Tiếng ViệtIn business operations, a trademark is not only a tool for brand recognition but also a long-term intellectual property asset. However, during the registration process, many enterprises face situations where their applications are rejected by the Intellectual Property Office due to being “identical or confusingly similar” to previously filed or registered trademarks.
So, what should businesses do when their trademark is considered identical or confusingly similar? What are the legal grounds for such decisions, and how can companies remedy the issue and protect their rights? In this article, LexConsult & Partners provides a detailed analysis and practical guidance on how to handle these situations effectively.
1. When Is a Trademark Considered Identical or Confusingly Similar?
When examining a trademark application, the Intellectual Property Office of Vietnam (IPVN) assesses whether the mark is identical or confusingly similar to previously registered or filed marks under Articles 74 and 90 of the 2005 Intellectual Property Law (amended in 2022). So, what constitutes “identical” and what qualifies as “confusingly similar”?
1.1. What Is an “Identical” Trademark?
A trademark is considered identical when it is exactly the same in form, pronunciation, structure, or meaning, and is registered for the same or similar goods/services.
Example: A company applies to register the mark “SUNCARE” for skincare cosmetics. However, another party has already registered the identical mark “SUNCARE” for the same product group. → Result: The application is rejected because it is completely identical in name, pronunciation, and field of use.
1.2. What Is a “Confusingly Similar” Trademark?
A trademark is deemed confusingly similar when it closely resembles an existing mark — not necessarily identical — but similar enough to mislead consumers about the origin of goods or services. The similarity may result from:
– Partial overlap in the name,
– Similar pronunciation,
– Comparable visual design, or
– A related meaning.
Assessment Criteria: The evaluation considers the mark as a whole, focusing on:
– Sound or syllable similarity: e.g., “SANTIN” vs. “SANTON”, “VINAMILK” vs. “VINAMILT”
– Visual similarity: layout, font, or color scheme
– Symbolic or semantic resemblance: e.g., “Trâu Vàng” (Golden Buffalo) vs. “Golden Buffalo”, “Hoa Sen” vs. “Lotus”
– Same product/service group: Even if different in wording, marks may still be confusingly similar if used for goods of the same type (e.g., beverages – beer – mineral water).
Example: A company applies to register “Green Sun” for organic cosmetics. The IPVN rejects it because “GreenSun” has already been registered for skincare products.
→ Though written differently (separated vs. combined), their pronunciation, meaning, and field of use are similar — likely to confuse consumers.
→ The applicant later modified the mark to “Grensun Organic,” adjusted the logo and color scheme to create distinctiveness, and successfully obtained registration.
Note: Not every similarity constitutes infringement. The overall impression and scope of use are key factors in determining potential confusion.
2. How to Handle Trademark Duplication or Similarity
When a company’s trademark is assessed as identical or confusingly similar to another, it is essential to take a legally sound and strategic approach to avoid rejection, disputes, or negative business impacts.
2.1. If the Application Is Rejected
When a trademark is refused registration due to duplication or similarity with an existing one, the applicant can consider the following steps:
– Conduct a comprehensive trademark search: Use the IPVN’s public database or professional search services to understand the reason for rejection and the scope of the existing mark’s protection.
– Modify the mark: Adjust the name, logo, or add distinctive elements (color, layout, slogan, etc.) to reduce confusion.
Change product/service classes: If duplication occurs in a specific class, consider switching to another class that aligns with the business but does not infringe existing rights.
– Request cancellation of unused trademarks: Under Article 95 of the Intellectual Property Law, if a registered mark has not been used for five consecutive years, you can request the IPVN to cancel it, paving the way for a new, legitimate registration.
2.2. Trademark Disputes with Third Parties
If a business discovers that another party is using or registering a mark identical or confusingly similar to its own, it can act through the following measures:
– Negotiation or mediation: This is the preferred approach to save time and cost. The parties may agree on adjustments, coexistence, or limited use areas.
– Filing an opposition or lawsuit:
- If the opposing mark is still under publication, the business can file an opposition with the IPVN.
- If the mark has already been registered, it can file a complaint or initiate a lawsuit at a competent court under Article 198 of the Intellectual Property Law to request cancellation or stop the infringement.
– Collect evidence: Proof of prior use or the mark’s reputation (e.g., invoices, advertisements, contracts) is crucial when resolving disputes.
