When does trademark and copyright conflict with each other?
Samsung, Apple and Google are three globally-famed brand name under three world famous technology corporations, each of which is worth between several tens and hundreds of billions of US dollars1. These brands are currently protected in many countries including Vietnam in the form of trademark - one of the most popular intellectual property rights, which have function to help consumers identify and avoid confusion about the commercial origin when they choose to buy and use products and services bearing them2.
Copyright is usually recognized by the symbol C in the circle ©, which is the exclusive right to make reproduction and control 123 types of literary artistic and scientific works, ie. writing works, cinematographic works, software, applied art works, etc. are protected by the copyright law for a certain period (usually 50 years after the author's death)4.
At first glance, it seems that trademark and copyright cannot conflict with each other. However, both theoretically and practically, it is said that a conflict area between them may exist, namely when a brand, logo, slogan, tagline is created by a painter or an artist business that is, they are embodied by lines, colors, shapes, layouts that express a certain business idea or aesthetic idea, and these expressions are associated with a useful product such as a commodity, souvenirs, fashion5.
The form of expression of the brand identity design or logo mentioned above is generally considered an applied art work that can be protected as copyright and may be protected in the form of trademark as well. As such, the copyright holder of an applied art work may be in conflict with with the trademark owner, though under the general principle same subject matter may be protected by both of copyright and trademark legislations. At that time, there may simultaneously occur two phenomenon of conflict, one between the two holders and the other one between copyright law and trademark law.
When is a trademark defeated by copyright and when copyrighted work cannot overwhelm a trademark under the law and practice in Vietnam?
The interference section amongst trademark and other IP rights, namely trade name, geographical indication and industrial design is anticipated and introduced in the current IP Law but absent the principle for addressing a possible conflict between trademark and copyright.
At the level of subordinate legislation, the rule for resolving conflicts with prior rights found in Article 17 of Decree 103/2006/ND-CP as revised stating that a prior right must be respected, whereby industrial property rights may be invalidated or banned from use if it conflicts with intellectual property rights of other organizations and individuals that had been established earlier.
Particularly for the conflict between trademarks and copyright, the National Office of Intellectual Property of Vietnam ("NOIP") may, in its ex-officio substantive examination, refuse to protect, or may also reject protection of, an applied-for trademark on the ground of third party's opposition6 as stipulated in Circular No. 01/2007/TT-BKHCN as amended.
Let's take 2 examples as depicted below, trademarks applied for are merely figurative elements of Super Man (one in red and one in blue all riding a motorbike) filed under app. nos. 4-2012-26693 and 4 -2012-26675 designating confectionery in class 30. They were objected by Marvel Comics Inc due to copyright infringement claim and eventually the NOIP sided with Marvel Comics Inc concluding that both of the applied-for marks are all rejected on the grounds that these trademarks are both confusingly similar to Section 74(2)(i) based well-known trademark7 and devoid of distinctive characters in accordance with Point 394)(g) Circular 01/2007/TT-BKHCN as amended8.
|Applied-for Trademarks||Image of Spider Man by Marvel Comics Inc||Disposition by the NOIP|
App. No 4-2012-26693 filed on 27/11/2012
Class 30: Confectionery
|Both trademarks were opposed by Marvel Comics Inc. and eventually were rejected by the NOIP due to lack of distinctive characters in violation of Article 74(2)(i) of the IP Law and Point 39(4)(g) of Circular 01/2007 as amended|
App. No 4-2012-26675 filed on 27/11/2012
Class 30: Confectionery
We recall that Marvel Comics Inc, the copyright owner of the X-Men blockbuster series, attempted, in both administrative complaints and litigation of administrative cases, to demand cancellation of validity of the registered mark X-Men under reg. no. 63481 in the name of International Household Goods Joint Stock Company (ICP) by using multiple different legal bases including the argument that ICP took advantage of the reputation of Marvel's trademark and X-MEN characters in advertising and marketing to confuse consumers in violation of Article 6.2.h, Decree 63/CP. However, the administrative court of Hanoi People's Court on March 29, 2013 issued the first instance administrative judgment no. 03/2013/HCST deciding to dimiss the lawsuit and declaring the registered trademark X-Men valid9.
