vietnam .......................................... 47
2.1.4.2. Some typical cases ................................................................................ 50
2.2. Mechanism of trademark dispute settlement in the European Union .... 58

2.2.1. General provisions of European Union Law on trademark dispute
settlement ........................................................................................................... 58
2.2.2. Office for Harmonization in the Internal Market (OHIM) ................... 60
2.2.2. Community Trademark Court (CTMC)................................................ 62
2.2.3. European Union Court of Justice (ECJ) ............................................... 63
2.3. Recommendations proposed for improving the law of trademark dispute
settlement - based on studying experiences of EU law ..................................... 64


2.3.1. Complete the law of content of the intellectual property law and civil
procedure law on settling trademark dispute ..................................................... 64
2.3.2. Complete the law of organization the competent authority on settling
trademark dispute ............................................................................................... 68
2.3.2.1. Enhance the dispute settlement role of National Office of Intellectual
Property of Vietnam (NOIP) ............................................................................. 68
2.3.2.2. Establish specialized court for intellectual property............................. 70
2.4. SUB-CONCLUSION .................................................................................... 72
CONCLUSION ................................................................................................................. 73
BIBLIOGRAPHY


1

INTRODUCTION

1. The necessity of the thesis
Today, the concept of trademark has not become estranged and was familiar with the
manufacturer, as well as to consumers. In the market economy, trademark not only
keep its original function as a mark to distinguish the goods and services with each
other, it is also an important tool for manufacturers could account market and enhance

its reputation with consumers through advertising and marketing strategy. According to
the world's largest brand equity database BrandZ1, the famous brands globally are
priced not less than billions of dollars and continue to grow each year, such as in 2012:
Coca-cola is priced of US$ 77.8 billion, Apple is 76.6 billion, IBM - 75.5 billion,
Google - 69.7 billion2... Because of these tremendous value, the act of trademark
disputes increasingly occurs more severe and sophisticated.
With the act of participating in international treaties for the protection of intellectual
property rights, be an official member of the WTO in 2007 - means that Vietnam must
comply with the Agreement on the relevant aspects of the right to trade intellectual
Property (TRIPs) - requires building a system of intellectual property lawfully and
reasonably. Therefore, the Intellectual Property Law and a series of guidance legal
documents have been issued to create a legal framework safely, encourage creating and
protecting its creative outcomes. However, the provisions of law which applied in
practice are still inadequate and overlap in defining the jurisdiction of trademark
dispute settlement, dispute resolution process, the confusion in the regulation of
trademark dispute with the infringing right of trademark owner. Moreover, these
provisions are still scattered lead to the act of applying ineffectively. Whereas in
developed countries such as the European Union, the trademark dispute settlement
system which was specified with specialized agencies and was highly efficient are
1

(Last visited on 17/06/2013).
BrandZ Top 100, 2013. See more at: (Last visited
on 17/06/2013).
2


2

lessons for Vietnam to acquire and complete the dispute resolution mechanism of

intellectual property in general and particularly in trademark.
For these reasons, the author decides to choose the topic: ―TRADEMARK DISPUTE
SETTLEMENT IN VIETNAMESE LAW AND REFERRING TO THE EUROPEAN
UNION LAW‖.
2. The purpose of the thesis
The thesis will concentrate on the research of trademark dispute settlement mechanism
under civil procedure: negotiation, mediation and civil jurisdiction.
In addition, the thesis will continue referring the settlement mechanism of the
European Union (EU) through understanding its dispute settlement measures.
Finally, based on the experiences of EU law and some countries, the thesis will
propose recommendations for improving the legal proceedings and organizational
structure to resolve effectively trademark disputes.
3. Research situations
The subject of trademark is no longer new with many documents, articles and research
works. However, most of articles have just gone to deeply research on general
trademark protection, well-known mark, completing issues of in IP law.
There are a number of research projects on trademark dispute, but most were written
for a long time and before the intellectual property law was issued, so the value are not
high. It can be considered as the bachelor‘s thesis in 2001 of the author Nguyen Thuy
Hang, "Dispute settlement on trademark and industrial design under international law
and the Vietnamese law"; "Enforcement of rights of intellectual property by civil
remedies in Vietnam, the situation and solutions" by Nguyen Hoang An, bachelor‘s
thesis, 2005; ―Some problems of intellectual property disputes settlement in civil
proceedings‖ by Nguyen Nhu Quynh (Published in Journal of Law, 2005).
Recently, some research has great value and close to the content of the author‘s thesis,
such as:


