WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP Well -Known Trademark Protection Reference to the Japanese experience Final Report In Fulfillment of the Long Term Fellowship Sponsored By: World Intellectual Property Organization (WIPO) in Collaboration with the Japan Patent Office April 2 - Septembe r 30, 2010 Submitted By: Hà Th Nguy t Thu National Office of Intellectual Property of Vietnam (NOIP) 384 -386 Nguyen Trai, Thanh Xuan, Ha Noi, Vietnam Supervised By: Prof. Kenichi MOROOKA National Graduate Institute for Policy Studies (GRIPS) 7-22 -1 Roppongi, Minato -ku, Tokyo 1 06 -8677, JAPAN This report is a mandatory requirement of this fellowship; views and findings are those of the author and do not necessarily reflect the views and policy considerations of his organization or sponsor of this study. 1 WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP Page INTRODUCTION INTRODUCTION 1 1. Overview of research theme 1 2. Some misunderstanding definitions: famous 2 trademark, well -known trademark, widely - known trademark, trademark with high reputation 3. The function of trademarks and protection 6 trademark CHAPTER 1 INTERNATIONAL FRAMWORK OF 10 WELL -KNOWN TRADEMARKS PROTECTION 1.1 . Paris Convention 10 1.2 . TRIPs Agreement 12 1.3 . WIPO Joint Recommendations concerning 14 provisions on Protection of Well -known Marks CHAPTER 2 WELL -KNOWN TRADEMARKS 15 PROTECTION UNDER JAPANESE LAW 2.1. Protection o f well -known trademark under the 15 Trademark Law (JTL) 2.1.1. Prohibition of Registration of a mark identical or 15 similar to well -known/famous trademark of others 2.1.2. Expansion of Protection of well -known 30 trademarks 2.2. Protection of well -known trademarks under the 35 Law for the Repression of Unfair Competition 2.3. Recognition as well -known trademarks 38 2.4. List of well -known trademarks 42 CHAPTER 3 WELL -KNOWN TRADEMARKS 46 PROTECTION UNDER VIETNAMESE LAW 2 WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP 3.1 . Definition 46 3.2 . Prohibiti on of registration of a mark identical or 48 similar to well -known/famous trademarks of others 3.3 . Protection of well -known trademark against 52 unfair competition 3.4 . Act of infringement of well -known trademark 54 rights 3.5 . Recognition as well -known trademark 57 3.6 . List of well -known trademarks 64 CHAPTER 4 COMPARISION BETWEEN LAWS AND 66 PRACTICES REGARDING WELL - KNOWN TRADEMARK PROTECTION IN VIETNAM AND JAPAN 4.1. Purpose of trademark law 66 4.2. Definition of well -known trademark 66 4.3. Establishment o f well -known trademark rights 67 4.4. Definition of use 68 4.5. Protection of well -known trademark from others’ 69 parties registration 4.6. Protection well -known trademark against unfair 73 competition acts 4.7. Criteria for determining well -known trademark 75 4.8. Evidence 77 4.9. Defensive trademark 79 4.10. Publication on the official gazette 82 4.11. Opposition 84 4.12. Trademark right 88 4.13. First -to -file system 90 4.14. Prior use 91 4.15. List of well -known trademark 93 4. 16. Ways to be recognized as well -known trademark 94 CHAPTER 5 CONCLUSION AND RECOMMENDATION 95 3 WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP ACKNOWLEDGEMENTS First of all, I would like to express my thanks to the National Office of Intellectual Property of Vietnam (NOIP) for nominating me to att end the long term study -cum -research fellowship program sponsored by the World Intellectual Property Office (WIPO) and organized by the Japan Patent Office (JPO). I would like to express my sincerest gratitude to WIPO and JPO for providing me this opportun ity of exploring the knowledge and experience in my field of working. I would like to express my thanks to the Asia Pacific Industrial Property Center (APIC) of the Japan Institute of Invention and Innovation (JIII), and the National Graduate Institute for Policy Studies (GRIPS) who has been a great tool to accomplish the present task. I would like to express my sincere gratitude to Mr. Tran Viet Hung – Director General of NOIP, Ms. Nguyen Thi Minh Hien – Director of Trademark Division No.2 of NOIP, and Mr. Koichi Minami - Deputy Commissioner of JPO for this assignment, and to Mr. Yoki Kawata - President of JIII, and Mr. Takao Ogiya – Director General of APIC for taking care of all infrastructural requirement during my studies. I express my sincere gratitude and appreciation to Prof. Kenichi Morooka – my supervisor – for his professional guidance and advice, and for his encouragement and support. In person, I would like to express my thanks to my coordinator - Mr. Masakazu Yokoyama, Ms. Yukiko Koyanagi (APIC) for their support, attention and detailed arrangement during my six months’ study and living in Japan. I will be my great pleasure to extend my sincere thanks to all of the officials of APIC that have been always a great support to me as to realize me at home, to senior officers and valuable colleagues in NOIP, JPO, AIPPI, Hanoi National University, and Hanoi Law University for their support. 