IP Infringement to trade (business) names in Vietnam

According to the Intellectual Property Law, a trade name is one of the objects subject to intellectual property rights and the ownership of a trade name is established based on the legal basis of that trade name. There are many acts of infringement of rights to trade names and our country’s current law also specifically regulates acts of infringement to protect intellectual property rights of trade names. In the article below, Viet An Law will present the legal content related to IP infringement to trade (business) names in Vietnam.

What is the trade name in Vietnam?

Article 4, Clause 21 of the Intellectual Property Law 2005, as amended and supplemented in 2009, 2019, and 2022 stipulates that a trade name is the name of an organization or individual used in business activities to distinguish the business entity bearing that name from other business entities in the same business area and region. Additionally, the business area is regulated as the geographical area where the business entity has customers or has a reputation.

According to the provisions of Article 3 of the Intellectual Property Law, trade names are one of the objects of industrial property rights, and industrial property rights for trade names are established based on practice. legally use that trade name corresponding to the area and business field without having to carry out registration procedures.

Conditions for protecting IP rights for trade names

According to the provisions of Article 76 of the Intellectual Property Law, the general condition for a protected trade name is that a trade name is protected if it is capable of distinguishing the business entity bearing that trade name from other business entities. in the same field and business area.

In addition, Article 78 of the Intellectual Property Law stipulates that a trade name is considered distinctive if it meets the following conditions:

• Contains a proper name element, except where widely known by use;
• Not identical or confused with a trade name that others have previously used in the same field or business area;
• Not identical or confusingly similar to another person’s trademark or to a protected geographical indication on the date that trade name is used.

Objects that are not protected as trade names include: names of state agencies, political organizations, socio-political-professional organizations, social organizations, and socio-professional organizations or other entities not related to business activities will not be protected as trade names.

Note: Even though a trade name is subject to industrial property rights, it is not protected in the form of a certificate. Trade names do not need to carry out protection registration procedures at the National Office of Intellectual Property but are recognized through use in business activities.

Acts of infringing intellectual property rights on trade names

According to Article 129, Clause 2 of the Intellectual Property Law, all acts of using trade indications are identical or similar to another person’s trade name that has been used before for the same or similar type of good, or service that confuse business entities, business establishments, and business activities under a trade name are all considered infringements of trade name rights.

Determination of infringement of trade name rights is assessed based on the following factors:

• Signs that are identical or confusingly similar to a protected trade name;
• Identical or similar products and services;
• Confusing business entities, business establishments, and business activities under trade names.

In addition, determining acts of infringement of rights to trade names must comply with the provisions of Article 72 and Article 79 of Decree 65/2023/ND-CP.

Factors determining infringement of rights to trade names

According to Article 79 of Decree 65/2023/ND-CP, to determine the infringement of rights to trade names, it is necessary to rely on the following factors:

• Elements that infringe on the rights to trade names are expressed in the form of commercial indications attached to goods, goods packaging, means of service, transaction documents, signs or advertising means, and other means of trade. Other business means are identical or similar enough to confuse with the protected trade name.
• The basis for considering the element of infringement of trade name rights is that the scope of trade name protection is determined based on evidence demonstrating the legal use of the trade name. It specifically defines the subjects, establishments, activities, and business products and services bearing the trade name.
• To determine whether the suspected sign is an element of infringement of the rights to a trade name, it is necessary to compare that sign with the protected trade name and to compare goods and services bearing the mark within the scope of protection based on the following grounds:
• Signs suspected of being identical or similar enough to confuse with a protected trade name, in which a sign is considered identical to a protected trade name if it is similar to the trade name in terms of word structure, pronunciation as well as the transliteration of letters confuse users about business entities, business establishments, and business activities under protected trade names;
• Products and services bearing suspected signs are considered identical or similar to products and services bearing protected trade names if they are the same or similar in nature, function, use, and consumption channels.

Basis for determining infringement of rights to trade names

Infringement factor

The basis for considering the element of infringement of rights to a trade name is that the scope of trade name protection is determined based on evidence demonstrating the legal use of that trade name, which determines business entities, business establishments, business activities, and products or services bearing trade names, specifically:

• Evidence proving that the trade name is used in the business area (for example, used where there are customers, partners, or reputation through advertising, marketing, or distribution) in the field of business. Legal businesses are recorded in the business household registration certificate, enterprise registration certificate, investment registration certificate, and business eligibility certificate for conditional business lines, registration of tax code, the charter of the company registered with the competent authority or other legally valid documents;
• The time of starting to use and the process of using that trade name has been known to customers and partners through goods, services, and business activities. For example: trade names used on goods, sales contracts, purchase orders, business transaction documents, advertising materials, customs declarations or tax payment documents, and other transaction documents.

Evidence of legal use of trade name in business

According to Article 124 of the Intellectual Property Law, the use of trade names is the performance of acts for commercial purposes by using trade names to identify oneself in business activities and expressing trade names in transaction documents, signs, products, goods, packaging, and means of providing advertising services.

Evidence of legal use of trade names includes:

• Business household registration certificate/Enterprise Registration Certificate;
• Investment Registration Certificate;
• Business License;
• Registration tax code;
• The company’s charter is considered evidence proving the legality of business activities under a trade name.

The name of a business establishment or enterprise recorded in the licenses mentioned above is only considered a trade name when there are documents proving that the name of such business establishment or enterprise is used in actual business activities and meets all protection conditions according to the provisions of the Intellectual Property Law.

Penalties for IP infringement to trade (business) names in Vietnam

Article 11 of Decree 99/2013/ND-CP, as amended and supplemented by Decree 126/2021/ND-CP stipulates penalties for administrative violations in the field of industrial property, fines for acts of infringement rights to specific trade names: fines from a minimum of 500,000 VND to a maximum of 250,000,000 VND for violations depending on the different levels of violations.

In addition, when violating the rights to trade names, there are additional penalties such as suspension of business activities of infringing goods and services from 1 month to 3 months for violations of Clause 15 of Article 11 of Decree 99/2013/ ND-CP and takes measures to overcome consequences according to regulations.

Note: The fine for the above behavior is the fine for individuals, the maximum fine is 250,000,000 VND. For the same violation but for an organization, the fine is double the fine for an individual, with a maximum of 500,000,000 VND.

IP Protection Services of Viet An Law

• Consulting and legal support on issues related to infringement of rights to trade names, trademark, patent, industrial design and other IP assets;
• Consulting on appropriate dispute resolution methods for rights infringement;
• Guide procedures and lawsuit documents to protect legitimate rights and interests when there are signs of infringement of trade name rights;
• Trademark registration, patent registration, industrial design registration,…
• Representing clients to handle infringements and participate in resolving disputes over rights to trade names.

If you have questions or legal needs related to intellectual property rights infringement on trade names, please contact Viet An Law – IP Firm, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat), for the best advice and support!