Distinctiveness in Vietnam Under IP Law Articles 72 and 74: Inherent and Acquired

Distinctiveness is the core requirement of trademark protection in Vietnam. A mark may be commercially attractive, heavily advertised, or internationally famous, but if it cannot distinguish one undertaking’s goods or services from those of others under Articles 72 and 74 of the Law on Intellectual Property, registration in Vietnam will be difficult or impossible. For legal and brand teams, the doctrine matters at three levels: choosing a registrable mark at the outset, understanding when use can cure weakness through acquired distinctiveness, and assessing which element of a combined mark will carry the legal analysis if the sign contains both words and graphics.

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

• Article 72: defines a trademark as a visible sign capable of distinguishing the goods or services of its owner from those of others.
• Article 74(1): a mark is considered distinctive if it consists of one or several easily noticeable and memorable elements or many elements forming an easily noticeable and memorable whole and is not among the excluded signs listed in Article 74(2).
• 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): common names of goods or services and conventional signs widely and regularly used are non-distinctive.
• Article 74(2)(c): descriptive signs indicating characteristics of goods or services are non-distinctive unless they have acquired distinctiveness through use before filing.
• Article 74(2)(dd): signs indicating geographical origin are non-distinctive unless they have become widely used and recognized as marks or are registered in a legally eligible form.

The Distinctiveness Doctrine in Vietnam

The Vietnamese doctrine follows a functional source-identification approach. A mark is inherently distinctive when consumers can perceive it as a brand from the outset, without needing marketplace education. It is acquiredly distinctive when it may not have started as a strong source identifier, but use before the filing date has taught the relevant public to associate it with one commercial source.

Article 74 is both a positive and negative definition. Article 74(1) says what distinctiveness looks like in general terms: noticeable, memorable elements, or a memorable whole. Article 74(2) then identifies categories that are presumed non-distinctive. In practice, NOIP asks whether the sign falls into one of those excluded categories. If it does not, the mark is generally treated as inherently distinctive unless another absolute or relative ground applies.

The doctrine operates on a familiar spectrum even though Vietnamese law does not expressly label marks as fanciful, arbitrary, suggestive, descriptive, and generic. Fanciful and arbitrary marks sit at the strongest end. Suggestive marks generally pass because they require thought or imagination. Descriptive and generic signs occupy the weak end and are caught by Article 74(2).

What Intellectual Property Office of Vietnam Considers Distinctive

The spectrum of inherent distinctiveness

Fanciful marks are coined expressions with no ordinary meaning for the goods or services. These are usually the safest filings in Vietnam because they do not describe the goods and are unlikely to be needed by competitors.

Arbitrary marks use real words unrelated to the goods or services. They are also inherently distinctive because there is no immediate descriptive link.

Suggestive marks imply a quality or idea but do not directly describe it. NOIP generally accepts these where understanding the connection requires some mental step.

Descriptive marks directly indicate characteristics such as kind, quality, function, or purpose. These are non-distinctive unless the applicant can prove acquired distinctiveness by use before filing.

Generic marks are common names of the goods or services and are generally fatal.

Evidence requirements for acquired distinctiveness

Article 74(2)(c) expressly permits descriptive signs to register if they have acquired distinctiveness through use before the filing date. The guide indicates that the evidentiary threshold is high and not codified in a precise numerical rule. In practice, useful evidence includes duration and continuity of use, sales figures, advertising expenditures, distribution reach, media recognition, market share, licensing history, and consumer surveys. The critical point is that the evidence must show source recognition, not just commercial success.

Timing is also important. The statute refers to distinctiveness acquired by use before the filing date. Evidence generated after filing may still help explain earlier recognition, but it cannot replace proof that the mark had already become distinctive in the market when the application was filed.

Logo registrability under Article 74(2)(a)

Pure logos are assessed somewhat differently from words. Vietnam does not require artistic originality in a copyright sense, but a figurative sign must have enough memorable character to function as a source identifier. Very simple geometric shapes, ordinary symbols, or commonplace visual forms may be refused under Article 74(2)(a) unless they have become widely recognized through use. By contrast, a more complex, unusual, or visually memorable design will usually satisfy the threshold.

