Prevent logo (trademark) infringement on the Internet

Intellectual property infringement on the Internet is a common infringement, causing serious consequences for enterprises owning logos, especially in the explosive Internet development era. Nowadays in Vietnam, the situation of intellectual property infringements is complicated, especially on the Internet. In the article below, Viet An Law Firm will provide clients with information to prevent logo (trademark) infringement on the Internet according to the current Intellectual Property Law.

The reality of  logo (trademark) infringement on the Internet

The trend of copyright infringement on the Internet has increased in number, nature, and extent, especially in music, cinema, TV programs, sports,… There are many cases of repeat offenders many times by creating other online accounts.

In early 2019, a traditional medicine enterprise created reports about their products and inserted the logo of Vietnam Television VTV to deceive client trust. After being discovered, this enterprise had to apologize and take responsibility before the law. This is a fairly typical case of logo copyright infringement that enterprises should avoid.

The effects of logo (trademark) infringement on the Internet

Logo (trademark) infringement on the Internet is becoming increasingly common, causing serious consequences for enterprises owning logos.

Effect on brand reputation

• The logo is an important part of a company’s brand identity. When a logo is stolen and used illegally, the brand’s reputation will be severely affected.
• Clients might confuse the products or services of an enterprise having a stolen logo with the enterprise owning the official logo.
• An enterprise might lose the trust of its clients and partners, leading to a drop in revenue and profits.

Financial loss

• An enterprise owning the official logo might suffer financial losses due to losing clients and partners.
• The enterprise might also have to cover expenses for a logo (trademark) infringement, including lawyer fees, monitoring costs, and expenses related to handling infringement,…

Intellectual property infringement

• A logo is an intellectual property asset protected by law. Logo (trademark) infringement violates the intellectual property rights of the enterprise owning the official logo.
• The enterprise owning the official logo can file a lawsuit for infringement and seek compensation for damages from the violator.

The legal regulations regarding logo (trademark) infringement

A logo is understood as a symbol represented by a combination of characters, images, and colors to create an identification mark. Logo (trademark) infringement on the Internet is copying or modifying the logo to confuse clients…

A logo can be protected as intellectual property assets, including copyright, trademarks, and geographical indication,..

According to Article 126 and Article 129 of the Intellectual Property Law 2005, the following acts performed without the owner’s permission are considered infringements of intellectual property rights to the logo:

For the copyright (author’s rights)

• Directly or indirectly reproduce the entire or part of the logo;
• Distribute, import for public distribution by sale, or transfer of other rights to ownership of the original or copies of the logo in tangible forms.
• Deliberately destroying or de-activating the effective technological measures implemented by the copyright owner to protect the copyright to the logo.

Note: The conditions for constituting an infringement of copyright according to Article 64 of Decree 17/2023/ND-CP include:

• Logo having copyright protected.
• There is an element infringing the logo.
• Persons committing the examined act are not copyright holders.
• The examined act occurs in Vietnam or on telecommunication networks and the internet whose users are located in Vietnam.

For the trademark

• Using signs identical with protected trademarks for goods or services identical with goods or services on the lists registered together with such trademarks;
• Using signs identical with protected trademarks for goods or services similar or related to those goods or services on the list registered together with such trademarks if the using is likely to confuse as to the origin of the goods or services;
• Using signs similar to protected trademarks for goods or services identical with, similar to or related to goods, or services on the list registered together with such trademarks, if the using is likely to confuse as to the origin of the goods or services.

The logo infringement is considered a trademark infringement when it meets the conditions in Article 72 of Decree 65/2023/ND-CP. Specifically:

• Logo having trademark protected
• There is an element of logo infringement in the subject under consideration
• Persons committing the examined act are not the holders of rights to trademark protected
• The examined act takes place in Vietnam or aims at consumers in Vietnam.

For the geographical indication

All acts of using geographical indications identical with, or similar to, trade names of others that were used earlier for the same or similar type of goods or services, which confuse as to business entities, establishments, or activities under such trade names shall be deemed to be infringements of the right to the trade name.

The determination constitutes an act of infringement of rights to geographical indications similar to the act of trademark infringement analyzed above.

Measures to prevent logo (trademark) infringement on the Internet

To prevent logo (trademark) infringement on the Internet, clients can apply the following precautions:

Registering logo protection

• Registering the logo protection is the most important measure to protect your logo from being infringed. When a logo is copyrighted, an enterprise will have intellectual property rights protected by law over its logo.
• A logo can be registered as a copyright or trademark. Accordingly, for a trademark, the owner needs to carry out registration procedures with the National Office of Intellectual Property to be granted a protection title. Although copyright is automatically protected, the owner also needs to register to have a basis to prove the right.
• The registration of trademark protection will be much superior to the protection of the brand mentioned in the logo compared to protection in the form of copyright (only formal protection).

