Likelihood of Confusion in Vietnam Under IP Law Article 74(2): Relative Grounds

In Vietnam, even a distinctive and otherwise lawful mark can be refused if it conflicts with an earlier right. The principal relative-ground doctrine is likelihood of confusion under Article 74(2) of the Law on Intellectual Property. For applicants, this is often the most commercially significant examination issue because it depends not only on the mark itself but also on the surrounding rights landscape. Clearance therefore requires more than checking for exact matches. NOIP compares marks visually, phonetically, and conceptually, evaluates whether goods or services are identical or similar, and pays close attention to the dominant element in combined marks. A weak or avoidable conflict at filing can become an opposition, a refusal, or later invalidation.

The Legal Framework: Law on Intellectual Property Article 74(2)(e), (g), (i), (k), (l), (m) and (n), with Article 90

• Article 74(2)(e): signs identical with or confusingly similar to earlier registered marks or earlier-filed marks for identical or similar goods or services are non-distinctive and ineligible for protection.
• Article 74(2)(g): signs identical with or confusingly similar to marks widely used and recognized for the same or similar goods or services may be barred even where registration status differs.
• Article 74(2)(i): signs identical with or confusingly similar to well-known marks are barred, including in circumstances involving dissimilar goods where use may affect the distinctiveness or reputation of the well-known mark.
• Article 74(2)(k): signs identical with or confusingly similar to another person’s trade name currently in use are barred if use may cause confusion as to the business origin of goods or services.
• Article 74(2)(l): signs identical with or similar to protected geographical indications are barred where use may mislead consumers as to geographical origin.
• Article 74(2)(m): signs containing or consisting of geographical indications for wines or spirits where the goods do not originate from the indicated place are barred.
• Article 74(2)(n): signs identical with or insignificantly different from another person’s protected industrial design used for identical goods may also be barred.
• Article 90: reinforces priority between competing applications through the first-to-file rule and therefore interacts with relative-ground analysis where multiple claims exist.

The Likelihood of Confusion Test Applied by NOIP

Vietnam applies a classic likelihood-of-confusion approach. The inquiry is not whether consumers have already been confused in the market. It is whether the average relevant consumer is likely to believe that the goods or services offered under the two signs come from the same undertaking or economically linked undertakings.

The test is holistic. NOIP does not rely on a single factor, but several factors recur consistently: similarity of the signs, similarity of the goods or services, the distinctiveness and strength of the earlier mark, and the overall commercial impression on the relevant public. Exact identity between marks and goods creates the highest risk, but materially similar marks on closely related goods can also be refused.

In practice, visual similarity often carries considerable weight because trademarks are frequently encountered on labels, packaging, and digital displays. Phonetic similarity is also important, especially for word marks and spoken references in retail trade. Conceptual similarity can reinforce a finding of confusion where the marks convey the same or very similar meaning.

What Intellectual Property Office of Vietnam Considers in Relative-Ground Analysis

Visual similarity

NOIP compares the appearance of the marks as wholes, while also identifying shared prominent elements. Similar spelling, shared prefixes or suffixes, comparable word structures, and similar logo configurations can all matter. Minor differences in font or color are usually less important than the presence of the same distinctive verbal element.

Phonetic similarity

Word marks are assessed for pronunciation. This includes Vietnamese pronunciation, likely pronunciation of foreign words, and transliterated forms where relevant. Even if two signs are not visually identical, they may still be confusing if they sound sufficiently alike in the relevant market context.

Conceptual similarity

Meaning also matters. If two marks convey the same idea, image, or translated meaning, confusion risk rises. This is particularly important where one sign is in English and another in Vietnamese, or where one mark is figurative and the other verbal but both communicate the same concept.

Similarity of goods and services

Article 74(2) requires identity or similarity of goods or services for most standard prior-mark conflicts. Vietnam uses the Nice Classification as a framework, but classification alone is not decisive. Goods may be similar if they share nature, function, intended purpose, users, distribution channels, or complementarity. Cross-class similarity is possible. For example, goods sold through the same channels to the same consumers for related purposes may be considered similar even if formally classified in different classes.

