Protection of Well-Known Marks in Vietnam Under Article 75

Vietnam’s first-to-file trade mark system creates a general rule that the earliest application wins. However, the IP Law provides one significant exception: well-known marks. Under Article 75 of the IP Law, marks that are widely known by the relevant Vietnamese public receive expanded protection that operates independently of registration. A well-known mark can be used to block or invalidate conflicting registrations — even across different classes of goods or services — without the owner having filed a trade mark application in Vietnam.

Definition: What Is a Well-Known Mark in Vietnam?

Under Article 4(20) of the IP Law (as amended in 2022), a well-known mark is defined as a mark “widely known by the relevant sectors of the public in the territory of Vietnam.” The 2022 amendment narrowed this definition from the previous formulation, which referred to “consumers throughout the territory of Vietnam.” The revised wording focuses on the relevant public — the consumers, traders, or professionals who actually encounter the goods or services in question — rather than the general public at large.

This is important: a mark may qualify as well-known among professionals in a specific industry even if the general Vietnamese public has never heard of it. Conversely, a mark that is globally famous but has no meaningful presence or recognition among the relevant Vietnamese public will not qualify.

The Eight Criteria of Article 75

Article 75 lists the criteria that IP Vietnam and the courts consider when evaluating whether a mark qualifies as well-known. Not all criteria must be satisfied; they are assessed flexibly and cumulatively:

1. Number of relevant consumers with knowledge of the mark: How many people in the relevant Vietnamese consumer base recognise the mark through purchase, use, or exposure to advertising.
2. Territorial scope of goods circulation: The geographic extent within Vietnam where goods bearing the mark have been distributed and sold.
3. Turnover from goods or services bearing the mark: Revenue generated from sales of products or services under the mark in Vietnam or internationally.
4. Duration of continuous use: How long the mark has been in use, whether in Vietnam or globally.
5. Breadth of recognition: The extent to which the mark is widely known, considering factors such as advertising, publicity, and consumer awareness across Vietnam.
6. Number of countries where the mark is protected: Trade mark registrations in other jurisdictions as evidence of the mark’s international standing.
7. Number of countries where the mark is recognised as well-known: Recognition of well-known status by trade mark authorities or courts in other countries.
8. Value of the mark: The commercial or assessed value of the trade mark as an intangible asset, including licensing revenue and valuation reports.

Expanded Protection: Beyond Similar Goods

The most significant benefit of well-known status is cross-class protection. Under Article 74.2(i), a sign that is identical or confusingly similar to a well-known mark may be refused registration or invalidated even for goods or services that are dissimilar to those covered by the well-known mark, if the use of the sign is likely to:

• Affect the distinctiveness of the well-known mark (dilution).
• Take unfair advantage of the well-known mark’s reputation (free-riding).

This anti-dilution protection extends well-known marks beyond the standard likelihood-of-confusion test that applies to ordinary registered marks. An ordinary registration protects only against similar marks for similar goods; a well-known mark protects against exploitation of its reputation across the entire spectrum of goods and services.

Timing Requirement Under the 2022 Amendment

The 2022 amendments introduced an important timing rule: the mark must have been well-known before the filing date of the application being opposed or challenged. Evidence of well-known status that was established after the filing date of the competing application is not admissible. This means that a well-known mark claim must be supported by evidence gathered and established prior to the date the conflicting application was filed.

No Registration Required

Under Article 6.3(a), rights to a well-known mark are established through use, not through registration. This is the sole exception to Vietnam’s first-to-file principle. A well-known mark owner does not need to have filed an application or obtained a registration in Vietnam to assert rights against a conflicting mark. However, proving well-known status requires the owner to submit substantial evidence, and IP Vietnam assesses each claim on a case-by-case basis.

IP Vietnam maintains a list of recognised well-known marks as a reference tool, but inclusion on this list is not a prerequisite for asserting well-known status in a particular proceeding. A mark can be argued as well-known in any opposition, invalidation, or enforcement action, supported by appropriate evidence.

Strategic Recommendations

• Do not rely on well-known status alone: Even if your mark qualifies as well-known, register it in Vietnam. Registration is faster, cheaper, and more predictable than proving well-known status in each individual proceeding.
• Collect Vietnamese market evidence: If you may need to assert well-known status, maintain organised records of sales, advertising, media coverage, and consumer recognition in the Vietnamese market.
• Gather international evidence: Registrations, well-known recognition decisions, and sales data from other countries support the international standing criteria under Article 75.
• Act before the competing filing date: Under the 2022 amendments, your evidence must predate the conflicting application. Do not wait to build your case after a squatter has filed.
• Consider preventive filings across classes: If your mark is highly valuable, consider filing in additional classes to secure registered protection that complements your well-known mark claim.

Key Takeaway

Well-known status is the most powerful exception to Vietnam’s first-to-file system, granting cross-class protection without registration. However, the evidentiary threshold is high, requiring proof that the relevant Vietnamese public recognised the mark before the competing filing date. For most businesses, registration remains the primary tool for brand protection in Vietnam. Well-known mark claims are a supplementary weapon, best reserved for established brands with substantial Vietnamese market presence and carefully maintained evidence portfolios.