Combined marks and the dominant element

Combined marks are evaluated as a whole, but examiner practice inevitably focuses on the dominant element. If the word element is central, large, readable, and conceptually strong, it will usually dominate the distinctiveness analysis. A descriptive word in large lettering will therefore remain problematic even if accompanied by a graphic. If the figurative element is the memorable portion and the text is small or weak, the logo may carry the distinctiveness. Applicants should still remember that protection in such a case may reside primarily in the overall composite rather than in the weak textual matter alone.

Language and translation considerations

NOIP may assess semantic content across Vietnamese and foreign languages used in trade, especially English. A sign that appears distinctive only because it is not in Vietnamese may still be treated as descriptive if the relevant consumers understand its meaning. Conversely, a coined foreign-looking word with no recognizable meaning may have strong inherent distinctiveness.

Key Case Law

No leading cases have been published in the source guide specifically elaborating the distinctiveness spectrum, the dominant-element doctrine in combined marks, or evidentiary thresholds for acquired distinctiveness in Vietnamese courts. The guide instead indicates that these issues are addressed mainly through statutory interpretation and NOIP examination practice.

The Procedure for Responding to a Distinctiveness Refusal

Step 1: identify which limb of Article 74(2) applies

Determine whether the objection concerns a simple shape under Article 74(2)(a), a common name under Article 74(2)(b), descriptiveness under Article 74(2)(c), or geographical descriptiveness under Article 74(2)(dd). The response strategy depends on the category.

Step 2: argue inherent distinctiveness where possible

If the sign is suggestive rather than descriptive, explain the mental steps required to connect the sign to the goods. If a logo has memorable and unusual visual features, identify those features specifically. If the examiner has focused on one component, emphasize the overall whole where the whole creates a distinctive impression.

Step 3: address dominant-element analysis in combined marks

Where the sign is composite, explain why the distinctive logo or stylization dominates the consumer impression, or why the textual element is not descriptive in context. This argument is strongest when the design is genuinely striking and the wording is subordinate.

Step 4: submit acquired distinctiveness evidence if available

For descriptive matter, provide evidence showing that the relevant public recognizes the sign as the applicant’s mark. Organize the evidence chronologically and tie it to Vietnam where possible. Foreign evidence may support fame or continuity, but local recognition is most persuasive.

Step 5: consider narrowing the specification

A sign may be descriptive only for some listed goods or services. Removing those items can sometimes resolve the objection without abandoning the mark altogether.

Step 6: appeal if the mark has a strong factual record

If NOIP maintains refusal despite substantial evidence, the applicant may pursue administrative appeal or judicial review within the applicable deadline. This is more realistic where the business has significant commercial footprint and documentation in Vietnam.

Strategic Recommendations

• Recommendation: choose coined, arbitrary, or clearly suggestive marks for Vietnam whenever possible, as these are most likely to satisfy Articles 72 and 74 without evidentiary burden.
• Recommendation: if a weak mark must be used for commercial reasons, develop and preserve evidence of recognition in Vietnam from the beginning.
• Recommendation: for logos, avoid basic shapes and routine icons unless the design has become strongly associated with the business through use.
• Recommendation: in combined marks, design the visual hierarchy deliberately so that a strong element, not a descriptive one, carries the overall impression.
• Recommendation: evaluate meaning across languages and scripts before filing, since semantic transparency in English or Vietnamese can undermine claimed distinctiveness.

Common Mistakes

• Mistake: assuming that because a sign is commercially clever or aesthetically attractive it is therefore legally distinctive.
• Mistake: relying on post-filing market growth without proving distinctiveness acquired before the filing date.
• Mistake: presenting only revenue figures and failing to show that consumers recognize the mark as a source identifier.
• Mistake: overlooking the dominant element in a combined mark and assuming the office will give equal weight to all components.
• Mistake: using a simple geometric logo and expecting it to register without evidence of market recognition.

Key takeaway: Distinctiveness under Articles 72 and 74 is the threshold trademark question in Vietnam. Strong inherently distinctive marks are far easier to register, while weak marks can be salvaged only in limited cases through substantial pre-filing evidence that consumers have learned to treat them as brands.