The textile and garment industry is a vital part of Vietnam's economy, and the country has emerged as one of the top textile producers and apparel exporters in the world. Although the industry had been hit hard by the COVID-19 pandemic, government policy support and effective tools to protect IP rights in the fashion space are reasons for investors to be optimistic about the industry's post-pandemic future in Vietnam.
1 . What are the main intellectual property legal tools available to protect fashion products?
1.1. Trademarks and non-traditional trademarks
Under Article 4.16 of Vietnam's Law on Intellectual Property (IP Law), a trademark is any sign used to distinguish the goods or services of different organizations or individuals. Signs eligible for registration as trademarks must be visible signs in the form of: letters; numerals; words; pictures; or images, including three-dimensional images, or their combinations, presented in one or several given colors. Under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which took effect in Vietnam in early 2019, soon will also be registrable.
Provided that these requirements are met, there are also a number of "non-traditional" trademarks worth mentioning for the fashion industry, as follows.
Color mark. Color per se is not registrable in Vietnam. However, the combination of colors can be registered as a trademark, provided that it is distinctive (not too simple or too complicated, not imposed by the nature of the product or necessary to achieve a technical result, etc.). Otherwise, secondary meaning through extensive use must be proven.
Black-and-white mark. The protection of black and white marks may extend to color variations, as the protection of a black-and-white trademark is limited to the content of the mark (word/figurative elements). Therefore, the use of a mark in color may be accepted as the use of the registered mark in black and white. However, this does not apply when color plays a crucial role in giving the sign distinctiveness.
Shape mark. A shape mark is registrable as a three-dimensional mark in Vietnam. To be registrable, the shape mark must not be the conventional shape of the product or its container, as stipulated in Article 74.2(b),(c) of the IP Law. Otherwise, secondary meaning through extensive use must be proven. However, if a three-dimensional sign is the shape/container of the goods on the list of goods/services but it is combined with another distinctive element(s), the shape will be protected as a whole with the exclusion of, and disclaimer on the sign being the shape/container of the goods.
Pattern mark. A pattern mark is regarded as a device mark, and is registrable if it is distinctive (not too simple or too complicated, etc.), and capable of identifying the origin of the goods/services.
"Made in". The "Made in Vietnam" mark is regarded as a descriptive sign, and is not registrable separately. If the applicant is not a Vietnamese entity or does not have an address in Vietnam, this sign is considered deceptive and will be refused according to Article 73.5 of the IP Law.
Unregistered mark. Well-known or widely-used marks are protected in Vietnam without registration and can be effective in the prevention of registration and use of similar marks for similar goods or dissimilar goods (in the case of well-known marks) if the use of such infringing marks is aimed at taking advantage of the well-known mark or may dilute the well-known mark, according to Article 74.2. (i) of the IP Law.
1.2. Design as an alternative or addition to TM registration
A variety of fashion products have been filed in Vietnam for design protection, such as shoes and sandals (Locarno classification 02-04), bags (03-01), clothes (02-01 to 02-07), jewelry (11-01), watches (10-02), and so on.
There are no design laws/regulations specific to the fashion industry. Fashion product designs are governed by the Hague Agreement and Vietnam's IP Law and its guiding legislation.
1.3. Copyright as an alternative or addition to TM registration
Under the IP Law, if a work belonging to the closed list of copyrightable works stipulated in Article 14 is created personally by the author(s) without copying others' works and is fixed in a material form, it is copyrightable in Vietnam (assuming it meets the minimum creativity threshold), irrespective of the registration procedure.