3




U Thi Bach Yen (2006), ―Law on protection of intellectual property right –

Practical application in Ho Chi Minh courts‖, master‘s thesis. The thesis concentrated
on analyzing the role of civil courts in intellectual property dispute settlement,
illustrated by real cases and situations in Ho Chi Minh City courts. From that, the thesis
also indicated some solutions based on the experiences of some countries in the world.
 Nguyen Van Tien (2010), "Practices on intellectual property disputes settlement
at the People's Court". The study indicated some limitations, shortcomings and
difficulties in the settlement of disputes over intellectual property rights in Vietnam.
From that, the study also presented some amended recommendations.
 Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative
study between European Union law and Vietnamese law". The thesis clarified logically
the regulations of the European Union law on protection trademark and well-known
trademark, relating to international laws and some of the countries in the world, and
especially focused on the improvement of Vietnamese legal system on well-known
trademark protection.
 Nguyen Thi Thuong (2012), "Trademark dispute settlement under Vietnamese
law – situation and resolution‖, bachelor thesis. The thesis made quite clear the concept
of trademark disputes, clarified trademark disputes and analyzed real situations
together with considerable solutions. However, the thesis did not distinguish clearly the
trademark disputes the trademark infringement the owner‘s rights.
4. The scope of the research
In the thesis, the author mainly focus on researching, evaluating of trademark dispute
settlement under the laws on civil procedures of Vietnam. In addition, the author would
like to make an overview the provisions of European Union law on community
trademark disputes settlement, as well as studying some cases in Vietnam and in EU.
5. Methodology



4

Traditional legal methods or legal dogmatic method
The traditional legal method is commonly used in most fields of legal research. This
method is normally understood as a way of interpreting, clarifying, evaluating and
analyzing applicable legal regulations in order to make clear theoretical and practical
matters3. In other words, it is also used to explain, evaluate the valid legal contents and
to forecast the development of these legal norms. Accordingly, this method shall
predict the tendencies of law in general and in specific provisions also. Therefore,
when using this method, the author has approached and studied many legal sources, on
the international and national levels, such as national laws of Vietnam, the US, the UK,
China or case law (in Vietnam and EU) and legal doctrines.
Legal historical perspective
The legal historical method may be understood as a way of approaching and studying
certain issues in the context of the history of their development. It is uncontroversial
that law is historical in nature. This means that laws have always existed within the
historical contexts of countries or territories and therefore, has been influenced and
affected by their historical conditions4. Thus, analysis based on the formation and
development of trademark and trademark dispute settlement in Vietnam and in EU, this
method can help the readers understand current statutes by understanding their historic
sources and development of these legal systems. Besides, upon considerations of the
historical development and conditions in a country or a community, the legal historical
method will supply reasonable and scientific explanations for legal problems which
they face.
Other research methods

3

Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union

law and Vietnamese law", p.23.
4
Phan Ngoc Tam (2011), see (3), p.26.


5

In addition to the mentioned methods, the author also refers research methods such as
economic legal perspective; sociological legal perspective and comparative legal
method. To determine the appropriate level of damages to award in trademark litigation
or to define the infringement activities in trademark cases based on economic damage,
the economic legal method will be used. Otherwise, to compare the provisions of law
with present situations or with the EU laws as well as proposed solutions for improving
the law in Vietnam, the method of sociological and legal comparative will be used.
6. Scientific meaning and value of thesis
The thesis will provide the basis contents and in-depth analysis of the trademark
disputes, the dispute settlement process under the civil procedure. Based on the
introduction the dispute measures of the European Union, the author also proposes
some practical recommendations to improve the legal system and law organizations to
resolve trademark disputes in practice.
7. Structure
The thesis consists of 02 chapters:
Chapter 1: General theory of trademark dispute settlement.
Chapter 2: Vietnamese law on trademark dispute settlement – shortcomings and
recommendations.


