Losing a trademark can lead to a market access failure. Products that are legitimately manufactured by the authorized trademark owner can be mistakenly considered as “fakes” if the trademark is obtained by a theft. Additionally, individuals who speculate on trademarks also manipulate registered trademarks as a means to diminish the genuine trademark owner. The theft of intellectual property and infringement of brands are becoming more intricate and advanced.
Definitions and difference between trade name and trademark
Intellectual Properties Law
Trademarks and trade names are two subject matters protectable under Vietnam’s IP Law, yet their protection mechanisms differ significantly.
+ Trade mark:
In Vietnam, trademarks are protected through the issuance of protection titles by IP VIETNAM. This means that the mark owner’s rights are established only upon a successful registration, except in the case of a well-known mark.
While a trade name enjoys swift and uncomplicated protection without the need for formal registration, a trademark has to go through a 2-3 year examination process from filing to be mature into registration in Vietnam. Certain parties exploit and misuse this mechanism for establishing trade name rights by expediently setting up companies with names identical or remarkably similar to registered trademarks. Consequently, they assert ownership and use the name in commercial activities, which frequently results in disputes over intellectual property rights with the legitimate trademark holder.
+ Tradename:
Trade names enjoy protection without the need for filing or formal registration. The law grants automatic protection to a trade name without any additional registration obligations. To establish the right to a trade name, it only needs to satisfy three requirements: (i) it is not identical/confusingly similar to the prior trademarks and trade names, (ii) it has a proper name, and (iii) it have actively used it in legitimate commercial activities.
Other Decree, Circular:
You can find the guidelines for handling conflicts arising from trademarks and trade names in the Joint Circular No. 05/2016/TTLT-BKHCN-BKHDT. This circular covers the resolution of situations where enterprise names violate intellectual property rights. Additionally, Decree 01/2021/ND-CP, which focuses on business registration, provides further guidance on these disputes.
A core principle in resolving conflicts related to intellectual property rights, specifically when trademark rights clash with trade name rights, is the importance of respecting pre-existing rights. Article 17 of Decree 103/2006/ND-CP provides a detailed explanation of this principle, as stated below: [Article 17. Respect for pre-established rights: 1. Industrial property rights may be invalidated or banned from use if they conflict with the prior IP rights of other organizations or individuals.]
Based on experience, it is difficult to determine whether the subsequent trade name, established later but widely used alongside an existing trade name or trademark for a significant period of time, has the potential to cause confusion among the public and harm the owner of the prior trade name or mark. Law enforcement agencies often take the standpoint that the extensive use of the subsequent trade name can create a sense of uniqueness, thereby reducing the likelihood of confusion with the earlier trade names or trademarks. The enforcement authority may not accept the evidence and arguments presented by the original owner due to their one-sided and subjective nature, resulting from this perspective.
Using IP Law and Competition Law to prove the unfair competition
Competition Law:
Article 3, Clause 6 of the 2018 Competition Law defines unfair competition broadly as actions that a company carries out which go against principles of good faith, honesty, established business practices, and industry standards. These actions have the potential to harm the lawful rights and interests of other companies.
IP Law:
Clause 4, Article 4 of the 2005 Intellectual Property Law, amended in 2009, 2019, and 2022, recognizes the right to address unfair competition as an essential aspect of intellectual property (IP) rights. However, it is important to note that this provision limits the categorization of unfair competition as an infringement to cases falling under industrial property subjects, rather than encompassing all instances of unfair competition.
To determine whether a business name violates trademark rights or not, it is necessary to provide evidence that the use of the infringing party’s business name, as outlined in Article 130 of the IP Law, has caused confusion regarding the business entity, business activities, the origin of goods or services, geographical origin, method of production, characteristics, quality, quantity, or other attributes of goods or services, or the terms of supply of goods or services. A confusing business name refers to a name that includes signs (such as elements, presentation, combination of elements, overall impression on consumers) that are identical to or resemble the corresponding mark of the trademark owner for identical or similar goods or services.
