Differences between trademarks, trade names, and geographical indications

Trademarks and other industrial property objects have many similarities. However, with many similarities, many people are still confused between brands and these objects. Viet An Law Firm synthesizes relevant legal issues to help customers recognize differences between trademarks, trade names, and geographical indications in the most specific way.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented in 2009, 2019, 2022.
• Decree 103/2006/ND-CP detailing and guiding the implementation of a number of articles of the Intellectual Property Law on industrial property.

What is a trademark?

The Model Law of the World Intellectual Property Organization (WIPO) in 1967 for developed countries (hereinafter referred to as the Model Law), a trademark is construed as follows:

“A sign used to distinguish goods or services of an industrial or commercial enterprise or of a group of such enterprises. This sign may be one or more words, letters, numbers, images, or symbols, color or combination of colors, form or special presentation on the packaging or packaging of a product. This sign may be a combination of many of the above. Trademarks are only accepted. protection, if it has not been used by a person or business other than the owner of the mark or the mark, is not identical or confusingly similar to another previously registered trademark for the same type of goods.”

Inheriting the content of the Model Law, the World Trade Organization has issued the TRIPs Agreement on trade-related aspects of intellectual property rights. Accordingly, Clause 1, Article 15, Section 2 of this Agreement provides:

“any sign, or any combination of them, capable of distinguishing the goods or services of one enterprise from those of other enterprises. Such signs (which may be special characters such as names of persons, letters, numbers, figurative elements and combinations of colors and any combination thereof) are likely to be posted sign is a trademark”.

It can be seen that the provisions of the TRIPs Agreement have somewhat generalized to the concept of a mark, not merely a list of each sign constituting a mark. Therefore, it should be recognized that a trademark is any combination of signs capable of distinguishing the goods or services of one undertaking from the goods or services of another enterprise. Signs can be numbers, letters, names, or a combination of colors…

According to Vietnamese law, based on Clause 16, Article 4 of the Law on Intellectual Property of 2005, a trademark is understood as “a sign used to distinguish goods and services of different organizations and individuals”.

Difference between trademark and trade name

Trade names and trademarks are the two most confusing objects of industrial property. The Law on Intellectual Property stipulates in Clause 21, Article 4 as follows: “A trade name is the name of an organization or individual used in business activities to distinguish a business entity bearing that name from another business entity other businesses in the same field and business area.”

Thus, trade names are similar to trademarks in that they perform a distinguishing function. However, trademarks and trade names can be distinguished through the following characteristics:

Firstly, regarding the function

• The function of a trade name is to distinguish and personalize one business entity from another. The distinction between business entities is only established when in the same field or business area there are many business entities operating.
• Trademarks are signs to distinguish products and services. An enterprise can own and use many different trademarks to distinguish its goods and services from those of other enterprises.

For example: Samsung Company has phone trademark such as: Galaxy Note 3, Galaxy S6, A3,… Meanwhile, a trade name must include words, and pronounceable numbers and a business only has a trade name. Example: Vietnam Joint Stock Commercial Bank For Industry And Trade (VIETINBANK)

Second, regarding self-protection

• The trade name itself can be automatically protected (if it meets the prescribed criteria) without registration procedures (Clause 3, Article 6 of Decree 103/2006/ND-CP detailing and guiding the implementation of a number of articles of the Intellectual Property Law on industrial property).
• For trademarks, it is mandatory to go through the process of filing an application for registration (except in the case of a well-known mark) and examination.

Third, regarding the transfer

• Trademarks can be licensed through a License Agreement.
• Trade names may only be transferred when the whole production and business establishment is transferred.

Difference between trademark and geographical indication

A geographical indication is defined in Clause 22, Article 4 of the Law on Intellectual Property 2005: “A geographical indication is a sign indicating that a product originates from a specific region, locality, territory or country”.

Why is trademark registration necessary?

Ensure legal and legitimate interests for trademark owners

• Ownership of a trademark is created after the subject successfully completes the registration of trademark protection. Successful registration is when the competent state agency issues a Trademark Registration Certificate. This certificate provides an important legal basis for the owner, giving them the exclusive right to use the mark for business purposes.
• These rights allow the owner to use the trademark to mark products, packaging, services, and even in business transactions. This helps create awareness and credibility for their brand.
• In addition to private use, the owner also has the right to transfer trademark ownership to another person or transfer the right to use it, usually done through legal contracts. These activities can bring financial or business cooperation benefits to the owners.

Eliminate risks and create favorable conditions for individuals and organizations when expanding business activities to foreign markets

When a trademark has been registered for protection in a foreign market, it means that the legal status of the owner of the trademark will be protected by the laws of the host country. This is the basis for owners to feel secure to invest and develop their trademarks in that market, avoid the risks of trademark disputes, as well as create favorable conditions to eliminate acts of making counterfeit goods, and imitation products bearing their trademarks.

Registration service for protection of industrial property rights of Viet An Law

Viet An Law stands in the top ranks of Law Firms and Intellectual Property Representatives in Vietnam, with a team of Professional Lawyers and Consultants, who possess high qualifications and are ready to provide clients all accurate and complete information on the procedures related to the establishment of intellectual property rights.

We provide the following diverse services:

• Preliminary consultation on issues related to the establishment of intellectual property rights.
• Detailed advice on priority rights in the field of intellectual property.
• Drafting and preparing necessary documents for copyright registration, patent registration, industrial design registration, trademark registration, and many other services related to Intellectual Property at competent authorities’ permission.
• Monitor registration progress, handle any problems that arise during registration, and provide progress reports to customers.
• Representing customers in responding to unreasonable dispatches in accordance with the law on Intellectual Property.
• Receive and return results from competent state agencies, ensuring on-time.

With the support of Viet An Law, the process related to Intellectual Property will become easier and more reliable than ever.

Above is an article detailing the differences between trademarks, trade names, and geographical indications. If you have any difficulties related to intellectual property law, please contact Viet An Law Firm for detailed advice!