Descriptiveness and Genericness Under Vietnam IP Law Article 74(2)(b) and (c)

In Vietnam, one of the most common reasons for trademark refusal is that the applied-for sign does not function as a badge of origin. For businesses, this issue often arises when a proposed mark uses ordinary product terminology, promotional wording, quality claims, or wording that directly names the goods or services. Vietnamese law addresses these problems through the distinctiveness rules in Article 74, especially Article 74(2)(b) and Article 74(2)(c). These provisions matter because they can block a filing at examination, limit enforcement value even if a mark is accepted in stylized form, and create a difficult evidentiary burden if the applicant later tries to rely on acquired distinctiveness.

The Legal Framework: Law on Intellectual Property Article 74(2)(a), (b), (c) and (dd), and Article 72

• Article 72: a mark must be a visible sign capable of distinguishing the goods or services of the owner from those of others.
• Article 74(2)(a): simple shapes, geometric figures, letters, numerals, or unusual characters lacking noticeable and memorable elements are non-distinctive unless widely used and recognized.
• Article 74(2)(b): conventional signs and common names of goods or services in any language that have been widely and regularly used and known to many people are non-distinctive.
• Article 74(2)(c): signs indicating time, place, method of production, category, quantity, quality, properties, composition, intended purpose, value, or other descriptive characteristics of goods or services are non-distinctive unless they have acquired distinctiveness through use before the filing date.
• Article 74(2)(dd): signs indicating geographical origin are non-distinctive unless widely used and recognized as a mark or registered in an eligible collective or certification context.

The Descriptiveness and Genericness Test Under Article 74

Vietnamese law does not draw an elaborate doctrinal distinction between direct descriptiveness, indirect descriptiveness, and suggestiveness in the way some jurisdictions do, but examiner practice follows a familiar functional inquiry. The core question is whether the average relevant consumer would immediately perceive the sign, or its dominant element, as describing the goods or services rather than identifying one trader’s commercial source.

Under Article 74(2)(c), a sign is descriptive if it tells consumers something about the goods or services themselves, such as their kind, quality, function, purpose, composition, or other characteristic. If the consumer sees the sign and instantly understands it as product information, NOIP is likely to refuse it. Examples include ordinary names for the product, ingredient claims, quality descriptors, use-related wording, and straightforward laudatory statements that operate as description rather than source indication.

Under Article 74(2)(b), a sign is generic if it is the common name by which the goods or services are known. This is the lowest point on the distinctiveness spectrum. A generic sign does not merely describe a feature of the goods. It names the goods themselves. In practical terms, if traders need the term to identify the product category, the term cannot be monopolized as a trademark.

The distinction matters because descriptive matter may in theory be cured through acquired distinctiveness under Article 74(2)(c), while a truly generic term is usually treated by NOIP as effectively fatal. Even if an applicant claims substantial use, the evidentiary burden for generic terminology is extremely high because the office will ask whether the public sees the term as a brand or simply as the product name.

Vietnamese examiner practice is also attentive to foreign-language equivalents and obvious semantic equivalents. If an English or other foreign word would be understood by Vietnamese consumers as describing the goods, NOIP may still refuse it. The same applies to transliterations, common abbreviations, and combinations of descriptive words. Combining two descriptive elements does not usually create distinctiveness if the combined expression still reads as ordinary product information.

What Intellectual Property Office of Vietnam Considers Descriptive or Generic

NOIP focuses on immediate consumer perception, the dominant element of the sign, and the relationship between the wording or image and the listed goods or services.

Word marks

Words that directly identify the category of goods or services are classic Article 74(2)(b) problems. For example, the common name of a food, beverage, software product, or service type will normally be viewed as generic. Words that identify quality, intended use, ingredients, size, or value are typical Article 74(2)(c) problems. Promotional language is not automatically registrable merely because it sounds commercial. If it functions as a quality claim or descriptive slogan, it remains vulnerable.

Foreign words and multilingual issues

Vietnamese is the language of examination, but NOIP does not ignore meaning in other languages. English wording is especially likely to be assessed for semantic content where the relevant market would understand it. A foreign-language term that translates to a descriptive expression in Vietnamese may be refused if consumers would readily grasp the meaning. Applicants should therefore assess descriptiveness not only in Vietnamese but also in English and any other commercially common language relevant to the goods.