Solution:
When requesting action against acts of unfair competition involving the use of confusing business names with trademarks, the party making the request (“The Petitioner”) must provide evidence that:
+ The Petitioner is the legal owner of the trademark being infringed upon and holds established rights to their trademark.
+ The infringing party has used a trade name that is confusingly similar to the registered mark on goods, product packaging, business materials, service vehicles, or advertising materials without the permission of the trademark owner.
In order to establish trademark infringement resulting from the use of confusing business names under intellectual property (IP) law, it is important to note that the specific trademark in question must properly registered and valid within Vietnam’s jurisdiction. In such cases, the provisions outlined in Article 130 of the IP Law pose challenges for the legitimate trademark owner in addressing the infringement. This applies even when the trademark, including pending registration applications, is not registered. In such situations, the aggrieved party may need to explore alternative legal avenues to protect their rightful rights and interests.
Using Enterprise Law to prove the unfair competition
Clause 1, Article 19 of Decree No. 01/2021/ND-CP, which governs the registration of enterprises in accordance with the Enterprise Law, clearly states that businesses must not include protected trade names, trademarks, or geographical indications owned by individuals or organizations in their enterprise name unless they have obtained prior authorization from the rightful owner of such trade name or mark.
Initiating the Request: When an intellectual property rights (IPR) holder identifies a trade name that infringes upon their trademark, they can start the process by submitting a formal written petition to the Enterprise Registration Office (ERO). This petition outlines the infringement concern and requests that the infringing enterprise change their business name in accordance with Clause 3, Article 19 of Decree 01/2021/ND-CP.
Required Documentation:
The IPR holder’s written request must be accompanied by the following documents (if applicable):
(i) An official conclusion from a competent Vietnamese authority confirming that the use of the trade name constitutes an infringement of industrial property rights.
(ii) Certificate of trademark registration, Certificate of geographical indication registration, an extract from the national register of protected trademarks and geographical indications issued by the relevant state authority responsible for industrial property, Certificate of international trademark registration protected in Vietnam issued by the state authority responsible for industrial property, or a license agreement for the relevant intellectual property subject matter if the petitioner is a licensee.
Review and Notification:
Upon receiving all the necessary documents, the ERO has 10 working days to evaluate the case. If the provided evidence is satisfactory, the ERO will issue a formal notification to the infringing enterprise. This notification instructs the infringing enterprise to change their business name within a period of 2 months from the date of notification. Copies of the submitted documents will also be included with the notification for reference.
Non-Compliance and Further Action:
If the infringing enterprise fails to register a name change within the prescribed 2-month period, the ERO will notify the appropriate Vietnamese enforcement agency to take action under the IP legislation.
Administrative Sanctions and Remedial Measures:
If the Vietnamese enforcement agency decides to impose administrative sanctions following the notification, it will require the infringing enterprise to take remedial steps, such as changing its name or removing the infringing element from its name.
In the event that the infringing party does not comply within the specified timeframe set by law, the Vietnamese enforcement agency will notify the ERO. Furthermore, the ERO has the authority to request a compliance report from the infringing enterprise when deemed necessary. Moreover, the ERO will actively encourage the enterprise to fulfill their reporting obligations. Additionally, the ERO will promptly inform the IPR holder about the results of handling the case.
Conclusion
Resolving disputes related to trade names and trademarks through legal proceedings is essential for business owners in Vietnam. Protecting their intellectual property rights is crucial for maintaining their market position and preventing unfair competition. By following the proper legal procedures outlined in Vietnamese laws and regulations, business owners can assert their rights and seek remedies against infringing parties. Clear guidelines and enforcement mechanisms provided by the Vietnamese government help ensure a fair and transparent process for resolving trade name and trademark disputes. Ultimately, these legal proceedings contribute to fostering a healthy business environment and safeguarding the interests of business owners in Vietnam.
HMLF is always available to offer assistance in understanding the procedures with authorities.
Harley Miller Law Firm “HMLF”
Head office: 14th floor, HM Town building, 412 Nguyen Thi Minh Khai, Ward 05, District 3, Ho Chi Minh City.
Phone number: +84 937215585
Website: hmlf.vn Email: miller@hmlf.vn