6

CHAPTER 1

GENERAL THEORY OF TRADEMARK DISPUTE SETTLEMENT

1.1. Overview of trademark
1.1.1. The concept of trademark
1.1.1.1. Trademark in international legislation
Trademarks are one of the basic IP objects in our lives. Since ancient times, people had
known to use shapes, own signs or signatures to express their property right 5. Laws on
the protection of trademark were enacted firstly in Britain6. From that, the definition of
trademarks has been spread on many European countries. In the explosion of science
and technology, the expansion of international relations and the risk of infringement of
IPR, it is necessary to consider a common regulation to protect those rights. So, a
diplomatic conference was held in Paris and approved the Convention on the protection
of IP, including trademark7.
Trademark was defined clearer in TRIPs, defined trademark as ―any sign, or
any combination of signs, capable of distinguishing the goods or services of one
undertaking from those of other undertakings, shall be capable of constituting a
trademark”...8

5

Syllabus of intellectual property law (2012), Ho Chi Minh City University of Law, pages.249. For example,
some Roman ceramic artists used to use more than a hundred different trademarks to distinguish their products
with other ones. One of the most famous trademarks at that time, which was most counterfeited, is Fortis.
6
The earliest trademark legislation was the Bakers‘ Marking Law, obliging every baker to put his mark on the
bread he baked, enacted by the British Parliament in 1266. See more at:
(last visit on 21/06/2013)
7
Paris Convention for the Protection of Industrial Property, approved on March 20, 1883. However, under
Article 6.1, this Convention did not show the particular definition of trademark and let each national member

decide by itself. Instead, the convention regulated cases refusing the trademark application; such as, the
trademark which is inability to distinguish, immoral or contrary to public order or has the ability to deceive the
public. It can be seen that, except cases above, any sign which has the ability to distinguish can be used as a
trademark.
8
Article 15.1 TRIPs.


7

WIPO also has the definition of trademark, ―trademarks are distinctive signs, used to
differentiate between identical or similar goods and services offered by different
producers or service providers.”9
Trademark in the EU law is firstly regulated in the Article 2, First Council Directive
89/104/EEC10 and Article 4, Council Regulation (EC) No 40/9411, as follows:
A trademark may consist of any sign capable of being represented
graphically, particularly words, including personal names, designs, letters,
numerals, the shape of goods or of their packaging, provided that such signs are
capable of distinguishing the goods or services of one undertaking from those of
other undertakings.
In summary, albeit each nation and international organizations have different
approaches on explaining the concept of trademarks, a common point can easily
recognize in mentioned concepts is the distinctive capability of trademarks. So, the first
consideration in determining whether a trademark is protectable in those countries is to
determine whether or not the mark is distinctive of the products or services on which
the mark is used12.
1.1.1.2. Trademark in Vietnamese Law
In Vietnam, trademarks were firstly13 regulated in Decree 197/HDBT14. It regulated
that trademarks are “signs that can be accepted as words, pictures, drawings,
embossing ... or a combination of these factors, is expressed in one or a variety of

colors”15. However, the concept of trademarks was just regulated in sub-laws and only
officially regulated in Civil Code 1995, which became the highest legal basis and
9

(last visited on 13/06/ 2013)
Repealed by Directive 2008/95/EC.
11
Repealed by Council Regulation (EC) No 207/2009.
12
Kenneth L.Port, ―Trademark law and policy‖, Carolina academic press, pages. 141.
13
Dao Minh Duc wrote that Law No.13/57 dated 01/08/1957 in Southern of Vietnam rules "production mark "
refers to the product or the agricultural industry and "brand" for the trade goods. See more at:
(Last visited on 13/06/2013)
14
Decree 197/HDBT dated 14th December 1982 and be guided by Circular 1134/SC dated 17 th October 1991.
15
Article 3.1 Decree 197/HĐBT.
10