Device and figurative marks

Pictures can be descriptive too. A coffee bean for coffee, a loaf image for bakery goods, or a simple product depiction for the product itself may be viewed as descriptive or non-distinctive. Article 74(2)(a) also captures very simple figurative matter, such as basic geometric shapes, where the sign lacks noticeable and memorable source-identifying character.

Stylization

Mere stylization rarely overcomes a descriptiveness objection where the verbal element remains plainly readable and descriptive. A decorative font, color treatment, or ordinary logo container may not materially alter consumer perception. NOIP generally looks through minor design features if the core word remains the primary message. Only where the design element is sufficiently distinctive and dominates the overall impression might the combined mark escape refusal, and even then protection for the descriptive verbal element will be weak.

Combined marks and dominant element analysis

Where a mark combines words and graphics, NOIP evaluates the whole sign but pays close attention to the dominant element. If the dominant element is a descriptive or generic word, a modest design addition may not save the application. If the graphic element is highly distinctive and the word is subordinate, the office may be more receptive, but the registration will not confer strong exclusivity over the descriptive wording. Businesses should avoid relying on a combined mark filing as a workaround for a fundamentally weak name.

Key Case Law

No leading cases have been published in the source guide on Vietnamese court interpretation of plain descriptiveness and genericness under Article 74(2)(b) and (c). The guide expressly notes that there are no widely publicized Vietnamese court cases on plain descriptiveness of a word or logo, and examiner practice is therefore the primary practical source.

The Procedure for Responding to a Descriptiveness or Genericness Refusal

Step 1: review the cited wording and the goods specification

First determine whether the objection is tied to all listed goods or only some of them. A term may be descriptive for one category but not for another. If the problem is limited, narrowing the specification may be a practical solution.

Step 2: assess whether the refusal is truly generic or merely descriptive

If the sign is actually the common product name, prospects are poor. If it is descriptive but not generic, there may be room to argue that the sign is suggestive, allusive, or unusual in context.

Step 3: argue consumer perception and semantic distance

Applicants can argue that the wording does not immediately describe the goods, that it requires imagination, or that the examiner has overstated how Vietnamese consumers would understand the term. For foreign-language wording, evidence that the relevant public would not readily translate the term may help, though this depends on the market.

Step 4: emphasize dominant design elements if the mark is composite

In a combined mark, the applicant can argue that a distinctive logo element dominates the commercial impression. This is more effective where the wording is visually subordinate and the design is genuinely memorable, not where the mark is simply a descriptive word in stylized type.

Step 5: submit acquired distinctiveness evidence where available

Article 74(2)(c) expressly allows descriptive signs that have acquired distinctiveness through use before filing. Useful evidence may include duration and continuity of use in Vietnam, sales figures, market share, advertising expenditures, media coverage, distribution network evidence, customer recognition materials, and surveys where available. The use must point to source recognition, not merely product description.

Step 6: appeal if the evidence supports it

If NOIP maintains the refusal, the applicant can appeal administratively or sue in court within the applicable period. This route is usually justified only where the sign has genuine market recognition or the examiner has mischaracterized the meaning of the sign.

Strategic Recommendations

• Recommendation: test the mark against the exact goods and services claimed, because descriptiveness is always context-specific.
• Recommendation: evaluate meaning in Vietnamese and English, and consider whether a foreign term has a clear descriptive translation for the target market.
• Recommendation: avoid relying on simple stylization to rescue a descriptive brand name, since NOIP generally focuses on the readable verbal content.
• Recommendation: if the business has already invested heavily in a weak mark, collect use evidence before filing so an acquired distinctiveness response is available if needed.
• Recommendation: for combined marks, ensure the design element is genuinely distinctive if the word element is weak, and do not assume that registration of the whole sign gives strong rights in the descriptive wording.

Common Mistakes

• Mistake: assuming that because a term is in English, NOIP will not examine its descriptive meaning for Vietnamese consumers.
• Mistake: confusing suggestive language with descriptive language and overestimating how much semantic distance the mark actually has.
• Mistake: filing a descriptive word with a minimal logo and expecting the design to cure the problem.
• Mistake: offering evidence of sales volume alone without showing that consumers recognize the sign as a source indicator rather than product information.
• Mistake: trying to monopolize the common product name and treating genericness as an argument problem rather than a substantive bar.

Key takeaway: Under Article 74(2)(b) and (c), Vietnam refuses signs that consumers read as product names or straightforward descriptions. Stylization usually has limited value, and acquired distinctiveness is available in principle but requires substantial evidence that the market sees the sign as a brand, not merely as information.