Can two companies in Vietnam use the same trademark?

A trademark is a valuable intangible asset of every business, playing an important role in building image and creating trust with clients. Thus, can two companies in Vietnam use the same trademark? The answer is not simple and depends on many different factors. Using the same trademark requires careful consideration in terms of law, commerce, and business strategy. In the following article, Viet An Law will help you better understand the legal issues related to whether two companies can use the same trademark in Vietnam, thereby making the right decision for your enterprise.

When can two companies in Vietnam use the same trademark?

Under Vietnamese law, two companies can use the same trademark in certain specific cases. Typically, this occurs when:

• Use of collective mark
• Use of certification mark
• Trademark licensing
• Partial transfer of trademark ownership

Use of a collective mark

Under Clause 17, Article 4 of the Intellectual Property Law 2005, amended and supplemented in 2022:

“Collective mark means a mark used to distinguish goods or services of members of an organization which is the owner of such mark from marks of non-members of such organization”

The right to register collective marks as stipulated in Clause 3, Article 87 belongs to collective organizations of organizations and individuals conducting production and business in that locality; for place names and other signs indicating the geographical origin of local specialties of Vietnam, registration must be permitted by a competent state agency.

Currently, collective trademarks in Vietnam such as Uoc Le Ham, image; Ba Vi Hill Chicken, image; Mia Chicken Son Tay, image; Lang Vong Green Rice, hinh, are all registered by Cooperatives, socio-political organizations in Vietnam such as Farmers’ Association, Traditional Craft Village Association, Animal Husbandry Association, etc. for members to use together. However, in reality, these members are often formed in the form of small cooperatives, and business households, a few are established and operate as companies.

Use of certification mark

The concept of the certification mark is stipulated in Clause 18, Article 4 of the Law on Intellectual Property as follows:

“Certification mark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services to certify the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, and the quality, accuracy, safety or other characteristic of goods or services bearing such mark.”

According to Clause 4, Article 87 of the Law on Intellectual Property on the right to register trademarks, organizations with the function of controlling and certifying the quality, characteristics, origin, or other criteria related to goods and services have the right to register certification trademarks on the condition that they do not produce or trade in such goods and services; for place names and other signs indicating the geographical origin of local specialties of Vietnam, the registration must be permitted by a competent state agency.

Most of the certification marks in Vietnam such as Vietnam Value, image; Ba Vi tea, image; Safety Vegetable Ha Noi, image, are registered and licensed by competent authorities such as the Vietnam Ministry of Science and Technology, the Ministry of Agriculture and Rural Development, the Ministry of Industry and Trade, the People’s Committees of districts/counties, and the Plant Protection Department.

A few certification marks are owned by non-governmental organizations, such as the trademark VINACERT CERTIFICATION VNC, image owned by VinaCert Certification and Inspection Joint Stock Company. At that time, companies wishing to share a certification mark must obtain the owner’s consent based on common regulations.

The agreement to use a certification mark together must be based on the regulations for using a certification mark with the content as prescribed in Clause 5, Article 105 of the Law on Intellectual Property, including information on the conditions and characteristics of goods and services as the basis for consideration, methods for evaluating and controlling the use of a common mark, and related costs of using a common mark.

Trademark licensing

Pursuant to Clause 1, Article 141 of the Law on Intellectual Property, the transfer of the right to use industrial property objects (also known as licensing) is regulated as follows: “Licensing of an industrial property object means permission by the owner of the such industrial property object for another organization or individual to use the industrial property object within the scope of the owner’s right”.

Trademark licensing is understood as the trademark owner allowing another legal entity or individual to use his trademark in a certain territory for a certain period, in which the licensed trademark must belong to the licensor.

The transfer of the right to use a trademark must be carried out in the form of a written contract (hereinafter referred to as a contract for the use of industrial property objects). There are three types of License Contracts, namely:

• The exclusive license contract is a contract under which the trademark owner is not allowed to sign a trademark license contract with any third party and is only allowed to use the trademark with the permission of the licensee/the Licensee has the exclusive right to use the industrial property object within the scope and term of the license.
• A non-exclusive contract is a contract under which, within the scope and term of the transfer of the right to use, the licensor still has the right to use the trademark and the right to sign a non-exclusive trademark license contract with others;
• A secondary trademark license contract is a contract under which the licensor is the person to whom the right to use that trademark is transferred under another trademark license contract.

Procedures for registering trademark licensing in Vietnam will be conducted at NOIP (National Office of Intellectual Property):

Partial transfer of trademark ownership

Partial trademark transfer is one of the forms of trademark transfer. In this case, the trademark owner transfers part of his ownership to another individual but still retains ownership. This form of assignment will be agreed upon by the parties in the trademark co-ownership contract.

Principles of trademark transfer:

• The owner of industrial property rights may only transfer his rights within the scope of protection.
• The transfer of rights to a trademark must not confuse the characteristics or origin of the goods or services bearing the trademark.
• The right to a trademark can only be transferred to an organization or individual that meets the conditions for a person entitled to register that trademark.

After registering the trademark assignment contract and being recognized by the NOIP, the Trademark Registration Certificate will simultaneously record the names of the companies as co-owners and have the right to legally use the trademark. This is usually a common method for joint enterprises implementing joint projects, or multinational and transnational companies today.

The above article answers the question: Can two companies in Vietnam use the same trademark? If you need advice on regulations related to intellectual property, please contact Viet An Law for the best support.