Dominant element in combined marks

Where one or both marks are combined word-and-device signs, NOIP pays close attention to the dominant element. If a common word element dominates both marks, differences in logos may not avoid confusion. Conversely, where the word element is weak or descriptive and a distinctive device dominates, the comparison may tilt more heavily toward the graphics. Still, applicants should not overstate this point. In many practical disputes, the office gives considerable weight to readable word matter because consumers often use it to request or recall the product.

Trade names, well-known marks and geographical indications

Relative grounds in Vietnam are broader than simple registered-mark conflicts. NOIP may also cite trade names currently in use, well-known marks, and protected geographical indications. That means a clearance search focused only on identical registered marks is insufficient for high-value filings.

Language and translation

Because conceptual analysis matters, marks in different languages may still conflict if consumers understand them as equivalent. English branding is common in commerce, and the office may consider whether Vietnamese consumers will translate or understand the English term. A foreign-language mark therefore does not automatically avoid conflict with a Vietnamese-language earlier right.

Key Case Law

No leading cases have been published in the source guide specifically setting out a Vietnamese judicial multi-factor test for likelihood of confusion under Article 74(2). The guide presents the doctrine primarily through statutory provisions and examination practice. Accordingly, NOIP administrative practice remains the main operational reference.

The Procedure for Responding to a Relative-Ground Refusal

Step 1: identify the cited earlier right and its status

Determine whether NOIP has cited a registered mark, an earlier-filed application, a trade name, a well-known mark, or another protected sign such as a geographical indication. The response may differ depending on the type of earlier right.

Step 2: compare the marks element by element and as wholes

Prepare a structured comparison addressing visual, phonetic, and conceptual differences. For combined marks, explain why the non-common element dominates or materially changes the overall impression.

Step 3: challenge goods similarity where justified

If the goods or services do not share nature, purpose, consumers, or trade channels, argue this directly. Narrowing the specification may also be effective if overlap is limited.

Step 4: address the strength of the earlier mark

If the shared element is descriptive, generic, or otherwise weak, argue that consumers are accustomed to seeing that element in the market and therefore rely on other differences. This argument is strongest where the common matter is objectively non-distinctive.

Step 5: consider coexistence or consent evidence carefully

The source guide does not provide a confirmed statutory mechanism making letters of consent automatically decisive in Vietnam, so applicants should not assume that a consent letter alone will cure refusal. It may still have practical value as supporting context, but legal analysis remains primary.

Step 6: appeal if the office gives undue weight to a weak common element

If NOIP maintains refusal despite meaningful differences in impression and goods, the applicant may pursue administrative or judicial review within the applicable deadline.

Strategic Recommendations

• Recommendation: conduct full clearance for visual, phonetic, and conceptual similarity, not just exact identity.
• Recommendation: review cross-class relatedness because NOIP may find similarity based on function, channels, or complementarity rather than class number alone.
• Recommendation: design combined marks so that a distinctive element, not weak common wording, dominates the overall impression.
• Recommendation: assess translation and transliteration issues for English and Vietnamese equivalents before filing.
• Recommendation: where risk exists, tailor the specification narrowly to the actual commercial goods or services rather than claiming the full class.
• Recommendation: monitor for trade names and well-known marks in addition to registered trademark records when evaluating adoption risk.

Common Mistakes

• Mistake: relying only on exact-match searches and ignoring near matches that are phonetically or conceptually close.
• Mistake: assuming that different Nice classes eliminate conflict without considering commercial relatedness.
• Mistake: focusing on minor design differences when the same dominant word element appears in both marks.
• Mistake: ignoring translation equivalence between Vietnamese and English versions of the same concept.
• Mistake: treating descriptive shared matter as harmless without analyzing whether the earlier mark may nonetheless be considered strong in the relevant field.

Key takeaway: Article 74(2) requires a holistic but practical confusion analysis centered on sign similarity, goods relatedness, and dominant elements. In Vietnam, visual, phonetic, and conceptual overlap can each support refusal, especially where the shared element is the part consumers are most likely to remember and use.