8

principles to protect IPR, include trademarks. Although Decree 197/HĐBT, Circular
1134/SC and Civil Code 1995 made an important role in building a legal background
to protect IPR, there were some restriction about protection scopes16 requires a new
regulation, which can be reasonable with the current situation.
On 29th November 2005, IP Law was enacted, marked the complement and outstanding
development of the protection of IPR. New definition of trademarks was expressed as
follows: ―A trademark is the sign used to distinguish goods or services of the

organizations, different individuals‖17. This definition was detailed in the Article 72, is
signs can be seen as words, letters, images, drawings, including holograms or
combination thereof that are expressed by one or more colors and distinguish with
goods or services of other subjects. Therefore, signs could be used as a trademark must
be visible and distinctive.
In some countries like France, USA… signs might also be invisible like sounds, tastes
and odors18. According to Article 15.1 TRIPs, any sign which can distinguish the
goods and services of different subjects is recognized as a trademark. So, in principle,
despite some differences between visible signs and invisible signs, distinguishing
function is still the basic requirement19 to register a trademark. In fact, signs such as
colors, tastes, odors or sounds are also playing a crucial role to differ goods and
services of producers20. Therefore, in the author‘s opinion, Vietnam should supplement
invisible signs like sounds, tastes or smells so that it can be used as a trademark.

16

Nguyen Thi Thuong, 2012, bachelor‘s thesis ―trademark dispute settlement under Vietnamese law – situation
and resolution‖, pages.10.
17
Article 4.16 Intellectual Property Law 2005.
18
For example, in USA, the sound of lion roar of MGM film studios or Nokia tune were registered as trademarks.
Other example, in 1990, a court held that a Californian company could register a plumeria scent as a trademark
for its sewing thread and embroidery yarn (US Reg. No 1,639,128, subsequently abandoned). Other example is in
L’Oréal v. Bellure, the England‘s Court of Appeal court held that Bellure's use of lists in its advertising that
compared its perfumes' scents to those of well-known L'Oréal perfumes constituted trademark infringement.
Some representative sounds of various famous registered trademarks in the U.S can be found at:
(last visited on 20/06/2013).
19
(last visited on 15/06/2013)

20
Odor of perfumes, wines or tastes of some agriculture products or foods can be signs to distinguish products of
different producers.


9

1.1.2. The functions of trademark
Trademarks and the legal protection they afford to play a pivotal role in
commerce. On the one hand, they contribute to market order by defining various
important rules of business and on the other hand, they help consumers in their
buying decisions21.
Trademark was also reassured by Jacobs A.G when he said that trademarks are neither
less important nor less deserving of protection, than any other types of intellectual
property22. So, it can see trademarks as performing four functions as follows:
Distinctiveness
Trademarks permit the public to distinguish between goods of varying sources. This is
the basic function of trademarks. The ECJ has recognized that the distinctiveness of
trademarks is its ―essential function‖23. This is valuable both from the consumer
viewpoint and the seller's viewpoint. For the consumer, they can distinguish between
goods on the market – where displayed various types of goods – and, by being able to
do so, gives the suppliers of goods under the mark an incentive to produce high-quality
goods sold under a mark. Moreover, trademarks not only distinguish between goods
and services to each individual or organization but also help consumers distinguish
goods and services thereof with counterfeit products. Like most of legislations of
countries, IP Law regulates that a trademark does not have a distinctive capability if it
falls into one of the circumstances listed in Article 74.
Badge of origin
The second function of a trademark, as mentioned is one another essential function of
trademark, is to guarantee the identity the origin of the trademark product to the

consumer or ultimate user. In the case Galaxo Group Ltd v Dowelhurst Ltd, the ECJ
21

