You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

May 27, 2014

Well-Known Marks in Vietnam: Legal Framework and Practical Obstacles

Subscribe to Updates
Informed Counsel

In 1992, the National Office of Intellectual Property of Vietnam (NOIP) refused a trademark application due to its confusing similarity to the unregistered, but well-known, McDONALD’S trademark of the U.S. fast-food chain. This refusal was based merely on the reputation of the mark, as McDonald’s—at the time—had not yet used or shown any intention to use such mark in Vietnam. This was the very first case involving a “well-known mark” in Vietnam.

Legal Framework

At the time of the McDonald’s case, the term “well-known mark” was not officially defined in any Vietnamese legal document. There existed only Decree 197-HDBT, dated December 14, 1982, of the Council of Ministers on Regulation of Trademarks, which provided: “signs that are identical or similar to marks that are previously registered in Vietnam or protected under international treaties to which Vietnam is a member for the same goods are not accepted as trademarks.”

Later, “well-known mark” was indirectly mentioned in Article 6.1e of Decree 63/CP, dated October 24, 1996, stating that, as one of the criteria for protection, a sign shall not be “identical or confusingly similar to others’ well-known trademarks (in accordance with Article 6 bis Paris Convention) or to others’ trademarks that are widely used and recognized.” Subsequently, Decree 06/2001/ND-CP, dated February 1, 2001, defined a well-known mark as “a mark that is used continuously for goods/services of good reputation, leading to the mark becoming widely known.”

Since the McDonald’s case, the legal framework for well-known marks has evolved from a Decree (a legal normative document issued by the Government) into the Intellectual Property Law issued in 2005 and amended in 2009. Under the prevailing IP Law, a well-known mark is defined in Article 4 as “a mark widely known by consumers throughout the Vietnamese territory,” with further criteria provided in Article 75.

Practical Obstacles

Despite the evolution of the legal framework, the number of marks recognized as well-known in Vietnam has not increased significantly (based on the estimates of some IP agents through their practice, as no official statistics are kept). Several factors may have contributed to this lack of growth.

First, the NOIP seems to be becoming stricter in recognizing well-known marks. Some marks that are well-known, even famous, worldwide are not recognized as well known by the NOIP, due to the lack of intensive and long-term use in Vietnam. In light of Item 2 of Article 75, the NOIP now requires intensive evidence showing the use of a mark within the territory of Vietnam for the purpose of recognizing a well-known mark. “Spill-over” effect, together with use of the mark in foreign and neighboring countries, is insufficient to prove the well-known status of the mark in Vietnam. The NOIP also imposes a higher requirement of formality on the evidence, such as requiring that the evidence be an original or certified copy and properly dated.

Second, as defined in Article 4, a mark is considered to be well known if it is known by consumers throughout the Vietnamese territory. By this definition, it seems that Vietnam requires that a well-known mark should be known by the public at large, not only by a pool of relevant and potential consumers.

Recently, some worldwide well-known marks have only been recognized by the NOIP as widely used, or as well known in Vietnam for certain goods and services, but not well known by the public at large. Obviously, no mark (not even the most well-known mark) will be used for all kinds of goods or services, especially marks for niche goods or professional services such as industrial machinery or financial services.

The practice that a mark may be recognized as well known for certain goods or services but not for others carries a potentially significant risk that such a mark may not be protected against the use of identical or confusingly similar marks for different goods or services. This runs contrary to the international practice, in which the scope of protection of a well-known mark often extends beyond the exact goods or services for which the well-known mark is used, and it is also inconsistent with Article 74.2(i) of Vietnam’s IP Law, which prevents the registration of a sign that is identical or confusingly similar to a well-known mark even for dissimilar goods or services, as follows: “if the use of such mark may affect the distinctiveness of the well-known mark or the mark registration is aimed at taking advantage of the reputation of the well-known mark.”

Along with the overly strict review process, inefficiencies in the system could be discouraging trademark owners from even attempting to get their well-known marks recognized in Vietnam. For example, the IP Law requires that a List of Well-Known Marks should be kept and maintained by the NOIP. In practice, however, there has never been such a list. Thus, the owner of a well-known mark must prove that its mark is well known in Vietnam over and over again in every single case. As the process of recognizing a well-known mark requires intensive evidence, it takes a significant amount of time and effort for the trademark owner to collect the evidence (which must be updated from time to time) and for the NOIP to study and assess the evidence for every single case.

Seeking Consistency

While it is up to Vietnam to decide how high the standards should be for determining well-known marks, the NOIP should be consistent in its rulings and adhere to the relevant international practices. As a first step, more transparency is required. Specifically, the NOIP and other competent authorities should publish their decisions on recognizing (and not recognizing) well-known marks. This may help to increase consistency in their rulings and build public awareness of well-known marks.

