current laws on the protection of intellectual property rights ("IPR") consist
of the following:
Constitution of the Socialist Republic of Vietnam of 1992 ("Constitution").
Criminal Code 1999 ("Criminal Code").
Paris Convention on the Protection of Industrial Property, the Madrid Agreement
for the International Registration of Trade Marks and the Patent Co-operation
Agreement between The United States Of America and the Socialist Republic Of
Vietnam on Trade Relations (effective as of December 2001)
Civil Code effective as of 1 July 1996 ("Civil Code").
Governmental Decree No. 63/CP of October 24, 1996 detailing the regulations on
industrial property as amended by Decree No. 06/2001/ND-CP dated I February
2001 ("Decree 63").
Governmental Decree No. 12/1999/ND-CP of 06 March 1999 providing for treatment
of administrative violations relating to industrial property ("Decree 12") with
reference to Ordinance on the Handling of Violations of Administrative
Governmental Decree No. 54/2000/ND-CP dated 3 October 2000 on the Protection of
Intellectual property rights upon Business Secrets, Geographical Indications,
Trade Names and Protection of Rights against Unfair Competition Relating to
Industrial Property ("Decree 54").
Government Decree 01/CP dated 3 January 1996 on sanctions against violations of
administrative regulations in the field of trade
Circular No. 3055/TT-SHCN dated 31 December 1996 issued by the Ministry of
Science, Technology and Environment providing procedures for industrial
property ("Circular 3055").
Circular No. 30/2003 dated 05 November 2003 issued by the Ministry of Science,
Technology providing procedures for establishing IP rights of invention &
utility solutions ("Circular 30").
Circular No. 30/2003 dated 05 November 2003 issued by the Ministry of Science,
Technology providing procedures for establishing IP rights of design ("Circular
Circular No. 825/2000/TT-BKHCNMT dated 3 May 2000 providing for sanctions
against administrative violations in the field of industrial property
("Circular 825") as amended by Circular No. 49/2001/TT-BKHCNMT dated 14
Objects protected under industrial property laws
Vietnamese laws, the following Industrial Property ("IP") objects may be
protected by registration:
Inventions (for both products and process) are protected by patent and are
valid for 20 years from the filing date.
Utility solutions (for both products and process) are protected by patent and
are valid for 10 years from the filing date.
Industrial designs are protected by patent for 5 years from the filing date,
and are renewable twice for a period of five years each.
Trademarks are protected by a certificate of registration valid for 10 years
from the filing date. They are renewable for unlimited periods of 10 years
trademarks may be officially recognised as "well known" trademarks if they are
used continuously for prestigious products or services, and as a result of
which they have widespread recognition. Well known trademarks enjoy-better
protection in Vietnam in terms of duration and infringement.
successful completion of the procedures for official recognition, well-known
trademarks are protected indefinitely without any need for renewal. Any
confusing imitation of a well-known trademark, even in other languages and/or
for other goods, may be deemed an infringement of that well-known trademark.
Appellations of origin protected by a certificate of registration are valid
above objects are only protected after registration with, or recognition by the
National Office of Industrial Property ("NOIP") under the Ministry of Science,
Technology and Environment.
protection is provided in Decree 54 for the following objects:
Trade names; and
Rights against unfair competition relating to IP.
Criteria to maintain protection
objects are protected if they satisfy certain criteria, and are protected for
so long as certain criteria are maintained.
business secrets: (i) it has to be uncommon business information; (ii) it has
to be capable to create some advantage for its holder; and (iii) must be kept
geographical indications: (i) there has to be information on the geographical
origin of goods; and (ii) the quality, reputation or other characteristics of
the goods are mainly due to the geographical origin.
trade names: (i) there is a business title in the form of words with or without
numbers; and (ii) it has to be capable of distinguishing this business from
others operating in the same field.
against unfair competition relating to IP prevent the illegal use of
"commercial indications" of other parties or the appropriation/use of
"investment achievements" of other parties. Under Decree 54:
indications" means the signs and information to provide commercial guidance to
commodities and services, including trademarks, commercial names, business
logos, business slogans, geographical indications, goods packaging designs,
goods labels ...; and
achievements" means the knowledge and information in the form of technologies,
inventions, utility solutions, industrial designs, technical knowledge,
business secrets ... obtained from financial or intellectual activities")
objects can be protected against third parties only if the holders can prove
that they satisfy all the relevant criteria.