Cathy Jewell (04/2009), “Trademarks: Valuable assets in a changing world‖, WIPO magazine, WIPO.
HAG No.2 [1990], pages.583.
23
Guy Tritton, ―Intellectual property in Europe‖, published by Sweet & Maxwell (2002), pages. 506.
22


10

stated that, ―a trademark is a badge, in the widest sense, used on or in relation to goods,
so as to indicate source‖24. With necessary information presented on a trademark,
consumers could know the producers, place of origin and they could find out the
products they need. For example, some collective marks such as Hoa Loc mango, Cho
Gao dragon-fruit, Ngu Hiep durian or Ba Vi milk, Bat Trang pottery… could indicate
the origin of the manufacturers and place that products be produced. For the proprietor
of trademarks, the purpose of building a trademark is to point out distinctly the origin
or ownership of the goods to which it is affixed; to secure to the proprietor, who has
been instrumental in bringing into the market a superior article of merchandise, the
fruit of his industry and skill; to assure the public that they are procuring the genuine
article; to prevent fraud and imposition; and to protect the manufacturer against
substitution and sale of an inferior and different article as his product.
Quality assurance
There are some of the different perspectives of modern authorities with the function of
trademark - guarantee of quality. In some countries like USA, Philippines25… a
trademark is a ―creative silent salesman‖26 - ―the conduit through which direct contact
between the trademark owner and the consumer is assured‖27. A trademark stimulates
sales by creating goodwill and assures buyers that all goods bearing the same marks

have the same quality. It is not only a symbol of origin but also a symbol of quality
assurance and the reputation of the trademarked goods or services28.
Advertising and marketing

24

LTC Harms, ―The enforcement of intellectual property right: A case book‖, WIPO, 2005, p.109.
/>visited on 15/06/2013)
26
LTC Harms, ―The enforcement of intellectual property right: A case book‖, WIPO, 2005, p.111.
27
/>visited on 15/06/2013)
28
Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union
law and Vietnamese law", pages.39.
For example, albeit there are many types of mobile phone which produced by many manufacturers, users prefer
to choose iPhone because they are not only noticed by the origin of the products (Apple Corporation); on the
other hand, they are assured of quality and persistence of this product.
25


11

Trademarks play an important role in advertising. It is normal for consumers to make
purchases based on the continuous influence of advertising. The way in which
trademarks promote this process is based on the ability to distinguish and identify
goods and services. Trademarks are a concise way to refer to the products. Thus,
trademarks become the channel to attract customers and introduce necessary
information on the products such as quality, origins… Besides, due to the cost of
advertising, especially through the electronic media, the use of the trademark would

reduce the amount of information conveyed.
Economic functions
Trademark is an intangible and a valuable asset of the enterprise. Its value is best
expressed through the licensing trademarks or other activity like franchising or through
the activity of assessment of the competent authorities in the process of evaluating
business assets29. In practice, the value of a trademark and a brand are considered the
same because the value of trademark could be laid in the aesthetic factors, the level of
prestige and buying power of trademark goods and services30. The economic benefit
brought by trademarks such as: increasing sales, tightening of customer loyalty,
increasing profits and income for businesses, expanding and maintaining market,
increasing production and sales of goods and increasing the value of the product by the
consumer to purchase a product's reputation31. Besides, trademarks reward the
manufacturer who consistently produces high-quality goods and they thus stimulate
economic progress32. Some of the proof can be seen in the franchising activities in
Vietnam recently such as: in 2005, Unilever Group bought toothpaste brand P/S of
Phuong Dong company with US$5 million; Kinh Do Corporation bought brand Wall's
ice cream for just US$ 15 billion (a brand is owned 52% market share)33.
29

Dao Minh Duc, ―Some issues about trademarks evaluation‖.
Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union
law and Vietnamese law", pages.46.
31
(Last
visited on 20/06/2013).
32
Guy Tritton, ―Intellectual property in Europe‖, published by Sweet & Maxwell (2002), pages. 507.
33
(Last visited on 17/06/2013).
30