Download Full Article
Related Professionals

Practices

Intellectual Property

Location

RELATED INSIGHTS​ 

August 28, 2026
When considering a franchise, many people first think of a restaurant, retail chain, or service outlet. From a legal perspective, however, the foundation of every franchise lies in the right to use a brand, which is typically granted through a trademark license. Trademarks are often the most valuable assets in a franchise system. Through a trademark license, a franchisor authorizes a franchisee to use its trademarks, logos, and branding while maintaining control over how the brand is presented to customers. The Role of Trademarks in Franchise Businesses Under the Trademark Law 2019, a mark is defined as a sign that is capable of distinguishing the goods or services of one undertaking from those of others in the course of trade. This distinguishing function is particularly important in a franchise arrangement, where the franchisee’s use of the franchisor’s trademark allows consumers to recognize the source, quality, and reputation of the business. In this way, trademarks help preserve brand identity, strengthen market recognition, and protect the commercial value of the franchise system. Legal Foundation for Franchise Brand Protection Myanmar presently does not have a specific statutory framework governing franchise arrangements. As a result, franchise agreements are generally regulated under the broader applicable legal framework, including the Contract Act 1872, the Trademark Law 2019, the Competition Law 2015, the Consumer Protection Law 2019, and the relevant implementing rules and regulations. The licensing of trademarks within a franchise arrangement is particularly governed by the Trademark Law 2019. Franchisors should ensure that the trademarks intended to be licensed to franchisees in Myanmar are registered under the Trademark Law 2019 and that the relevant trademark license is properly recorded with the Intellectual Property Department (IPD). Trademark License Recordal Under the Trademark Law 2019, the owner of a registered trademark may grant a license to another
Read More
August 27, 2026
It is generally understood that patents are granted for new designs that have not been widely known or used in Thailand and not been disclosed anywhere prior to the date of the patent application. It is trite law that design law protects the distinctive appearance or products. Under Section 3 of the Thai Patent Act B.E. 2522, as amended by the Patent Act (No. 2) B.E. 2535 and the Patent Act (No. 3) B.E. 2542, a design is defined as “any form or composition of lines or colors that gives a product a special appearance and can serve as a pattern for an industrial or handicraft product.” This raises an important question. Can a patent be issued for a product design that contains text, numerals, trademarks, or symbols that do not fall under the definition of a design? This issue commonly arises when attempting to register packaging, labels, and graphical user interfaces (GUIs). Until a few years ago, applicants could file design applications with the Thai Patent Office for designs that contained such elements, provided that an appropriate disclaimer was included. This practice was generally accepted by Thai design examiners at that time, but the Patent Office has since implemented a change in its practice that could have a significant impact on applicants for design patents. Where design representations are submitted as line drawings or computer-aided design (CAD) drawings, the examiner may now issue an office action requiring their removal. This practice, however, appears to be applied inconsistently, as some examiners still exercise their own discretion in determining whether drawings containing these elements are acceptable. Below are examples of a GUI design, a CAD drawing design, and a photographic design representation that illustrates issues relating to the presence of nonallowable elements. GUI design For this GUI design, the submitted
Read More
August 27, 2026
Franchising in Thailand has matured into a sizeable commercial sector, but the rules governing franchisor–franchisee relationships remain scattered across general legislation rather than consolidated in a dedicated franchise statute. In this environment, the decisions of the Trade Competition Commission of Thailand (TCCT) have emerged as valuable practical guidance. Thailand follows a civil-law system in which judicial and administrative decisions do not create binding precedent; however, past rulings are nonetheless influential. This article examines the most instructive recent TCCT decisions and distills the practical compliance considerations for franchisors and franchisees operating in Thailand. Postcontract Changes: Justified or Unfair? A recurring issue is whether a franchisor may alter the terms of engagement after contract execution. The TCCT has established that midterm modifications are not inherently unfair; the determinative factors are whether there was a reasonable business justification, adequate advance notice, and a transparent process. In a 2023 coffee franchise matter, for instance, the TCCT declined to find a violation where a franchisor increased raw material prices, noting the increase had been communicated in advance and supported by demonstrable cost pressures. A bubble tea franchise matter reinforces this principle. The TCCT found that postcontract mandatory purchases of branded syrup and flavorings were justified, as the agreement reserved the franchisor’s right to modify product requirements, the materials were sold at or below market prices, and the branded ingredients possessed distinctive qualities deemed essential to franchise quality. The complaint was dismissed, with the additional requirements characterized as a legitimate measure to preserve brand consistency. Considered together, these decisions indicate that post‑contract modifications will be evaluated against three criteria: (1) whether there is a legitimate business rationale, (2) whether adequate advance notice was provided, and (3) whether franchisees were treated equitably throughout the transition. Discriminatory Treatment: Are Renewals and Information Equal? A 2024 automotive dealership
Read More
August 20, 2026
As part of its membership in Lex Mundi, Tilleke & Gibbins has released the latest edition of its Guide to Doing Business in Thailand, providing an overview of the legal, regulatory, and commercial considerations for companies establishing or expanding operations in Thailand. The 2026 edition offers practical insight into the country’s business environment, investment framework, and operational requirements. The guide covers a wide range of topics relevant to foreign and domestic investors, including: Investment incentives and promotion schemes Financial facilities and banking regulations Exchange controls and money transfers Import and export regulations Business structures and incorporation options Requirements for establishing a business Operational and compliance considerations Business cessation and insolvency procedures Employment and labor laws Taxation Immigration and visa requirements Prepared by Tilleke & Gibbins lawyers across multiple practice areas, the publication outlines key aspects of doing business in Thailand, including foreign investment restrictions, regulatory compliance obligations, corporate structures, employment requirements, and recent legal and economic developments affecting investors. The publication forms part of Lex Mundi’s Country Guides series, a global collection of jurisdiction-specific reference materials prepared by member firms around the world. Together, these guides help companies evaluate opportunities, compare regulatory environments, and plan international business activities across multiple markets. The full Guide to Doing Business in Thailand 2026 is available through the button below.
Read More