Use a logo with a brand identity sign

• Enterprises should use logos with clear brand identification signs, which are easy to distinguish from other logos. Brand identity signs can include brand names, slogans, colors, typography,…
• Using a logo with brand identification signs will help clients easily recognize the brand of the enterprise and avoid confusion with other brands.

Use low-resolution logo images

When using logos on websites or other publications, enterprises should use low-resolution logo images. This will make it more difficult to steal the logo and use it for commercial purposes.

Mark the logo with a token

Enterprises can use tokens to mark their logos. Tokens will help authenticate the ownership of the logo and help detect cases of unauthorized use of the logo, thereby taking timely measures against this logo infringement.

Follow and monitor logo usage

• Enterprises should regularly follow and monitor the use of their logos on the internet and other media.
• Enterprises can use specialized tools to follow the logo usage and receive notifications when their logo is used illegally.

Raise awareness of the logo protection’s importance

• Enterprises need to raise awareness among officers and employees about the importance of logo protection and instruct them on how to handle cases of violations.
• Enterprises should also organize propaganda and education activities about the law on intellectual property and the importance of logo protection.

How to prove the owner’s rights when handling logo infringement?

For the copyright

Copyright shall arise at the moment a work is created and fixed in a certain material form, without depending on registration.

According to Article 65 of Decree 17/2023/ND-CP, the proof includes:

• For copyright registered at the competent authorities, the evidence to prove includes:
  • A certificate of registered copyright and the attached documents.
  • An excerpt from the National Register of copyright, related rights, or proof of copyright certification issued by competent authorities.
• For copyright not registered at the competent authorities, these rights shall be determined according to the assumption of copyright, including:
  • Original copies or copies of works, fixed performances, audio recordings, video recordings, broadcasting programs, encrypted program-carrying satellite signals carrying names of right holders.
  • Other documents proving the creation, publication, performance, distribution, broadcasting, and transmission of subjects mentioned above and attached documents, proof (if any).

For the trademark

• Industrial property rights to trademarks are established on the basis of the decision to grant a protection title.
• Trademark rights are proven by:
  • A certificate of registered trademark which is still valid, and the attached documents.
  • An excerpt from the National Register of Industrial Property issued by competent authorities.

For the geographical indication

• Industrial property rights to trade names shall be established on the basis of the lawful use of those trade names without registration.
• The proof of rights is determined based on documents proving the lawful use of the trade name, business field and business area using the trade name, and the process of using the trade name.

Handling logo (trademark) infringement on the Internet

Measures

According to Article 71 of Decree 65/2023/ND-CP, acts of infringement may, based on the nature and level, be handled by civil, administrative, or criminal measures:

• Civil measures shall be applied to handle any act of infringement at the request of the holder of industrial property rights or the organization/individual with damage caused by the infringement, even if such an act has been or is being handled by administrative or criminal measures.
• Administrative measures shall be applied to handle any act of infringement that falls into one of the cases prescribed in Article 211 of the Law on Intellectual Property at the request of the holder of industrial property rights or the organization/individual with damage caused by the infringement or an organization/individual/competent authority detects an infringement.
• Criminal measures shall be applied to handle any act of infringement if such an act has sufficient elements to constitute a crime according to the Criminal Code.

Handling of goods infringing copyright

According to Article 82 of Decree 17/2023/ND-CP, regarding pirated goods and ingredients, materials, and instruments primarily used for the production thereof, the infringement handling authority shall:

• Distribute or introduce into use for non-commercial purposes according to Article 83 of Decree 17/2023/ND-CP
• Destroy according to Article 84 of Decree 17/2023/ND-CP;
• Mandate elimination of infringing elements and adopt appropriate measures on a case-by-case basis

Handling of goods infringing trademark and trade name

According to Article 96 of Decree 65/2023/ND-CP, regarding counterfeit goods in terms of trademark and trade name, the infringement handling competent authority shall:

• Distribute or put them into use for non-commercial purposes according to Article 97 of Decree 65/2023/ND-CP;
• Destroy according to Article 98 of Decree 65/2023/ND-CP;
• Force the goods owner, carriers, or hoarders to eliminate elements of infringement and bring the goods out of the territory regarding goods in transit that are counterfeit in terms of trademarks, re-export the goods regarding imported goods that are counterfeit in terms of trademarks and imported ingredients, materials, and equipment used for the production and trading of counterfeit goods in terms of trademarks.

Clients who have related questions or need legal support to prevent logo (trademark) infringement on the Internet, please contact Viet An Law – IP Firm, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for the best support.