IPR and infringement
Rights of IP owners
796 of the Civil Code provides that owners of IP objects, excluding
appellations of origin, have the-following rights:
an exclusive right to the use of the IP objects, (b) a right to transfer the IP
objects to another person for that ,person's use; and (c) a right to demand
that the competent State authority compel any person who has infringed another
person's property rights to cease such acts of infringement and compensate the
holder of the IP for damages.
Infringement of IPR
of infringement are defined in Article 805 of the Civil Code to include the
following, if committed without the authorisation of the IPR owners:
Making products under inventions/utility solutions that are protected in
Using, importing, advertising and circulating products which are manufactured
under inventions/utility solutions that are protected in Vietnam; or
Applying methods which are protected in Vietnam as inventions/utility
Making products under industrial designs that are protected in Vietnam; or (ii)
Importing, selling, advertising or using products manufactured under industrial
designs that are protected in Vietnam for commercial purposes.
Affixing a trademark, that is protected in Vietnam and owned by another person,
or a similar trademark on the package of another person's product; or (ii)
Importing, selling or offering a product affixed with a trademark, that is
protected in Vietnam, on the Vietnamese market.
Illegal access to, or collection of, business secrets owned by the IPR holders,
Disclosing or using business secrets without the permission of the IPR holders;
Contravening contracts on confidentiality in order to access or collect
business secrets; or
Illegally accessing or collecting business secrets from administrative bodies.
Using any commercial indications that can be confused with protected
Using any commercial indications identical or similar to protected geographical
indications for identical or similar or associated goods, even if accompanied
with justifying words such as "method", "type", "kind", "adapted from" or
similar words; or
Use of geographical indications for wine or hard liquor not originating from
the indicated territories, even if accompanied with justifying words such as
"type", "kind", "form", "adapted from" or similar words.
of commercial indications that are identical with or similar to protected trade
names for identical or similar products/services causing confusion- about
business entities, business establishments and/or business activities under
those trade names.
Using commercial indications to mislead people about business entities,
business establishments, business activities, or goods and services; or
Misappropriating and using the investment achievements of other people without
cannot be enforced against:
users within a means of transport while in transit, e.g. ship or plane .etc.
the circulation and/or use of products having been put in the market (including
foreign markets) by the IPR holder, prior user or licensee.
Legal action in the event of infringement
owner-of the IP rights, a representative who is present in Vietnam,
or an authorised IP agent may exercise the owner's rights. Where the owner
wishes to enforce its rights, the appointment of an IP agent at the outset will
enhance chances of success.
cases of infringement, the following steps should be taken:
obtaining the official conclusion of Vietnam Office of Intellectual property on
the infringement of the owner’s trademark rights, patent rights, etc., is
always the first step which should be done; (ii) Collect evidence (e.g, at
selling places, in factories), since the onus of proof lies entirely with the
owner of the IP rights; and (iii) Identify the infringer(s).
samples of the infringing products have been collected and the infringer(s)
identified, there are two possible approaches for further action: (a)
Administrative action; or
action aims at stopping the infringement, confiscating counterfeit goods and
imposing other administrative sanctions against the infringer(s).
owner cannot enforce IP rights himself, but may request the competent authority
of the State to enforce the protected rights. For these reasons, the owner of
IP rights must report in writing the case of infringement to the following
National Office of Intellectual Property ("NOIP") under the Ministry of
Science, Technology for "conclusion of infringement". This is not provided by
law as necessary for the enforcement of IPR, but since NOIP is in charge of
formulating IPR (from receiving applications to examination and granting of
protection titles), its conclusion that there has been an infringement is
decisively important for the elimination of infringement. In cases of
uncertainty, the enforcing bodies often base their actions on the conclusion of
Local inspectorate of science; technology and environment.
