PROTECTION OF EXCLUSIVE LOGO

The protection of an exclusive logo is a measure to protect the identity of the business against infringements and unauthorized use by competitors. A logo that has not been protected exclusively would easily be taken advantage of to make counterfeit goods, which would affect the reputation of the enterprise because the logo is designed and built uniquely and exclusively by the enterprise itself for its products/services.

So, how to protect this intellectual and creative product? The ideal solution is to protect the logo according to the law. Enterprises that have protected their exclusive logos could avoid arising disputes and unnecessary troubles.

Let's find out useful information about exclusive logo protection through the following NPLaw's sharing

What is exclusive logo protection?

The quickest way for an enterprise to convey information about its products/services is through a logo. A logo is not simply a beautiful and unique image, but also the personal story of the enterprise that you want to convey to customers and partners.

For example, the logo of Apple is an apple with a bite, where the word "bite" is pronounced similar to "byte" (a technical term) and the apple is inspired by the famous scientist Newton, who discovered gravity. Or the logo with the arrow mark, which is associated with a smile, showing the cheerfulness of Amazon employees to customers. Moreover, Jeff Bezos also brings another message to customers, which is diverse products from A to Z, and dedicated service from A to Z through the image of an arrow connected from A to Z.

Protecting an exclusive logo is protecting the company's unique features and meaningful stories with the legal tools of competent state agencies. The owner has the right to prevent infringement and unauthorized use by other individuals and organizations. According to current legal regulations, logo owners have the right to register for logo protection at the Copyright Office - Ministry of Culture, Sports and Tourism (register for copyright protection) and at the National Office of Intellectual Property - Ministry of Science and Technology (registered for trademark protection).

Methods of registration for logo protection

As analyzed above, Vietnam's law on logo protection has two methods: registration for copyright protection (for aesthetic work) and registration for the protection of trademarks.

So, how will the logo protection registration procedures for each method be conducted? How much does it cost to register for logo protection for each method?

Logo protection according to copyright registration regulations

Procedures for copyright protection registration

Step 1: Prepare documents for copyright registration.

Step 2: The dossier can be sent by post or directly to the Copyright Office or the representative offices of the Copyright Office in Ho Chi Minh City, Da Nang.

Step 3: Within 15 (fifteen) working days from the date of receipt of the dossier, the Copyright Office would consider, process, and grant a copyright registration certificate if the dossier was valid and met all the criteria.

In case the application is not granted a copyright registration certificate, a written refusal from the Copyright Office will clearly state the reasons to the applicant.

Step 4: Grant a copyright registration certificate to the owner of the protected logo.

Fees for registration of copyright protection at the Copyright Office:

• The fee for copyright registration would depend on the type of work that the enterprise/individual wants to register.
• Other fees depend on the specific case.

Logo protection according to trademark registration regulations

Step 1: Identify the objects and contents to be protected.

Step 2: Look up and assess the registrability for the protection of the trademark.

Step 3: Submit a trademark registration application at the National Office of Intellectual Property.

• Formality assessment (1-2 months);
• Publication of application in Cong bao (2 months);
• Content assessment (9-12 months);
• Decision to grant/refuse to grant a protection title (1-2 months);
• Granting and publication of certificate of trademark registration (02 - 03 months).

In fact, the time for trademark registration may be shorter or longer, depending on the examination of the registration dossier of the National Office of Intellectual Property at that time.

Step 4: The owner will receive a Certificate of Trademark Registration granted by the National Office of Intellectual Property.

Fees for registration of trademark protection at the National Office of Intellectual Property:

• Application for protection of industrial property rights fee;
• Application publication fee;
• Trademark lookup fee for the content appraisal;
• Assessment of trademark content fee;
• Industrial property information disclosure fee;
• Registration of industrial property information fee.

Exclusive logo protection rights

The protection of exclusive logos is extended to all logo owners with both methods of logo protection as prescribed in the current Intellectual Property Law, specifically as follows:

Pursuant to Article 13 of the Intellectual Property Law, authors and copyright holders with works that are protected by copyright include:

• Vietnamese organizations and individuals;
• Foreign organizations and individuals with works published for the first time in Vietnam and not yet published in any other country, or with works also published in Vietnam within thirty days after publication for the first time in another country;
• Foreign organizations and individuals with works that are protected in Vietnam pursuant to an international treaty on the copyright of which the Socialist Republic of Vietnam is a member.

Pursuant to Article 87 of the Intellectual Property Law, organizations and individuals that have the right to register for the protection of marks include:

• Organizations and individuals shall have the right to register marks to be used for goods such organizations or individuals produce or for services such organizations or individuals provide.
• Any organization or an individual lawfully engaged in commercial activities shall have the right to register a mark for a product which the latter puts onto the market but which was manufactured by others, provided that the manufacturer does not use such mark for a product and does not object to such registration.
• Lawfully established collective organizations shall have the right to register collective marks to be used by the members of the collective organization pursuant to the regulations of the collective organization on the use of collective marks.
• Organizations with the function of controlling and certifying quality, properties, origin, or other relevant criteria of goods or services shall have the right to register certification marks, provided that such organizations are not engaged in the production or trading of such goods or services; for place names and other signs indicating the geographical origin of local specialties of Vietnam, the registration must be permitted by a competent state agency.
• Two or more organizations or individuals shall have the right to jointly register a mark to become its co-owners on the specific conditions in Clause 5, Article 87 of the Intellectual Property Law.

