Two trademarks have the same name exist together. Duplicate marks are not uncommon. The question is, can they coexist without dispute? If yes, are there any conditions?
Duplicate trademarks under the laws of some countries around the world
If the trademark is only used within a limited geographic area, the problem is easy to solve.
In France, towns with train stations often have a snack restaurant (Buffet de la gare).
The names of these stores are usually the names of the restaurant owner’s family or the owners. If these are common names, duplication is easy to occur. However, disputes rarely arise. Because each of these restaurants is attached to a station. That means these duplicate marks are used within clearly different geographies. So these marks can coexist in peace.
The problem only arises when traders have overlapping business areas.
Under some common law systems such asthe UK, US, and Hong Kong law systems, there are two ways to register a trademark that coincides with a registered trademark.
Have an agreement from the owner of the trademark
The first way is getting approval from the owner of the mark. This approval may have two forms: written approval or co-existence agreement. For example, under Hong Kong law, these two forms of approval are all recognized. Some issues need to be considered are: the scope of the approved goods or service group; authority of the party who sign to approve; conditions of approval.
A good example of this approval way is the agreement Apple Corps and Apple Computer.
In 1991 in the US, the two companies signed an agreement allowing the two Apple marks to coexist. Accordingly, the Apple Corps has exclusive rights to the Apple mark for music products. While Apple Computer has exclusive rights to electronic products, computer software, data processing and transmission services. Everything was fine until Apple Computer released iPods and ITunes. Apple Corps takes the dispute to court. The court judged thatApple Computer did not violate the agreement. Because the Apple Computer brand is attached to the music player softwareather not music products such as vinyl records, discs
CD. The court believed that consumers would not confuse between music products (songs, albums) and music applications or music devices.
Use at the same time with the honest
The second way is using at the same time with the honest. If a mark coincides with a registered mark but it has been used honestly, so it can still be protected.
According to Hong Kong case laws, there are two conditions that must be met in this case.
Firsly, the concurrent use is honest or not. Factors shall be considered are: usage time; cargo; area of use; and the integrity of the owner of the trademark.
Secondly, interests of related parties should never be damaged. The parties are the consumers and the government. Consumers’ interests must be weighed against possible confusion. The interests of the applicant must be considered because accepting the trademark protection will set the stage for any disputes that the applicant may encounter.
Duplicate trademarks under Vietnamese law
In Vietnam, two duplicate trademarks also can co-exist and be protected in the following cases.
Firstly, these two trademarks are registered for two different groups of goods or services.
According to Article 74 of the Intellectual Property Law, a mark which coincide with others still has distinguishable ability, if these two marks are registered for different groups of goods and services.
Particularly for the control mark which is a well-known trademark, the duplicate trademark shall still be rejected even it is registered for different goods or services groups.
Secondly, with the approval of the owner of the protected trademark.
Similar to the case mentioned above. Applicants in Vietnam can get the approval of the owner of the protected trademark. As usual, to get approval, the applicant shall have to trade something. It should be noted that the approval of the owner of the protective certificate should only be get, not from the pre-application owner. Because, people can’t give us anything they don’t have. On the other hand, a previously filed application may not have been approved for protection.
Prevention is always better than cure. It is not a waste of time to performing a trademark lookup before applying for a trademark registration.