There have been many cases where the trade name of an enterprise is identical or confusingly similar to a protected trademark of another subject. This leads to a conflict of rights with pre-existing intellectual property rights (“IPRs”). So, how to protect the rights and interests of IPRs holders when detecting an enterprise with the same trade name as a protected trademark?
1. Legal regulations to prevent trade names from infringing on protected trademarks
The laws on enterprises have specific regulations to prevent naming an enterprise from infringing the IPRs of other subjects. Article 19.1 of Decree No. 01/2021/ND-CP stipulates enterprises are prohibited to use a protected trade name, trademark, or geographical indication of an entity as part of an enterprise’s proper name unless it is accepted by the owner of such protected trade name or trademark. Decree No. 01/2021/ND-CP also encourages enterprises before registering a name to check the database of industrial property authorities for a registered trademark and geographical indications.
2. Criteria for determining a trade name infringing on a protected mark
In order to be legally protected in the name of a trade name, an organization or individual must satisfy the conditions specified in Article 78 of Law on Intellectual Property 2005, amended on 2007 (“IP Law 2005”), including: (i) It consists of a proper name; (ii) It is not identical with or confusingly similar to a trade name which was used earlier by another person in the same business sector and locality; and (iii) It is not identical with or confusingly similar to another person’s trademarks or a geographical indication which was protected before the date of use of such trade name.
Therefore, to be able to conclude whether a trade name infringes a protected trademark or not, it should be based on at least the following two factors:
(1) Is the use of a trade name within the legal rights of the user? To come to conclusions on this matter, it is necessary to consider whether trade names and trademarks are protected by law and protected to what extent; and
(2) Is the trade name identical or confusingly similar to a protected trademark of another subject?
3. Trademark protection when a trade name infringes a protected trademark
In fact, Vietnam’s law on trademark protection follows the principle of first-to-file, meaning that priority is given to the earliest applicant. Accordingly, when a trade name contains an infringing element of a previously protected trademark, the trademark owner can protect IPRs by the following measures:
3.1. Requesting trade name users to terminate infringing acts
When it is clear that the infringing act of trade name users is determined, trademark owners can request any organization or individual who commits an act of infringement of holders’ IPRs to terminate such act, make a public apology or rectification and pay damages.
3.2. Dealing with infringements of IPRs by application of civil remedies
If the request mentioned in Section 3.1 above has no results or the results are not as expected, the trademark owner can file a lawsuit to request the court for applying the following civil remedies in dealing with organizations and individuals who have committed acts of infringement of trademarks:
(i) Compulsory termination of the infringing acts;
(ii) Compulsory public apology and rectification;
(iii) Compulsory performance of civil obligations;
(iv) Compulsory payment of damages for loss; and
(v) Other civil remedies provided by law.
In addition, the trademark owner has the right to request a Court to prohibit the infringing party from using that trade name or request the Business Registration Office to require the enterprise whose name infringes its trademark to change its name.
3.3. Dealing with infringements of IPRs by application of administrative measures
When clearly determining the infringing act of the trade name user, the trademark owner may file a request to a competent agency for imposing administrative penalties for violations.
3.4. Dealing with infringements of IPRs by application of criminal measures
Any individual who commits an act of infringement of intellectual property rights involving a criminal element shall be criminally prosecuted in accordance with the criminal law.
When the trademark owner has grounds to determine that there is an infringing act in accordance with the provisions of Article 226 of Criminal Code 2015, he or she may request the competent authority to prosecute a criminal case.
Read more: Overview of dealing with infringement of intellectual property rights in Vietnam.
Should you have any questions about the above contents, please revert to BLawyers Vietnam at consult@blawyersvn.com. We are more than happy to hear from you!
Date: 13 January 2022
Writer: Huy Nguyen
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