Louis Vuitton & Louis Vuitton Dak, which one is a fashion label?
Are the graphics copyrightable if printed on a commodity or not?
It is easy to recognize a particular brand by its color, name, logo, design, etc. Somehow, confusion about brand awareness still arises among hundreds of brands due to using a third party's intellectual property without the appropriate permission from the rights owner. It is quite likely that some incidents are unintentional, while others are deliberate attempts to profit from illicit and commercial activity by using the organization's good name and reputation, which may lead to serious business consequences.
Intellectual property infringement frequently occurs in the business world. Whether on purpose or not, you should be aware of artificial intellectual property rights to protect your own brand.
Types of intellectual property
Intellectual property is defined as “creation of mind”, this asset legally owned or protected by an individual or an organization. Intellectual property can’t be held or doesn’t necessarily have a physical presence. Although intangible and lacking in physical presence, intellectual property can be far more valuable than a company’s physical assets. It often represents a competitive advantage and is fiercely protected by the companies that possess it.
There are six types of Intellectual Property in Vietnam:
Copyright
Copyright is a legal term used to describe the rights of authors and creators, in which they can legally copy, use, or disseminate their material. A copyright also states that the original creators can grant others permission to use the work through a licensing agreement.
Copyright covers a wide range of works, ranging from books, music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps and technical drawings.
Patent
Patent is described as the designer's exclusive rights to their invention, which is a fashion piece or process that provides, in general, a new way of doing something or a new technical solution to a problem. Unlike copyrights, patents must be registered before they can come into effect.
Trademark
Trademark is a symbol, phrase, sign capable of legally distinguishing the goods and services of one enterprise from those of others. Once a company trademark is exclusively assigned, no one else may use or copy it anymore.
Industrial designs
Industrial designs are about the aesthetic aspects of an article, including its shape, configuration, pattern, or ornamentation. These designs are important in making your products attractive and appealing to customers. Also, this is a process of applying a design to physical products that are to be manufactured by mass production.
Geographical indications (GI)
A geographical indication is a distinctive marker used to identify the origin of a product, with its quality, reputation or other characteristics related to its geographical indication.
Trade secrets
A trade secret is the company’s confidential information, which provides an economic benefit or advantage over its competitors. Trade secrets must be proactively protected by each member of the organization, that is why employees are required to sign non-disclosure agreements (NDAs).
Trade secrets could be a design, pattern, recipe, formula, proprietary process, which is considered to be the result of a company’s research and development (R&D). These secrets create a business model that differentiates a company’s offerings, providing a competitive advantage.
Intellectual property (IP) is critical for businesses of all sizes.
Strong IP can help enhance the business in several ways. A valid IP can attract more investments from your partners and stakeholders. Investors are often drawn to businesses with a solid IP portfolio as it signals credibility, market advantages, and potential for global expansion.
Additionally, strong IP safeguards valuable assets and protects them from unauthorized use or exploitation by competitors. This ensures that the business maintains its competitive edge and reputation in the market.
Among intellectual properties, trademarks are some of the most well-known assets because they play a crucial role in brand identity and consumer recognition. Meanwhile, we are familiar with trademark roles in the business world, but is your understanding comprehensive? Do you have any questions about the roles of trademarks and how we can legally possess them?
Understanding trademarks vs. trademark infringement
Trademarks are valuable business assets. In order to avoid confusion with trademark issues, many experts have defined and explained what they are and how they work for businesses nowadays.
A trademark can be any word, phrase, symbol or a combination of these things that identifies a specific corporation's goods and services. It is the way a customer can recognize and distinguish your business from other competitors.
A trademark helps:
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Brand Identification: Trademarks help customers recognize and distinguish a company's fashion products or services from those of competitors. This identification builds brand loyalty and trust.
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Marketing & Advertising: Trademarks can improve an overall brand’s image by evoking emotions, indicating quality, and creating a lasting impression on consumers. Besides, they offer global recognition and consistency, enabling businesses to expand internationally with a consistent brand identity.
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Legal Protection: Trademarks provide legal protection against unauthorized use. Fashion brands can take legal action to prevent others from using their trademark, ensuring the brand's identity and reputation remain intact.
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Asset Value: Trademarks represent valuable business assets, contributing financial value to a brand. They can be bought, sold, licensed, or used as collateral for loans.
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Consumer Assurance: Trademarks guarantee the quality and origin of the products or services, fostering consumer confidence and satisfaction.
What trademark can be registered?
All the following standard character marks can be registered:
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Word
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Logo
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Shape
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Position
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Pattern
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Design
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Sound
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Color (single and combination)
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Shape
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Motion
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Multimedia
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Hologram
Nevertheless, having only a trademark for your own brand does not mean that other parties cannot use your assets. For example, imagine when you have a logo for your sports fashion retail store, you use it as a trademark for your products and services to identify and distinguish yours from others in the fashion field. Actually, this doesn’t mean you can prevent others from taking advantage of your creation such as a logo or brand name for non-fashion businesses.
Another common misconception is choosing a simple one which merely describes your business offerings could be more effective. A weird or creative style for your trademark tends to work better and is easier to protect.