12

Besides mentioned functions of trademarks, some studies expand the roles of
trademarks with other functions like: helping consumers to express lifestyle34; to
segment market, to create a product-oriented and meaningful35.
All in all, because of those significant functions, the trademark disputes occur more
frequently and severely, lead to the establishment the intellectual property right
protection system strong enough to protect those values of trademarks.
1.1.3. Trademark protection
Protection of IPR is the act of the state - through the legal system - to establish the
rights of owners of IPR, including copyright, rights related to copyright and IP rights
and plant variety rights36. So, the trademark protection is the act of the state, via
regulations of intellectual property legislation such as: protection conditions;
establishment of IPRs to trademarks; protect the rights of the trademark proprietor,
content and limitation rights of trademark proprietor, etc. To be protected, except for
well-known marks, the other trademarks need to be registered and be granted the
certificate by the competent authority. Rooted in the certificate, the proprietor will use
it like the evidence which prove that he has the rights to his trademark and prevent the
infringement of the defendant.
When the proprietor has the certificate, he has the exclusive rights of his trademark.
According to Civil Code 2005, trademarks are a type of asset, so the owner has the
rights to possess, use and dispose of. The rights of trademark owners are regulated by
the Article 123.1 and entail clearly into the Article 124.5 and chapter X of the IP Law.
Besides, the Article 125 regulates the right to prevent others from using trademarks;
however, there are circumstances in clause 2 that the proprietor does not have the rights
to prevent others from performing.

34


Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union
law and Vietnamese law", pages.42.
35
( Last visited on 19/06/2013)
36
Judicial Science Monograph, No. 698-2009 / CSB/02-2037/TP SPC, pages.10.


13

Thus, understanding the protection of trademarks is the essential issue in defining the
rights and obligations of the subjects; term of protection in a trademark dispute
settlement.
1.2. Trademark dispute settlement
1.2.1. The concept of “trademark dispute”
According to some dictionaries, ―dispute‖ means ―a conflict or controversy; a conflict
of claims or rights; an assertion of a right, claim, or demand on one side, met by
contrary claims or allegations on the other37‖ or means that ―an argument or a
disagreement between two people, groups or countries, discussion about a subject
where there is disagreement 38‖ . In summary, based on the definitions above, the term
of ―dispute‖ can be understood as a conflict, controversy or a disagreement between
parties about a certain benefit or rights.
In fact, the term ―intellectual property dispute‖ or ―trademark dispute‖ was not
explained by the IP Law. ―Intellectual property dispute‖ is considered as a kind of civil
dispute falling under the court‘s jurisdiction in the Article 25.4 and Article 29.2 of the
CP Code. Under the Dictionary of law, ―civil dispute‖ means:
The dispute over the rights, benefits and obligations of legal entities in civil
law relation such as disputes in the signing, execution and payment of the
purchasing agreement, investment, technology transfer , transportation,

insurance ... or in the implementation of personal rights is itself associated with
the property relations such as copyrights, inventions, patents, in divorce,
inheritance, etc.39
Based on the definition of civil dispute, the term ―intellectual dispute‖ was defined as
follows:

37

Black‘s Law Dictionary, Second pocket edition, 2001, pages 211.
Oxford Advanced Learner‘s Dictionary.
39
Black‘s Law Dictionary, Second pocket edition, 2001, pages 532.
38


14

―Disputes over intellectual property arising directly from the subject of
intellectual property or commercial transactions and relationships related to the
extraction of objects of intellectual property, such as in the case establishment,
merger, consolidation of joint venture company, technology transfer
agreements, general contract (EPC), and contracts related to intellectual
property (research contract and labor contract)”40.
Therefore, trademark dispute can be understood that is a conflict occurs directly from
the object of intellectual property are trademarks (disputes on the trademark rights of
the proprietor) or arises from trade transactions and relationships related to the
exploitation of trademark like licensing of the trademark, franchising and so on. Those
might occur from the process of registration to the exploitation, use and dispose of
trademarks.
1.2.2. Features of a trademark dispute