Local Market Management Office ("MMO"). MMO is established in each province to
keep order in the markets. It is empowered to apply enforcing measures, such as
listing, seizing, confiscating and destroying counterfeits or infringing
products. MMO can also impose administrative fines upon infringers.
is the most helpful body to which the owners of IP rights often resort to for
enforcement of their rights, when they have collected evidence and identified
Local Economic Police ("LEP"). Like MMO, LEP exists in each province to prevent
economic crimes. If the owners cannot collect evidence and identify infringers,
they can resort to LEP for investigation and collection of evidence. Like MMO,
LEP may apply measures and impose fines upon infringers. LEP is involved in
rather large and complicated cases, and the cost of involving the LEP is much
higher than MMO. For this reason, IP owners often prefer to use MMO for
enforcement of their IP rights.
Ministry or local people's committee supervising the infringing enterprise.
Customs offices in provinces or cities in case of imported/exported goods.
cases of clear infringement (i.e. the infringing object is identical
and the infringer has been identified):
receiving a written report from the owner with sufficient evidence, NOIP will
issue a notification to the infringer confirming the ownership of the object
and requiring the cessation of infringing activities. The Inspectorate, MMO,
LEP or people's committees may confiscate counterfeit goods and impose other
administrative sanctions against the counterfeiters.
improved awareness of the public on IPR, nowadays the owners in large cities
like Hanoi and Ho Chi Minh City may directly contact the infringer and local
authority in charge of IP, to demand that the infringements cease.
cases of doubtful infringement (where the infringing object is only
similar to the protected object):
this case it is necessary to examine the extent of similarity. If the
infringing object is officially recognised as distinctive from the protected
one, then there is no ground for further action. The official conclusion of
NOIP in this regard is decisively important. If NOIP concludes that the
infringing object is confusingly similar to the protected one, the owner of the
infringed object will have a legal basis for requesting MMO or other enforcing
authorities to take appropriate measures and impose appropriate fines.
the infringing object is identical to the protected object but the infringer(s)
cannot be identified, then sanctions may still be imposed on the sellers of
administrative actions can stop the infringement and may result in confiscation
or destruction of the infringing products, and the imposition of fines upon the
infringers. However, such actions do not resolve the issue of compensation for
damage, which only the court can determine.
proceeding may be commenced, in addition to the administrative sanctions, to
seek compensation for damage caused by infringement.
foreign holder of IP rights in Vietnam may commence court proceedings in either
the People's Court of Hanoi or Ho Chi Minh City. It is advisable to choose the
People's Court of Ho Chi Minh City if the infringer is located in Ho Chi Minh
City or the southern provinces, and the People's Court of Hanoi if the
infringer is located in Hanoi or the northern provinces.
the laws provide for administrative and court actions to be pursued
independently, it is advisable to pursue administrative action before
commencing legal proceedings. Given that IP cases are relatively new to the
Vietnamese judiciary, the observations, comments or conclusions of specialised
agencies (such as NOIP) are considered persuasive.
date there has been only a small number of IP infringement cases brought to
court in Vietnam. The majority of cases have been settled through
administrative action, because the administrative procedures take much less
time and effort. The competent administrative authorities are better educated
in IP matters, so they settle cases faster and in a more satisfactory manner.
Courts generally take more time, and the judges depend upon the comments of
administrative bodies before making a judgement. The single advantage of the
courts is that they can settle the issue of compensation, although the courts
often fail to decide upon the calculation of "actual damages" of "intangible"
means that court process takes considerably more time and effort than
administrative procedures, for an outcome which is not better. It is hoped
that, along with the development of the IP system and harmonisation with the
global system, Vietnamese courts will gain more experience in dealing with IP
rights, enforcement in general, and compensation for damage of intangible
property in particular.