Several companies, including well-known brands, have been involved in situations of trademark theft and intellectual property rights misuse due to mistakes or deliberate events.
Trademark infringement cases
Chanel vs. Amazon Sellers
The French fashion house Chanel sued many Amazon merchants for trademark infringement, claiming they profited from the sale of counterfeit Chanel-branded merchandise, bringing in millions of dollars in legal fees. For trademark infringement, the French Fashion House demanded $2 million from every Amazon merchant.
The court ordered each of them to pay $100,000 as fine. As a result of the complaint, Amazon must disable the stated stores and remove pictures of Chanel knockoffs.
Puma vs. Forever 21
Puma sued Forever 21, alleging the retailer copied designs from Puma's Creeper Sneakers, Fur Slide, and Bow Slide in the Fenty collection with Rihanna. The lawsuit included claims of design patent infringement, federal trade dress, copyright infringement, federal false designation of origin, and state unfair competition. Forever 21 argued that the designs date back to the mid-twentieth century and should be partially excluded from the case.
Should the court approve Forever 21's motion to dismiss?
While Puma claims that the availability of "knockoff" products "diminishes the brand value for Puma's consumers" and "the prestige of the Puma brand is diminished,". Unfortunately for the brand, last Friday, Judge Gutierrez disagreed with Puma again and found that Puma had failed to submit enough evidence to be granted a preliminary injunction.
Louis Vuitton v. Louis Vuitton Dak
Louis Vuitton is the designer and founder of a famous global fashion brand, which was created before Louis Vuitton Dak - a fried chicken restaurant in Korea. This restaurant has the same brand name, logo design as Louis Vuitton. In this case, the designer won the fight, the court ordered Louis Vuitton Dak to pay $14.5 million for infringement fees after changing their name into LOUISVUI TONDAK.
Of course, there are uncountable cases of intellectual infringement in the fashion industry. One such case involves Louis Vuitton vs. My Other Bag, which paved the way for all of those goods and names that were subject to parodies. Besides, the case between two manufacturers: Star Athletica, LLC vs. Varsity Brands, Inc. started with the question ‘Are the graphics copyrightable if printed on a commodity or not?’ and more.
Owning a trademark vs. trademark registration
As soon as you begin using your trademark in connection with your products or services, you are the owner of the trademark. Although this usage gives you rights to use your trademark, those rights are only applicable in the region in which you offer your products or services. You must register your trademark in order to receive more robust, national protection.
For instance, you own a jewelry store and start your business at the market. As soon as your business grows and expands online, it's essential to apply for trademark registration with the intellectual property department. This secures nationwide rights to your trademarks, preventing others from unauthorized use for different purposes.
The Trademark Registration Process in Vietnam Law
After Vietnam joined the World Trade Organization (WTO) and concluded a Bilateral Trade Agreement (BTA) with the United States, the country attempted to strengthen the protection of intellectual property rights. To achieve that goal, in September 2010, the Vietnamese government revised its IP laws and imposed harsher administrative penalties for infringements on industrial property rights.
In fact, there are similar points between Vietnam’s IP protection standards and more developed countries since Vietnam joined WTO in 2007.
Pre-Registration
Here are some things you need to prepare before registering your trademark rights at a typical Intellectual Property Representative organization:
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Trademark sample (not smaller than 3 × 3 cm, not exceeding 8 × 8 cm)
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List of goods and services that need to be searched and registered for trademarks.
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Sign the Power of Attorney according to the form.
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Documents applying for priority rights (if any).
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The prescribed fee.
Registration Process
Step 1: Conducting a trademark search (optional): Look up the registrability of the trademark (has anyone registered for the trademark before or not?). This round happens within 3-5 days.
Step 2: Register trademark in Vietnam (total estimated time: 13-18 months)
Step 3: 1 month for accepting valid applications
Step 4: Announcement of successful application. 2 month period.
Step 5: Content testing for the possibility of granting a trademark registration certificate. 12-16 month period.
Step 6: Issue a trademark registration certificate. 1-2 month period.
Post-Registration
Within 9-12 months (possibly longer) from the date of publication of the application, the Intellectual Property Office will issue a Notice on the possibility of granting a trademark registration certificate. If satisfied, the brand will be granted a trademark certificate within 1-2 months. If a trademark application is refused, the trademark applicant needs to respond to this refusal within three months.
How long is a Vietnam trademark registration certificate valid?
In Vietnam, a trademark registration is valid for 10 years from the filing date. The trademark owner can renew the trademark certificate indefinitely. However, if the trademark is not used, third parties can request its removal from the register.
Conclusion
Since you have your own fashion business, and intend to expand it wider or even abroad, you must proactively register a trademark or even other forms of intellectual property such as copyrights, patents, GI, etc., in order to prevent others from using your legal assets for different purposes, which might ruin your reputation and negatively impact your fashion brand.
Intellectual Property (IP) rights will play a bigger role in how clothing businesses perceive Vietnam's economic environment as the nation integrates more into the global economy, especially as technology and the economy grow there. Thankfully, Vietnam is eager to advance in the global economy and is working hard to improve its intellectual property rules.