Because an intellectual property dispute in general or trademark dispute in specific is a
kind of civil dispute so it carries some typical features like follows:
Trademark dispute as a civil dispute has a nature of privacy: Those disputes occur
between private-to-private and parties use methods of self-determination of the subject
involved in property relations, negotiation and mediation method; the court has the
jurisdiction to resolve only if it has the request of the parties.
Almost all of the trademark disputes are complicated: There are many reasons entail
into appearing this feature. One of the reasons is the nature of the trademark dispute
occurs from an object which quite new and inadequate information for citizens. So,
disputing parties might not have adequate perspective with their rights and aware of the
infringement of the other party. In addition, those disputes require the subject who has

40

U Thi Bach Yen (2006), ―Law on protection of intellectual property right – Practical application in Ho Chi
Minh courts‖, master‘s thesis, p.11.


15

the jurisdiction of resolving dispute must have a professional expertise in defining the
object and nature of that dispute.
Trademark disputes have the nature of “multinational”41: Rooted in the object of the
dispute is trademarks, which is registered by international legislation or national law;
so, the trademark disputes will be subject to the international legislation like treaties,
law on which it is protected or the national legislation. Moreover, the nationality of the
proprietors or the places of occur dispute could be very large are the reasons leading to
the multinational feature of trademark disputes.
Trademark disputes need to be highly confidential42: Like other object of the
intellectual property such as copyright, patents, trademark is also a valuable asset of the

enterprise. It not only plays a distinctive role but also a representative of quality,
prestige and the orientation43 of the trademark owner. Hence, the dispute requires the
necessary security and best dispute settlement mechanisms to ensure that requirements.
It can be concluded that, the aforementioned features of the trademark disputes will
govern the selection of great ways to solve most appropriate for each particular dispute.
The party will decide whether these factors should be given priority in dispute to
choose the resolutions which meet the requirements of the situation.
1.2.3. Subject and object of a trademark dispute
Based on the concept and the features of a trademark dispute, it can recognize the
subject and the object of a trademark dispute as:
Subject of a trademark dispute

41

U Thi Bach Yen (2006), ―Law on protection of intellectual property right – Practical application in Ho Chi
Minh City courts‖, master’s thesis, pages. 11 and the article ―Intellectual property disputes settlement via way of
arbitration or mediation‖, Lawyer Nguyen Hoan Thanh, pages.1.
42
Nguyen Hoan Thanh, The article ―Intellectual property disputes settlement via way of arbitration or
mediation‖, pages.1.
43
Section 1.1.2. this thesis.


16

Because a trademark dispute is considered a civil dispute, its subject will bring the
nature of privacy. It means that the dispute is mentioned only which is occurring
between private-to-private disputing parties and do not have the participation of state
authorities (if it has then that is an administrative dispute or a criminal dispute). Under

the Civil Code, the subject of civil law relations contains individuals, legal entities and
other subjects44. In addition, according to Decree 103/2006/ND-CP, the subject of
trademark dispute can be international organizations and individuals who meet the
conditions for the protection of IPR in Vietnam under the international treaties to
which Vietnam is a member45.
Object of a trademark dispute
Because trademark is a type of property rights which regulated in the Article 181 Civil
Code, the object of a trademark dispute is the dispute of ownership rights of the
trademark. Hence, the dispute might occur in process of possession, use and disposition
of trademarks.
1.2.4. Classification of trademark disputes
Although Vietnam has participated in a lot of bilateral and multilateral treaties on IP,
most of regulations in those treaties do not entail in categorizing trademark disputes.
Otherwise, those regulations usually concentrate on the conditions to register
trademark46, trademark protection and trademark enforcements like in the TRIPs 47 or
BTA48. So, classifying trademark disputes is regulated by domestic legislation.
In the U.S, trademark dispute can be classified into disputes in trademark Trial and
Appeal Board (TTAB) proceedings (such as opposition to a pending application;

44

Article 1 Civil Code 2005.
Article 2.2 Decree 103/2006.
46
In Madrid Agreement.
47
Part III TRIPs.
48
From the Article 11 to the Article 15, Chapter II – Intellectual Property Right.
45