4 WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP I would like to express my sincere thanks to Ms. Duan Xiaomei - my co - researcher from China and deepest thank is ad dressed to Mr. Suman Shrey Singh – my co -researcher from India for his cooperative and considerate attitude and friendship. My sincere thanks are also due to others that I could not mention them all for their attentions and helps. Last but not least, I wou ld like to give my heartfelt thanks to my family and friends, for their inspiration, support, understanding and encouragement. This time is precious opportunity for me to realize how much they love me. My highest appreciation is reserved for my parents for their love and encouragement. 5 WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP Study Theme: Well -known trademark protection – Reference to the Japanese experience Introduction 1. Overview of research theme In today’s marketplace, well -known trademarks bring huge commercial value for t rademark owners . Therefore the demands for effective protection , as well as the risk of being copied for such trademarks are increasing. Trademarks are “signs” which distinguish the goods and services of one enterprise from another . Well -known trademarks p lay a more important role here . They act as a marketing tool , and as a symbol of reputation and prestige in many companies. Moreover, from the point of view of the consumer , trademarks act as a measure by which to identify in which “class ” consumers are. By virtue of the intensive and extensive degree to which they have been promoted and developed by owners, trademarks have become widely known , and have been placed in the minds of consumers such that they can produce a self -attraction effect , which contribu tes much to increased sale s of products bearing the mar k. 1 Because of such exceptional power , protection of well -known trademarks requires expansion of legal principles beyond the traditional scope of trademark law. Trademark right s, as with other intellec tual property rights, have a scope of protection limited by the very function they are meant to serve . In order clearly to identify an origin, protection has to go only as far as to prevent confusion. Therefore, it is not necessary to prevent the use of an identical or confusingly similar trademark in a context that would not lead to confusion such as for different goods or services. 2 In this situation, it is unlikely that the consumer is mistaken by the same trademark for unrelated goods, for example soaps and motorbikes. Protection of trademark is therefore limited to the scope of similarity of marks for identical or similar goods or services . The traditional pri nciple for trademark protection is also limited to the geographical territory where the protect ion has been obtained. Yet today, consumers move more freely across borders and 6 WIPO SIX MONTH STUDY - CUM - RESEARCH FELLOWSHIP information has been explo ited over the Internet thanks to the rapid development of technology . As a result, consumers may know the products bearing well - known trademark even i n the case that such products do not existed in their marketplace. However, even though some trademark s ha ve become globally well -known, such as “COCA -COLA”, “MICROSOFT”, “IBM” , etc. ( The Top 100 Globally Well -Known Brands 2010 of Business W eek), it cannot be said that their goods or services are actually supplied to the market in every country , and in addition, this also does not mean that these trademarks are registered in every country throughout the world. Therefore, in the case such a trademark is imit ated or pirated in a country in which it is not registered or used yet it may have not been protected under trademark traditional principles. So the appropriate protection of well -known trademarks has become an essential issue not only domestically, but al so in trade relations between nations. The protection system for well -known trademark s in Vietnam has been changed from registration system to automatically established system based on the widely usage after the promulgation of Intellectual Property Law 2 005. In con trast to the lack of experience of Vietnam in this matter, Japan has long - standing practices in this respect , so it may serve as a helpful reference for Vietnam. In the light of the importance of protecting well -known trade marks, this paper aims to conduct a study of the well -known trademark protection system in Japan , point out the advantages of this system and some main differences between th e systems in Japan and Vietnam . A conclusion and recommendation will be made after comparison with Japan ’s experience. 2.