Possible sanctions and remedies
12 provides for the following civil sanctions to be imposed on infringers of
a warning for unintentional violations, or minor first-time violations with
fines of up to VND 100 million (approximately US$6,700), depending on the
nature and seriousness of the violations;
suspension or withdrawal of business licence; or
confiscation of the exhibits and/or violation means.
provided for in Decree 12 are:
compulsory removal of violating elements on goods or business facilities, or
compulsory rectification of false information,
compulsory destruction of violating articles of inferior quality that may cause
damage to human health; or
compulsory compensation for damage caused by administrative violation (by
mutual agreement or not more than VND 1 million (approximately US$67.00).
seizure of exhibits and violating means are also provided for in Decree 12 as a
provisional measure for enforcement of IPR.
following enforcement authorities are empowered to decide the above sanctions
People's committees at provincial and district levels;
Inspectorate of science, technology and environment;
Police, at the district level,
Customs, at the border gate level, and
Market management office, at the provincial level.
procedures have proven to be very effective at present, and is the reason why
most IP cases are settled by administrative authorities.
171 of the Criminal Code of Vietnam provides, in addition to administrative
sanctions, penalties of up to 3 years' imprisonment for infringement of IPR. If
the infringer is convicted of production and/or trade of counterfeiting goods,
a longer term of imprisonment, or even capital punishment, may be applied
pursuant to Articles 156, 157 and 158 of the Criminal Code.
Parallel imports and enforcement of IPR
Legalisation of parallel imports in Vietnam
imports refers to the practice of importing goods from a foreign market, where
those goods have been legally produced and marketed.
Civil Code does not appear to contain provisions which explicitly legalise
parallel imports. However, Article 805 of the Civil Code and Article 9.1 (g) of
Decree 12 provide clearly that the import of protected articles, without the
permission of the owner, is considered an infringement of IPR. Some exceptions
are provided in Article 803 of the Civil Code, where the circulation and use of
products which have been marketed by the owner or other entitled persons are
not to be considered as an infringement.
first time Vietnam dealt with parallel imports thorugh IP legislation was in
May 2000 when Circular 825 was issued. Article 8.1(d) of Circular 825 provides
that the use or conduct of commercial activities (import, sale, storage for
sale, offer for sale, advertisement for sale) without permission of the owner,
in respect of protected articles which have been put by the owner into market
(including foreign market) are considered exceptions to infringement, and
therefore are not subject to administrative sanctions.
further development occurred in February, 2001, with the implementation of the
amended Decree 63. This widened the interpretation of Article 803 of the Civil
Code, by providing that the concept of "market" included "foreign market". With
this amendment, Vietnam recognised the concept of "international exhaustion" of
Ramifications of parallel imports on enforcement of IPR
of parallel imports makes IPR enforcement much more complicated against sellers
of infringing goods.
LEP and inspectorates are hesitant to take action because of parallel imports.
The majority of counterfeits in Vietnam are imported and offered for sale in
shops. Evidence of this is collected through the purchase of counterfeits. Shop
keepers where counterfeits are found will nearly always refer to parallel
imports to justify their sale of counterfeits.
these circumstances, the most important point to note is that to allege a
violation of IP laws, it is also necessary to prove that the articles were not
parallel imports, i.e. one must prove that the articles were illegally put into
the foreign market before being imported into Vietnam. This may be difficult to
establish, since it is hard for the IP rights holder in the importing country
to collect evidence in the exporting country where exports are, as a rule,
encouraged by local authorities.
the legalisation of parallel imports, legally imported goods (including
counterfeits) are "immune" from possible allegations of infringements of IPR.
these problems, one recommended legislative measure would be to shift the
burden of proof from the IPR holder to the seller of suspected imported
counterfeits. In such a case, the seller would be required to prove that the
goods were parallel imports, otherwise the seller would be subject to sanction.
Decree 54 (fully writing as Decree No. 54/2004/ND-CP) is a legal
documents issued on October 3, 2000 by the Vietnamese Government,
governing the protection of industrial property right of a number of
industrial property objects which were not protected in Vietnam previously,
such as trade secrets, geographical indications, trade names and the
protection of antiunfair competition related to industrial property
Before the promulgation of Decree 54, Vietnam had only the mechanism for
protecting against the infringement of traditional industrial property
objects, such as patents, utility solutions, industrial designs, trademarks,
and appellations of origin of goods. Furthermore, this mechanism is mainly
based on the ground that the State shall grant protection right after owners
completed registration procedures at the State competent authority. The fact
has shown that such protection mechanism is not satisfied enough to prevent
the infringement of industrial property right under various unfair forms
causing damages to customers, especially the infringemet on the real owners
, objects not have been registered or not required registration.