In which case is the logo protected?

As analyzed above, Vietnamese law provides for logo protection in two places: the Copyright Office - Ministry of Culture, Sports and Tourism (registration for copyright protection) and the National Office of Intellectual Property (registration for protection of trademark). Therefore, depending on whether the owner of the logo chooses a State agency to protect the logo, the logo will be protected in the following specific cases and conditions:

In case of logo protection registration at the Copyright Office - Ministry of Culture, Sports and Tourism:

Logos are one of the types of works that are protected by copyright according to Article 14(1)(b) of the Intellectual Property Law. Thus, logos are only protected in case the author directly creates with his intellectual labor, without copying from others’ works.

In the case of logo protection registration at the National Office of Intellectual Property:

Logos that want to be granted a certificate of protection at the National Office of Intellectual Property, would have to register for protection according to the regulations on trademark protection. In Vietnam's Intellectual Property Law, there is no definition of “logo”, but “logo” has the characteristics of a typical legal sign of a trademark as prescribed in Article 4(16) of the Intellectual Property Law: “A trademark means any sign used to distinguish goods or services of different organizations or individuals.”

Thus, according to Article 72 of the Intellectual Property Law, a protected logo must be in the following cases:

• It is a visible sign in the form of letters, words, drawings, or images including holograms, or a combination thereof, represented in one or more colors.
• It is capable of distinguishing the goods or services of the mark owner from those of other subjects.

In case of refusal of logo protection

Refusal of logo protection at the Copyright Office - Ministry of Culture, Sports and Tourism:

Pursuant to Article 52 of the Intellectual Property Law, The State administrative body for copyright must notify the applicant in writing the reason for refusal to grant a certificate within 15 working days from the date of receipt of the application. Rejected logos usually fall under the following circumstances:

• The application dossier copyright certificate registration is invalid or inconsistent with regulations;
• The work plead for protection does not belong to the types of works protected by copyright;
• The work includes infringing elements of copyright (Article 7 of Decree No. 105/2006/ND-CP);
• The work is contrary to social ethics, fine customs, public security and order, which harms national defense and security.

Refusal of logo protection at the Intellectual Property Department - Ministry of Science and Technology:

Pursuant to Article 73 of the Intellectual Property Law, the logo's sign will not be protected in the following cases:

• Signs identical with or confusingly similar to national flags or national emblems.
• Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names, or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio-politico-professional organizations, social organizations, or socio-professional organizations, or with international organizations, unless permitted by such bodies or organizations.
• Signs identical with or confusingly similar to real names, aliases, pseudonyms, or images of leaders, national heroes, or famous personalities of Vietnam, or foreign countries.
• Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations require that their signs must not be used unless such seals are registered as certification marks by such organizations.
• Signs which cause misunderstanding, or confusion, or which deceive consumers as to the origin, properties, use, quality, value, or other characteristics of goods, or services.

A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:

• Simple shapes and geometric figures, numerals, letters, or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
• Conventional signs, or symbols, pictures, or common names in any language of goods, or services that have been widely and regularly used and known to many people;
• Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value, or other characteristics descriptive of goods, or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
• Signs describing the legal status and business sector of business entities;
• Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark, or certification mark as stipulated in this Law;
• Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods, or services based on applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
• Signs identical with or confusingly similar to another person's mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
• Signs identical with or confusingly similar to another person's mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark;
• Signs identical with or confusingly similar to another person's mark are recognized as a well-known mark that 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;

Register for the protection of logos as trademarks or copyrights

Logo protection is extended by law to give logo owners the option to protect their brainchild against infringement. So, between the two methods of exclusive logo protection, namely copyright protection and trademark protection, which method will be more optimal, avoiding all risks of infringement?

NPLaw would like to consult specifically and in detail through the following comparison so that customers could have a clear view of the protection of exclusive logos per the law:

Copyright is a type of right that arises automatically when a creative idea is transformed into some objective form that others can perceive. Since the work is in fixed form, the copyright holder has been legally protected. Thus, intellectual property law does not require the right holder to register to be protected. However, copyright registration is also essential. This is the procedure for attribution of copyright. When there is a copyright dispute, the protection title will play an important role in proving copyright.

Through the above analysis, the protection of logos in the method of trademark registration and copyright protection registration would be optimal, reliable, and legal. Enterprises that want to prevent infringements should choose logo protection in both methods to ensure avoiding all risks arising in the future.

Each enterprise and each logo owner has different needs to protect their logo. Therefore, to avoid wasting time, effort, and expense when registering for exclusive logo protection, please contact our team of lawyers and legal experts specializing in the field of intellectual property from NPLaw. NPLaw's lawyers will advise customers to find a way to protect the company's logo in a comprehensive, accurate, and appropriate way.

If you need advice or more information, please send it to email: legal@nplaw.vn or contact directly at: 0931 449968. NPLaw will contact you as soon as required.

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