Vietnam: The registrability of media-hype and sensational marks

Given the highly polarised state of US politics, one may find it difficult to imagine a scenario where Donald Trump and Joe Biden appear together outside of a debate stage. Surprisingly, these names were united on a Vietnamese trademark application filed during the heat of the US presidential election in 2020.

This ‘Trump-Biden’ mark was filed for food, beverages, and restaurants in Classes 29, 30 and 43 — items with no link to the two presidents. The only reason for such filing, obviously, was to gain consumers’ attention and to ride a wave of popularity, although in a rather unusual way.

Attention-seeking entrepreneurs are often inspired by celebrities and recent events when seeking new brand names and slogans. They may attempt to register their ideas as trademarks while the influence of the person or event is still strong. Others take a different but similarly sensational approach, crafting marks loaded with double entendre with the hope of sneaking past the gatekeepers.

While the idea of registering celebrity-driven or sensational marks may be beneficial for business, is it possible under Vietnam’s IP laws?

In addition to the ‘Trump-Biden’ mark mentioned above, a quick search on the public database of the IP Office of Vietnam reveals several dozen ‘Trump’-related marks, with most of them filed after Donald Trump’s inauguration in 2017. The IP Office’s decisions have shown that marks explicitly referring to the former president (such as the full-name trademark ‘Donald Trump’) will be refused protection, but more subtle indicators can survive to registration, such as ‘Dontrump’ (Reg. No. 327991), ‘Betatrump’ (Reg. No. 329952), ‘Trump Gold’ (Reg. No. 313441), ‘Trump Water’ (Reg. No. 355166), and even ‘Trump’ by itself (Reg. No. 342771).

Under Article 73.3 of the IP Law, “signs identical or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries” are ineligible for protection as marks, regardless of the goods/services applied for. This is why the ‘Donald Trump’ mark was refused, but it seems to apply only to obvious cases, such as where the full name of the famous person is exploited. If only a part of the name is used, it could still be accepted. From that view, it is likely that the ‘Trump-Biden’ mark could be considered inherently distinctive, as it includes neither the full names nor the images of the presidents.

Another interesting ‘Trump’-derived mark is found in a pending application for ‘Trumpkids Kindergarten’.

While the Trump inspiration in the faceless image is undeniable, could this mark still be considered registrable? It consists of the name and image of a famous person, but both are stylised and combined with other elements. In our opinion, the mark is likely to get through. If so, this is an example of a clever way to utilise the fame of a person, while skirting the prohibitions of Article 73.3.

On the other hand, names or signs similar to those of well-known people with decidedly negative reputations – war criminals or terrorists, for example – may be refused for being contrary to social ethics and public order as stipulated in Article 8.1 of the IP Law, regardless of how ‘creative’ the marks are. The mark ‘Billaden’ for pesticides in Class 05 was refused for being confusingly similar to the name of Osama Bin Laden. Although the applicant argued that ‘Billaden’ was fanciful and in no way related to the infamous terrorist, the IP Office held that the registration of the mark was against morality and public policy, and maintained its refusal.

Some companies, especially in youth-oriented sectors like video games or beverages, adopt ridiculous, ear/eye-catching marks in the hope of gaining more attention for their products or services. One of Vietnam’s most popular craft breweries has applied for a series of winkingly raunchy bilingual marks for beer in Class 32, including ‘Bom Vu Du Xai’ (roughly ‘breast augmentation big enough to use’) ‘Fifty-two Triple Z’; ‘Coi Do Ra’ (‘take off your clothes’) ‘Let’s Get Naked’; and ‘An Banh Tra Tien’ (slang for ‘buy/use prostitute’) ‘No Cookie No Nookie’. While such names are commonplace in the freewheeling craft beer industry, it remains to be seen if they are registrable in Vietnam.

Although the marks are pending without any issued opinion from the IP Office, a similar case was refused for protection. The stylised mark ‘Nude’ for trading services of food, clothing, household appliances, etc., in Class 35 was refused for again being contrary to social ethics and public order.

The standards for judging this are quite subjective and dependent on the particular examiner’s viewpoint. For example, we found the mark ‘Fascist’ was successfully registered for insecticides in Class 05, while ‘Dap Da’ (literally ‘beat the rock’ but slang for ‘use drugs’) was registered for restaurant services in Class 43. Based on this precedent, it is highly likely that the pending ‘Let’s Get Naked’ mark will be refused but the others will survive to registration, due to their indirect wording.

We respect our clients’ choices, but we maintain certain standards. While some phrases, symbols, and other sensitive components may evoke powerful emotions that increase sales of the goods they designate, limits must also be set. Bearing in mind that Vietnam is an Asian country with high standards regarding social ethics, foreign companies should be mindful in choosing trademarks to be used in the country. The purpose is not only to have their marks registered, but also to have them accepted by mass Vietnamese consumers.

In addition, media-hype trademarks often have short shelf-lives, while the registration procedure in Vietnam is lengthy, normally 20-24 months. If and when the trademark registrations are granted, it may already be too late to draw the public’s attention. In the end, investing in thoughtful, sustainable trademarks will always be the right choice.

 

Linh Thi Mai Nguyen

Partner, Tilleke & Gibbins

E: mailinh.n@tilleke.com

 

Chi Lan Dang

Associate, Tilleke & Gibbins

E: chi.d@tilleke.com