IP rights for trade names in Vietnam

The IP activities of a business are always associated with the name of that business. A trade name is an object of intellectual property rights and plays an important role in the development of a business. However, acts of infringement of trade name rights are happening more and more in life. In the article below, Viet An Law will provide clients with information related to IP rights for trade names in Vietnam.

Legal basis

• Law on Intellectual Property 2005, as amended and supplemented 2009, 2019, 2022;
• Decree 65/2023/ND-CP guiding the Intellectual Property Law on industrial property, protection of industrial property rights, rights to plant varieties, and State management of intellectual property;
• Decree 99/2013/ND-CP regulating penalties for administrative violations in the field of industrial property, as amended and supplemented by Decree 126/2021/ND-CP.

Distinguish the trade name in Vietnam

According to the provisions of Clause 21, Article 4 of the Intellectual Property Law, a trade name is the name of an organization or individual used in business activities to distinguish the business entity bearing that name from others in the same field and business area, which different from trademark and business names.

A trade name is an object of industrial property rights, under the scope of protection of the Intellectual Property Law, especially when placed in relationship with an enterprise’s trademark. Industrial property rights to a trade name are established based on the legal use of that trade name.

Some examples of famous trade names in Vietnam today:

• Lavie – Natural mineral water, abbreviation: Lavie Water;
• Trung Nguyen coffee.

Distinguish between trade names and business names

Conditions for IP protection for trade names in Vietnam

A trade name can be protected if it meets the following conditions:

• Able to distinguish between a business entity bearing that name and other business entities;
• Contains a proper name element, unless otherwise generally known;
• Not identical or confusingly similar to a trade name used by others in the same field and business area;
• Not identical or confusingly similar to another person’s trademark or to a geographical indication that was protected before the date that trade name was used.

Infringement of intellectual property rights for trade names in Vietnam

Infringement of trade name rights can be understood as any act of using a trade indication that is identical or similar to another person’s trade name that has been used before for the same type of product, service or product, similar services, confusing business entities, business establishments, and business activities under that trade name.

Elements of infringement of rights to trade names

According to Article 79 of Decree 65/2023/ND-CP regulating elements of infringement of rights to trade names, elements of infringement of rights to trade names include the following elements:

• 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, advertising means, and other business, identical or confusingly similar to the protected trade name;
• 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 supplied by the trade name owner, which specifically defines the business entity, business establishment, business activities, business field, and business area and the process of using the trade name;

To determine whether a suspected sign is an element of infringement of rights to a trade name or not, it is necessary to compare that sign with the protected trade name and compare the business entity, activities related to the suspected sign, the goods, and services bearing that sign with the goods and services of the protected trade name, based on the following grounds:

• The sign is suspected to be identical or confusingly similar to the protected trade name; a sign is considered identical to a protected trade name if it is similar to the trade name in word structure, including pronunciation and transliteration of the trade name; A sign is considered similar to a protected trade name if it is similar in structure, pronunciation, or transcription to the trade name, confusing consumers about the business entity or business establishment doing business under a protected trade name;
• Goods and services bearing suspected signs are considered identical or similar to goods and services bearing protected trade names if they are identical or similar in nature or function, use, and have the same channels. consume; or are related to each other in nature function or method of implementation.

Measures to handle acts of infringement of rights to trade names

The handling of infringement of trade name rights is new and specific, and can be resolved by the following measures:

Apply civil measures

Accordingly, the Court will apply civil measures to handle organizations and individuals that violate rights to trade names, including:

• Forced termination of infringing acts;
• Sorry, public correction;
• Performing civil obligations;
• Damages.

Apply administrative measures

Organizations and individuals that commit acts of infringing upon rights to trade names are forced to stop the act of infringement and are subject to one of the following administrative sanctions:

• Warning;
• Monetary fine;
• Suspension of business activities in the field in which the violation occurred for a period of time (additional sanctions may be applied).

Apply criminal measures

The party whose infringing act constitutes a crime will be prosecuted for criminal liability according to the provisions of criminal law.

Administrative penalty level

Pursuant to Article 11 of Decree 99/2013/ND-CP regulating penalties for administrative violations in the field of industrial property, amended and supplemented in Clause 10, Article 1 of Decree 126/2021/ND-CP, the level of administrative sanctions for acts of infringing rights to specific trade names are as follows:

• A caution or a fine of between 500,000 VND and 250,000,000 VND (depending on the value of infringing goods and services) shall be imposed for acts of trading; offers; transportation, including transit; keeping; displaying for sale goods or services infringing upon the rights to trade names;
• Fine equal to 1.2 times the prescribed fine corresponding to each violation but not exceeding 250,000,000 VND for one of the following acts:
• Production includes the design, manufacture, processing, assembly, processing, and packaging of goods that show signs of infringement of trade name rights;
• Ordering, assigning work, and hiring others to perform the above acts.
• Additional form of sanction: Suspension of part or all of production and trading of violating goods and services from 01 month to 03 months.

Remedial measures

• Forced removal of infringing elements and destruction of infringing elements;
• Forced destruction of evidence and means of violation if violating elements cannot be eliminated; infringing goods that are harmful to human health, livestock, crops, and the environment; violating stamps, labels, packaging, and articles;
• Forcible removal from the territory of Vietnam of goods in transit that infringe upon industrial property rights for violations;
• Forced change of business name, removal of infringing elements in the business name for violations;
• Forced to return illegal profits obtained from violations.

Intellectual property rights protection services by Viet An Law – IP Firm

• Legal advice on intellectual property rights infringement;
• Trademark registration, patent registration, industrial design registration in Vietnam;
• Support to identify, analyze, and evaluate acts of intellectual property rights infringement;
• Support methods to protect rights and handle rights violations;
• Drafting documents, and records, representing clients, and contacting state agencies in the process of protecting rights;
• Exchange and provide information to clients during the procedure to handle intellectual property rights infringement.

If you have any questions or need service support related to IP rights for trade names in Vietnam, please contact Viet An Law Firm for the best support.