17

cancellation of an existing registration49) and disputes in court proceeding like claims
of infringement, dilution and unfair competition50. Unfair competition belongs to the
regulations of each stage; for example, New York Courts recognize ―two theories of
common law unfair competition: palming/passing off and misappropriation‖ 51. These
types of behaviors are essentially misrepresentation that damage the goodwill and
reputation of the party who is the subject of the misrepresentation.
In chapter V, Trademark Law of the People‘s Republic of China52 also regulated
disputes concerning registered trademarks. Trademark disputes come under the Board's
jurisdiction. Disputes might occur in the opposition, cancellation the registered
trademark. Besides, China also regulated the disputes of trademark license contracts, so
a trademark registrant may license others to use its trademark by signing a trademark
license contract. To dispute a trademark Office's rejection of an application for
assignment or renewal, an applicant has fifteen days to file with the Board an
Application for a Review of an Assignment (or Renewal) Rejection53.
In Vietnam, there are no particular articles that classifying of trademark disputes in the
IP Law. However, there are some studies of the Vietnamese authors wrote this issue.
Intellectual property disputes may be divided into categories: disputes in order to
determine the owner or legal use of IP objects; dispute over the violation IPR; dispute
over transferring to others the right to use or expand the volume, range from
publication date of the application; disputes over inheritance rights of IP; disputes over
service contracts representing IP; disputes over the right to apply for a certificate of
protection of IPR; disputes arising out of IPR for transfer of ownership or right to use
IP objects (also called license contract) 54; or be divided into disputes arising in the
49

―Pratical Skills – Basics of IP Law‖, Co-sponsored by the IP Law Section and the Committee on Continuing

Legal Education of the New York State Bar Association, pages.192.
50
― Pratical Skills – Basics of IP Law‖, see (47), pages.193.
51
―Pratical Skills – Basics of IP Law‖, see (47), pages 177.
52
Trademark Law of the People's Republic of China was adopted at the 24th Meeting of the Standing Committee
of the Fifth National People's Congress on August 23, 1982 (amended 2001).
53
Paul B. Birden, ―Trademark Protection in China: Trends and Directions‖, pages 467.
54
Nguyen Nhu Quynh, ―Some problems of intellectual property disputes settlement in civil proceedings‖,
published in Journal of Law, special issues of the Civil Procedure Act 2005.


18

process of establishing the right to register the trademark; disputes arising in the
infringement of the IP rights of the trademark; disputes over the use of the trademark in
practice55.
The CP Code based on the beneficial purpose of the disputes, divides the IPR dispute
into: Disputes over IPR or technology transfers56; disputes over IPR or technology
transfers among individuals or organizations, which are all for the purposes of profits57.
Those disputes were detailed in the Joint Circular 0258.
Under those mentioned analyses above, it can be concluded that trademark disputes can
be put into categories:
-

Dispute over the registering process


In this process, there are specific disputes like: disputes over the right to register
trademarks; disputes over the priority right to applications for registered trademarks;
disputes over the registering trademark with trade names, registered trademarks or
geographical indications; disputes over the registering trademark with the registered
trademark which was terminated in cases of termination of validity of protection titles.
Easily seeing that, those disputes occur with the purpose of establishing the ownership
rights of the trademark.
There are several reasons why significant disputes outbreak in this process. The first
reason is that the applicant did not spend enough time to make a preliminary
investigation registered trademarks which can be identical or confusing with his marks.
Besides, the applicant usually researches his marks with the registered trademark in the
trademark information system and forget the research on the confusion capability his
mark with geographical indications or trade names. The second reason is from the

55

Nguyen Thi Thuong (2012), Bachelor‘s thesis, ―Trademark dispute settlement under Vietnamese law –
situation and resolution‖, pages 26 – 30.
56
Article 25.4 Civil Procedure Code 2004.
57
Article 29.2 Civil Procedure Code 2004.
58
Section A.I.3 Joint Circular 02/2008.