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The Registrability Of Media-Hype And Sensational Marks – Intellectual Property

Given the highly polarized US politics, one can hardly imagine a scenario in which Donald Trump and Joe Biden would appear together outside a stage of debate. Surprisingly, these names have been brought together in a Vietnamese trademark application filed during the heat of the 2020 US presidential election.

This “TRUMP-BIDEN” mark was submitted for food, beverage and restaurants in grades 29, 30 and 43 – items unrelated to the two presidents. Obviously, the only reason for such a filing was to grab consumer attention and ride a wave of popularity, albeit in a rather unusual way.

When looking for new brand names and slogans, attention-grabbing entrepreneurs often take inspiration from celebrities and current events. They can try to register their ideas as trademarks while the influence of the person or event is still strong. Others take a different, but similarly sensational, approach by making markings laden with ambiguity in hopes of sneaking past the gatekeepers.

While the idea of ​​registering prominent or high-profile brands can be beneficial to business, is it possible under Vietnamese IP laws?

Names of famous people

In addition to the aforementioned TRUMP-BIDEN brand, a quick search of the IP Office of Vietnam’s public database reveals several dozen “TRUMP” brands, most of which were submitted after Donald Trump’s inauguration in 2017. The decisions of the IP Office have shown that brands explicitly referring to the former president (like the full DONALD TRUMP brand) are denied protection, but more subtle indicators can survive until registration like DONTRUMP (Reg. 327991), BETATRUMP (Reg. No. 329952), TRUMP GOLD (Reg. No. 313441), TRUMP WATER (Reg. No. 355166 – see picture below) and even TRUMP alone (Reg. No. 342771).

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According to Article 73.3 of the IP Law, “Characters that are identical or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous people of Vietnam or abroad” are not protected as trademarks, regardless of the goods / services for … have applied. Because of this, the “DONALD TRUMP” trademark has been rejected, but it only seems to apply to obvious cases, such as when the famous person’s full name is exploited. If only part of the name is used it could still be accepted. From that point of view, it is likely that the TRUMP-BIDEN brand could be viewed as inherently distinctive as it does not include the full names or pictures of the presidents.

Another interesting trademark derived from TRUMP can be found in a pending application for TRUMPKIDS KINDERGARTEN:

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While the Trump inspiration in the faceless image is undeniable, could this mark still be considered registrable? It consists of the name and image of a famous person, but both are stylized and combined with other elements. In our opinion, the brand will likely get through. If so, this is an example of a clever way to capitalize on someone’s fame while circumventing the prohibitions of Article 73.3.

On the other hand, names or characters that resemble those of well-known people with an extremely negative reputation – for example war criminals or terrorists – can be rejected for violating social ethics and public order under Article 8.1 of the IP Act, regardless of how “creative” the trademarks are. The BILLADEN brand for class 05 pesticides was rejected because it was confusingly similar to the name Osama Bin Laden. Although the plaintiff alleged that BILLADEN was imaginative and in no way related to the notorious terrorist, the Intellectual Property Office held that the registration of the mark was contrary to morality and public order and maintained its refusal.

Vulgar or sensational slogans

Some companies, especially in youth-oriented sectors like video games or beverages, use ridiculous, flashy brands in hopes of getting more exposure for their product or service. One of Vietnam’s most popular craft breweries has applied for a number of tongue-in-cheek bilingual brands for Class 32 beer, including BOM VU DU XAI [roughly “breast augmentation big
enough to use”] Fifty-two TRIPLE Z; COI DO RA [take
off your clothes] LET’S GET NAKED; and AN BANH TRA TIEN
[slang for “buy/use prostitute”] NO COOKIE, NO NOOKIE. While such names are common in the free-roaming craft beer industry, it remains to be seen whether they will be registrable in Vietnam.

Although the trademarks are pending without a statement from the Intellectual Property Office, protection has been denied in a similar case. The stylized trademark “NUDE” for trading services with food, clothing, household appliances, etc. in class 35 was rejected because of another violation of social ethics and public order.

The evaluation criteria are very subjective and depend on the point of view of the respective examiner. For example, we found that the FASCIST trademark was successfully registered in Class 05 for insecticides, while DAP DA (literally “hit the rock” but slang for “use drugs”) was registered in Class 43 for restaurant services. Based on this precedent, it has become very likely that the pending trademark LET’S GET NAKED will be rejected, but the others will survive pending registration due to their indirect wording.

Our perspective

We respect our customers’ decisions, but adhere to certain standards. While some phrases, symbols, and other sensitive components can evoke strong emotions that increase sales of the goods they refer to, there is also a need to set limits. As Vietnam is an Asian country with high standards of social ethics, foreign companies should be careful when choosing which brands to use in the country. The purpose is not only to get their trademarks registered, but also to get them accepted by the Vietnamese mass consumers.

In addition, media hype brands often have a short shelf life, while the registration process in Vietnam is lengthy, usually 20-24 months. By the time the trademark registrations are granted, it may be too late to get the public’s attention. In the end, investing in well thought-out, sustainable brands is always the right choice.

This article appeared first in Intellectual Property Management.

The content of this article is intended to provide general guidance on the subject. Expert advice should be sought regarding your specific circumstances.

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