If another business imitates your trademark, you can:
– Send a cease-and-desist letter (warning of infringement);
– File a complaint with the IPVN or the Market Surveillance Authority;
– Initiate a lawsuit in court under Article 198 of the Intellectual Property Law, if necessary.
2.3. When Both Trademarks Are Registered
In some cases, both trademarks coexist legally but may still cause consumer confusion or ownership conflict. In this situation, the business should:
– Consider trademark coexistence agreements: The parties may enter into a written coexistence agreement if there is no direct competition or serious confusion risk.
– Request revocation or invalidation: If the other party’s mark is not used properly, violates registration conditions, or causes significant confusion, the business may request revocation or invalidation under Articles 95 and 96 of the Intellectual Property Law.
3. Key Notes on Trademark Registration and Use
Registering a trademark is a crucial step in building a brand strategy. However, if done incorrectly, a business may face legal risks, rejection of protection, or even loss of rights over a trademark it has invested in. Below are important guidelines to help businesses prevent such risks effectively.
3.1. Conduct a Thorough Search Before Filing
Before submitting a trademark application, businesses should conduct a search through the Intellectual Property Office of Vietnam’s database or via professional trademark search services to identify whether the proposed mark is identical or similar to any previously registered mark.
A comprehensive search helps avoid:
– Application rejection due to duplication;
– Legal disputes after the mark is already in use;
– Costly rebranding or redesigning efforts.
3.2. Do Not Use a Trademark Without Clarifying Its Legal Status
Using a mark without confirming its legal status — for example, not properly searched, not filed, or currently under dispute — poses a risk of infringing others’ intellectual property rights, which may result in:
– Orders to cease use or pay damages;
– Loss of brand reputation in the market;
– Significant costs for redesigning packaging, logos, and brand identity.
Therefore, businesses should only use a mark after it has been searched and/or officially filed for registration.
3.3. File as Early as Possible
Under the “first-to-file” principle stipulated in Article 90 of the Intellectual Property Law, trademark ownership belongs to the first applicant among identical or similar filings. Hence:
– Early filing protects the brand from misappropriation;
– Provides a clear legal advantage in potential disputes;
– Facilitates marketing and commercialization activities confidently.
3.4. Maintain Use After Registration
A common mistake is registering a trademark but not using it. According to Article 95 of the Intellectual Property Law, if a registered trademark is not used continuously for five years, third parties may request cancellation of its validity. Therefore:
– Use the trademark regularly and for its registered purposes;
– Keep evidence of use, such as invoices, packaging, contracts, or advertisements;
– If only part of the product/service classes are used, consider filing a modification to avoid partial cancellation.
4. International Trademark Registration: What Businesses Should Know
For companies planning to expand abroad, international trademark registration is a vital step. The Madrid System allows filing a single international application covering multiple countries. Businesses should note:
– Conduct similarity searches in each target country;
– Establish trademark rights in Vietnam before expanding internationally;
– Be mindful of language and pronunciation, as meanings may vary or cause misunderstanding in other markets.
In today’s competitive environment, having a trademark rejected for duplication or confusing similarity not only results in loss of protection but also affects business operations, reputation, and future market expansion.
Many companies spend substantial time and resources rebuilding their brand identity due to failing to detect duplication risks early. Worse still, if a dispute arises with a previously registered trademark holder, the company may lose usage rights, be forced to change packaging or marketing materials, or even face litigation for infringement.
Therefore, proactively managing legal risks related to trademarks is an indispensable part of brand governance. Instead of waiting until rejection or conflict occurs, businesses should:
– Conduct a comprehensive trademark search before filing;
– Seek intellectual property lawyer assistance to assess risks and suggest timely adjustments;
– Apply legal measures such as modification, coexistence agreements, opposition, or cancellation of infringing trademarks to protect legitimate rights.
LexConsult & Partners – Your Trusted Legal Partner in Brand Strategy
With an experienced team of lawyers specializing in intellectual property and brand strategy, LexConsult & Partners provides comprehensive legal services, including:
– Trademark search and registration feasibility assessment;
– Application preparation and filing with the Intellectual Property Office of Vietnam;
– Legal advice on application amendments, refusals, or oppositions;
– Representation in trademark disputes, coexistence negotiations, and cancellation requests.
Contact LexConsult & Partners today for expert legal guidance to save time, minimize risk, and protect your brand assets effectively and sustainably.
LexConsult & Partners – Strategic Legal Companion for Your Intellectual Property Assets.
📞 Hotline: 0938 657 775
📧 Email: info@lexconsult.com.vn