|Registered trademark by ICP||X-Men10 by Marvel Comics Inc.|
Class 03: Cosmetics, shampoo
 According to the ranking of the 100 most valuable global brands in 2018 published by INTERBRAND, Apple, Google and Samsung were ranked at nos. 1, 2 & 6 worth 214, 155 and 59 billion USD respectively. See more: https://www.interbrand.com/best-brands/best-global-brands/2018/ranking/
 For more information about the trademark and its criteria for protection, please see our previous article "2 legal standards and 6 factors for determining likelihood of confusion under the laws of Vietnam" at the link: " http://bross.vn/newsletter/ip-news-update/2-LEGAL-STANDARDS-AND-6-FACTORS-FOR--DETERMINING-LIKELIHOOD-OF-CONFUSION-UNDER-THE-LAWS-OF-VIET-NAM "
 Article 14 of the IP Law. Types of works which are protected by copyright
1. Literary, artistic and scientific works which are protected by copyright comprise:
(a) Literary works, scientific works, textbooks, teaching courses and other works expressed in
written language or other characters;
(b) Lectures, addresses and other speeches;
(c) Press works;
(d) Musical works;
(dd) Stage works;
(e) Cinematographic works and works created by a process analogous to cinematography
(hereinafter all referred to as cinematographic works);
(g) Plastic art works and applied art works;
(h) Photographic works;
(i) Architectural works;
(k) Sketches, plans, maps and drawings related to topography or scientific works;
(l) Folklore and folk art works;
(m) Computer programs and data collections.
 You may refer to our article "What exclusive rights is the holder of copyright entitled to literary artistic and scientific works under the Vietnamese laws?" at the link: http://bross.vn/newsletter/ip-news-update/What-exclusive-rights-is-the-holder-of-copyright-entitled-to--literary-artistic-and-scientific-works-under-the-Vietnamese-laws
 Article 13 of Decree 22/2018/ND-CP. Plastic work, applied art work
Works of applied art specified at Point g, Clause 1, Article 14 of the Intellectual Property Law mean works presented by lines, colors, shapes, layouts with useful features, which may be associated with a useful object, crafted or industrial, such as: Graphic design (form of logo, product identification and packaging system), fashion design, product styling, Interior design, decoration
 To understand the trademark opposition procedure in Vietnam, you can see"Procedures, deadline and legal grounds for the opposition against a trademark (brand name) applied for registration in Vietnam" at the link: http://bross.vn/newsletter/ip-news-update/Procedures-deadline-and-legal-grounds-for-the-opposition--against-a-trademark-brand-name-applied-for-registration-in-Vietnam; or you can have a look at "7 Most Essential Features of the Law and Practices Regarding Trademark Opposition Procedure in Vietnam" at the link: http://bross.vn/newsletter/ip-news-update/7-Most-Essential-Features-of-the-Law-and-Practices--Regarding-Trademark-Opposition-Procedure-in-Vietnam-1635
 Article 74 of the IP Law. Distinctiveness of marks
2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
(i) Signs identical with or confusingly similar to another person's mark recognized as a well-known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well-known mark or the mark registration was aimed at taking advantage of the reputation of the well-known mark
 Point 39.4 Circular 01/2007 as amended.
Assessment of distinctiveness of the mark (signs being drawings and images) as stipulated in article 74.2 of the IP Law:
A sign shall be deemed to be indistinctive in one of the following cases:
(g) The image on the sign is identical with or similar to, thereby causing misunderstanding, the image of a national hero or celebrity of Vietnam or of a foreign country
 Like footnote 9
 Marvel Comics Inc is also the owner of trademark X-MEN that is currently protected in Vietnam under registration certificate no. 11455 covering classes 9, 16, 25 & 28.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.