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Comparison of Vietnamese and Foreign Laws on Criteria for Evaluating Famous Trademarks.
Criteria for Evaluating Famous Trademarks Worldwide
Criteria for Evaluating Famous Trademarks in the United States
The Lanham Act, enacted by the U.S. Congress in 1946, establishes a nationwide trademark registration system and protects the owners of federally registered trademarks from the use of similar trademarks if such use is likely to cause consumer confusion or diminish the value of a famous trademark.
Under the Lanham Act, a trademark is considered famous if it is widely recognized by the general consuming public of the United States as a designation of the source of the goods or services of the trademark owner. When determining whether a trademark has the necessary degree of recognition, the court may consider all relevant factors, including but not limited to:
- (i) The duration, extent, and geographic reach of advertising and publicity of the trademark, whether by the owner or third parties.
- (ii) The amount, volume, and geographic extent of sales of goods or services offered under the trademark.
- (iii) The extent of actual recognition of the trademark.
- (iv) Whether the trademark is registered under the Act of March 3, 1881, the Act of February 20, 1905, or on the Principal Register.
The determination of whether a trademark is famous in the U.S. is made by the courts.
Criteria for Evaluating Famous Trademarks in the European Union
According to EU regulations, particularly the Community Trade Mark (CTM) regulation, the criteria for evaluating famous trademarks include:
- Degree of Recognition and Reputation: The recognition and reputation of the trademark among a significant part of the public concerned with the products or services it represents.
- Geographical Scope: The geographical area in which the trademark is widely recognized and used within the EU.
- Duration of Use: The duration and continuity of the trademark’s use within the EU.
- Sales and Market Share: The sales revenue and market share of the trademark in EU member states.
- Advertising and Marketing: The extent and scope of the trademark’s advertising and marketing within the EU.
Criteria for Evaluating Famous Trademarks in Japan
In Japan, the criteria for evaluating famous trademarks under the Japanese Trademark Law include:
- Public Recognition: The number of consumers who know the trademark through purchasing, using products or services, or through advertising.
- Scope of Trademark Use: The territory where the trademark has been used and recognized.
- Duration and Continuity of Use: The period the trademark has been continuously used in commerce.
- Extent of Promotion: The extent and scope of the trademark’s promotion.
- Sales Revenue: The revenue generated from the sale of products or services bearing the trademark.
Comparison of Vietnamese and Foreign Laws on Criteria for Evaluating Famous Trademarks
While there are minor differences in the approach and weighting of the criteria, the legal systems of Vietnam, the United States, the EU, and Japan share many common points in evaluating famous trademarks. Criteria such as public recognition, geographical scope, sales revenue, duration of use, reputation, and economic value are valued and play a decisive role in recognizing a trademark as famous.
Public Recognition
The number of consumers who recognize the trademark is a critical factor acknowledged in Vietnam, the U.S., the EU, and Japan. This is a fundamental criterion for evaluating the fame of a trademark.
Geographical Scope
The geographical scope where the goods or services bearing the trademark have been circulated is a widely used criterion in the legal systems of Vietnam, the U.S., the EU, and Japan. This criterion measures the popularity of the trademark on a geographical scale.
Sales and Market Share
The sales revenue or volume of goods/services provided is an important factor in evaluating a famous trademark. This criterion reflects the commercial success of the trademark and is used in Vietnam, the U.S., the EU, and Japan.
Duration of Continuous Use
The duration of continuous use of the trademark is a criterion for assessing the stability and sustainability of the trademark in the market, recognized in Vietnam, the U.S., the EU, and Japan.
Reputation and Fame
The widespread reputation of the goods or services bearing the trademark is an important criterion for identifying famous trademarks. This criterion considers consumer satisfaction and evaluation of the trademark.
Scope of Protection and International Recognition
The number of countries that protect and recognize the trademark is a specific criterion for evaluating the global fame. Vietnam, the EU, and Japan consider this criterion to assess the popularity and influence of the trademark.
Economic Value
The value of transfers, licensing fees, and investment value of the trademark is a criterion for assessing the intangible assets of the trademark. This reflects the economic and financial value of the trademark in the market.
