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​ 

July 27, 2026
Vietnam’s new E-Commerce Law, which took effect on 1 July 2026 along with its implementing Decree No. 248/2026/ND-CP (Decree 248), marks a significant development in the country’s approach to online intellectual property (IP) enforcement, reflecting a clear shift from a reactive model of intermediary liability to one that expects platforms to play a more active role in preventing infringement. From notice-and-takedown to platform responsibility The most significant change introduced by the E-Commerce Law is the transformation of the legal role of e-commerce platforms. The existing safe harbor provisions under the IP Law and the copyright notice-and-takedown regime established by Decree 17/2023/ND-CP (Decree 17) largely required intermediaries to act only after receiving notice of infringement. Once infringing content had been removed, the platform’s legal obligation was generally considered fulfilled. The new legislation adopts a fundamentally different approach. Article 17 of the E-Commerce Law requires intermediary platforms to screen information relating to goods and services before publication in order to prevent listings involving counterfeit or IP-infringing goods, and goods of unknown origin. Rather than relying exclusively on complaints from rights holders, platforms are now expected to implement preventive measures before infringing listings become publicly available. Decree 248 further requires platforms to update keyword filters based on recommendations issued by competent authorities. These filtering mechanisms are intended to prevent prohibited listings from appearing on the platform and represent a further move away from a purely complaint-driven enforcement model. The legislation also introduces Vietnam’s first statutory stay-down obligation. Under the E-Commerce Law and Decree 248, major digital platforms must maintain automated systems capable of reviewing, warning against, and removing unlawful listings while also implementing measures to prevent repeat violations, defined under Decree 248 as conduct that has previously been identified and handled by the platform, but continues to recur. This obligation addresses one
Read More
July 27, 2026
Tilleke & Gibbins’ intellectual property specialists have authored the Thailand chapter of Trade Secrets 2026 from Chambers and Partners. This global guide examines the legal frameworks governing trade secret protection, enforcement, and litigation across jurisdictions worldwide. The Thailand chapter provides a comprehensive overview of the country’s legal regime for protecting confidential business information, covering the legal framework, trade secret misappropriation, litigation procedures, remedies, and dispute resolution. Some topics covered include: Protectable trade secrets Reasonable measures to maintain secrecy Employee confidentiality Trade secret licensing Civil and criminal remedies Litigation procedures and injunctions Damages and other remedies Mediation and arbitration The guide also examines practical issues relating to safeguarding trade secrets, defending against allegations of misappropriation, and managing trade secret disputes in Thailand. Chambers and Partners’ Global Practice Guides provide in-house counsel with authoritative commentary on practical legal issues affecting business, enabling readers to compare legislation and procedures across multiple jurisdictions. The Thailand chapter of Trade Secrets 2026 is available as a PDF through the button below. The full guide can be accessed for free on the Chambers and Partners website.
Read More
July 27, 2026
In March 2025, Thailand’s Central Intellectual Property and International Trade Court (IP&IT Court) issued a landmark judgment in favor of Luckin Coffee, China’s leading retail coffee chain. The judgment marked a significant turnaround following earlier trademark litigation involving Luckin Coffee from 2021 to 2023 that had generated widespread public attention and raised questions about the protection available to legitimate foreign brand owners in Thailand. In a significant subsequent development, Thailand’s Court of Appeal for Specialized Cases has now affirmed the IP&IT Court’s judgment in its entirety. The appellate decision brings clarity to one of Thailand’s most closely watched trademark disputes. Significantly, this is the first case in Thailand to formally recognize the trademark squatting principle. The Court of Appeal confirmed that Luckin Coffee has a better right to the disputed mark and ordered cancellation of the defendants’ trademark registration—a key application of the “better right” doctrine. The court also upheld the substantial damages awarded at first instance, providing important guidance on assessing harm from systematic trademark squatting. Award-Winning Judgment Affirmed in Its Entirety The significance of the first-instance judgment extended beyond the outcome for Luckin Coffee. The IP&IT Court judgment was subsequently recognized in the IP&IT Court’s Distinguished Judgment Awards in 2025, reflecting the complexity, novelty, and legal significance of the issues considered in the case. The defendants nevertheless appealed the judgment, challenging several key aspects of the IP&IT Court’s decision. Luckin Coffee continued to entrust Tilleke & Gibbins as their sole attorney to pursue the case at the appellate level. After considering the defendants’ appeal and Luckin Coffee’s submissions in response, the Court of Appeal affirmed the first-instance judgment in its entirety. The judgment was announced on July 8, 2026. Better Right to the Marks The Court of Appeal confirmed Luckin Coffee’s superior rights. The orders include cancellation
Read More
July 24, 2026
As food innovation continues to accelerate, manufacturers are increasingly introducing ingredients derived from new sources, produced using novel technologies, or lacking a significant history of human consumption. While these innovations create new opportunities for the food industry, they also raise important questions regarding consumer safety. For this reason, many jurisdictions, including Thailand, the European Union, Australia and New Zealand, Canada, and Singapore, require a premarket safety assessment for novel food ingredients before they can be placed on the market. The objective of this assessment is to ensure that each ingredient is safe for its intended use and level of consumption, does not present toxicological, allergenic, microbiological, or nutritional concerns, and will not mislead consumers. Scientific authorities typically evaluate the ingredient’s identity, manufacturing process, composition, specifications, anticipated dietary exposure, toxicological information, nutritional impact, and history of use before determining whether it can be marketed. Against this background, the Thai Food and Drug Administration (FDA) recently took an important step toward improving regulatory transparency by publishing, for the first time, a consolidated public list of substances that have successfully completed the Thai FDA’s safety assessment process, including substances determined to be novel foods and those determined not to fall within the novel food category. The list identifies the approved substances, the corresponding manufacturers or importers, approval dates, and the approved conditions of use. Although the publication does not change the existing legal framework governing novel food approvals, it provides businesses with greater visibility into the Thai FDA’s regulatory precedents and the types of substances that have previously been accepted through the safety assessment process. The full announcement is available on the Thai FDA’s website. As the list is now publicly available, it also provides useful insight into the types of substances that have successfully completed the Thai FDA’s safety assessment process.
Read More