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May 5, 2018

Vietnam: Addressing the Conflict Between Trademark and Copyright in Relation to Logos

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Managing Intellectual Property

Under Vietnamese law, if a logo is capable of distinguishing the goods or services of its holder from those of others, it can qualify for trademark protection. If the logo is created personally by the author without copying others’ works and is fixed in a material form, it is also copyrightable as a work of applied art (assuming it meets the minimum creativity threshold).

Such parallel protection by both trademark and copyright laws can lead to a conflict of rights when one party obtains trademark rights to a logo through registration with the NOIP, while another party obtains protection for an identical or confusingly similar logo through the copyright regime. How does the law address this conflict? The answer depends on which right existed first.

If copyright arose first

There is no direct provision that a trademark registration will be invalidated if it is identical or similar to a prior copyrighted logo. However, there are some indirect provisions that a copyright owner can rely on to challenge a trademark registration. Article 17 of Decree No. 103/2016/ND-CP of 22 September 2006, guiding the implementation of the IP Law, stipulates a principle on respecting previously established IP rights: “industrial property rights of an organization or individual may be invalidated or banned from exercise if they conflict with previously established intellectual property rights of another organization or individual.”

This provision can be understood to mean that a third party can rely on its prior copyright (an intellectual property right) for a logo to invalidate a trademark registration, if the use of the logo protected by the contested registration conflicts with its copyright. But it does not work the other way around, as it specifies that only “industrial property rights”, not “intellectual property rights”, may be invalidated. However, as this provision is vague—it does not provide concrete circumstances/conditions for the invalidation—it is rarely applied in practice.

Another relevant provision is Point 39.4(g) of Circular No. 01/2017/TT-BKHCN guiding the implementation of Decree No. 103/2006/ND-CP, which stipulates that a sign is ineligible for protection as a trademark if it is identical or confusingly similar to images of characters or figures in other persons’ widely known works under copyright protection, unless it is so permitted by the owners of those works. Strictly speaking, a logo would not likely be regarded as characters or figures in the context of the above provision. As such, this provision is also not likely to be applicable to settle the conflict of rights.

If trademark right arose first

Article 55 of Vietnam’s IP Law provides that a certificate of copyright registration can be invalidated if the certificate holder is not the real author/owner, or the registered work is ineligible for protection. As such, if it is discovered that the owner of a copyrighted logo copied that logo from another’s trademark (personal creation is a prerequisite for copyright), the certificate for such copyright could be invalidated. In reality, however, it is not easy to prove/conclude the act of copying, especially if the two logos are not identical. If the trademark owner cannot prove that the copyright holder copied its logo, the subsequent copyrighted logo can coexist with the trademarked logo.

Shortcomings of the law

It is clear that the law does not provide sufficient solutions to address the conflict of rights, leaving a loophole for sly infringers to purposely seek copyright protection for a logo as a defense against trademark infringement charges for their use of such logo.

As a result, registration and enforcement authorities face difficulties in handling conflicts between trademark and copyright in a consistent and appropriate manner. The NOIP, in one opposition proceeding, agreed with a copyright holder to refuse registration of a logo as a trademark on the grounds that it conflicted with an earlier established copyrighted logo. However, in a similar case where the copyright holder sought to invalidate a trademark registration based on its prior copyrighted logo, the NOIP rejected the request.

The Copyright Office of Vietnam (COV) may agree to invalidate a copyright certificate if a third party can successfully prove that the copyright holder copied rather than created its logo, but, as discussed above, proving the act of copying is extremely difficult, and often requires a court case. In one recent case, the COV refused to cancel a dubious copyright registration, the trademark holder who had created the logo sued in court, and the court ordered the registration to be canceled.

Recommendations

Until the law is revised to effectively settle the conflict of rights between trademark and copyright, IPR holders should consider obtaining registration for logos by both trademark and copyright regimes to maximize protection in Vietnam.

Although registration of a copyright with the COV is not mandatory for copyright protection, it is generally recommended since a certificate of copyright registration is useful prima facie evidence of ownership in conflicts and/or enforcement. Further, copyright protection requires no evidence of use to be maintained, while a trademark registration may be cancelled if the registered logo has not been used for five consecutive years. In addition, copyright is not limited by class of goods and services, so if a third party’s logo is used on goods or means of services which are not identical or similar to those bearing the registered trademark, copyright enforcement can possibly be applied where trademark protection fails.

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