Under Vietnamese law, if a logo is capable of distinguishing the goods or services of its holder from those of others, it can qualify for trademark protection. If the logo is created personally by the author without copying others’ works and is fixed in a material form, it is also copyrightable as a work of applied art (assuming it meets the minimum creativity threshold).
Such parallel protection by both trademark and copyright laws can lead to a conflict of rights when one party obtains trademark rights to a logo through registration with the NOIP, while another party obtains protection for an identical or confusingly similar logo through the copyright regime. How does the law address this conflict? The answer depends on which right existed first.
If copyright arose first
There is no direct provision that a trademark registration will be invalidated if it is identical or similar to a prior copyrighted logo. However, there are some indirect provisions that a copyright owner can rely on to challenge a trademark registration. Article 17 of Decree No. 103/2016/ND-CP of 22 September 2006, guiding the implementation of the IP Law, stipulates a principle on respecting previously established IP rights: “industrial property rights of an organization or individual may be invalidated or banned from exercise if they conflict with previously established intellectual property rights of another organization or individual.”
This provision can be understood to mean that a third party can rely on its prior copyright (an intellectual property right) for a logo to invalidate a trademark registration, if the use of the logo protected by the contested registration conflicts with its copyright. But it does not work the other way around, as it specifies that only “industrial property rights”, not “intellectual property rights”, may be invalidated. However, as this provision is vague—it does not provide concrete circumstances/conditions for the invalidation—it is rarely applied in practice.
Another relevant provision is Point 39.4(g) of Circular No. 01/2017/TT-BKHCN guiding the implementation of Decree No. 103/2006/ND-CP, which stipulates that a sign is ineligible for protection as a trademark if it is identical or confusingly similar to images of characters or figures in other persons’ widely known works under copyright protection, unless it is so permitted by the owners of those works. Strictly speaking, a logo would not likely be regarded as characters or figures in the context of the above provision. As such, this provision is also not likely to be applicable to settle the conflict of rights.
Managing Intellectual Property