Therefore, the promulgation of Decree 54, pertaining in pacticular the
provision on anti-unfair competition related to industrial property shall
impotantly contribute to the completion of Vietnamese legal system on
industrial property in general, and on IP in particular, and concurrently make
the enforcement of IP right in Vietnam more stronger to protect more
effectively legitimate owners, manufacturers and consumers. Decree 54took effect from October 18, 2000.
b.Which subjects shall be governed by Decree 54?
you are one amongst the following subjects, your legitimate right and
interests as to trade names, trade secrets, and geographical indications shall
be protected by Vietnamese laws in accordance with Decree 54. At the same
time, you also have right to fight against any industrial property- related
unfair acts competitors:
organizations and individuals conducting business activities within the
territory of Vietnam; - Foreign organizations and individuals conducting
business activities within the territory of Vietnam;
and individuals in the countries being a member of Paris Convention without
business activities in Vietnam;
and individuals having no business activities in Vietnam, but their industrial
property right are property recognition and protection, to which Vietnam is a
party or a signatory;
and individuals having no business activities in Vietnam but in the countries
and/or territories which have, together with Vietnam, accepted the principle
of reciprocity in the industrial property protection of each, s
organizations and individuals.
c.Principal contents of Decree 54
Decree 54 provides general principles on the condition for the establishment
of industrial property rights, the contents of such right, and the duration of
protection of right as to trade names, geographical indications, and trade
secrets, and generally stipulates the acts constituting the infringement, the
prescription for taking actions against the infringement, and general
principles for dealing with such infringements.
According to Article 5 of Decree 54, the industrial property right as to trade
names, trade secrets and geographical indication shall be automatically
established when satisfying the conditions stipulated by the law for each of
these objects without instituting any registration procedures at the State
competent authorities. The length ofprotecting
duration shall be depened on the time maintaing the condities based on which
the rights to the corresponding object are established. The owners of the said
objects are entitled to request for an intervention by the competent
authorities to stop the infringement and pay compensation for damages. The
prescription for exercising the protection right is one year from the date of
detecting the infringement, but not exceeding three years from the date on
which such infringement is occurred.
of industrial property rights with respect to trade names under Decree 54.
Trade names are protected as a main industrial property objects under their
nation laws. Internationally, “trade name” is understood as any designated
name ( it may be a company ,s owner, a pen name, an invented name
or an abbreviated name of a company, etc.) which serves to identify and
distinguish an enterprise and its business activities from those of other
enterprises. While trademarks are used for distinguishing products to which
they are adhered, trade name are used for distinguishing enterprises, and
could be descriptive or clearly indicate the nature or the field of activities
of the enterprises bearing that trade name, for example, Chien Thang Garment
Company, Viet Tien Garment Company, ANZ Bank, etc. Trade name are concurrently
deemed useful information sources for consumers indirectly indicating the
quality of goods manufactured or services supplied by those enterprises.
Therefore, protection of trade names by legal measures is for the interest of
both business enterprises and consumers. The principle characteristic of trade
name protection is to prevent enterprises to use, concurrently similar to
those of other enterprises, helping consumers avoid misleading.
A trade name protect able under Decree 54 is the name of an organization or
individual used in their business activities, being able to distinguish that
of other enterprises in the same fields of business. That protectable name
needs to be only a combination of letters, with or with or without numerals
and pronounceable. This means that abbreviation words such as EMS, DHL, IBM or
AIA etc., being able to distinguish enterprises may be protected as a trade
name. Therefore, the definition of “ trade name” in Vietnam in the same as
in other countries.
Unprotectable trade names.
The following names shall not be protected in Vietnam as trade names:
of administrative agencies, political organizations, sociopolitical, social
organizations, socio-professional organizations or non business related
-Names used for
exerting the function of trade name, but are incapable of distinguishing
subjects of business enterprises in the same fields;
-Trade names that
cause confusion with others , prior used trade names in
the same locality and in the same business fields, or cause confusion with
others , trademarks protected before such trade names are used.
c.Details of industrial property rights with respect to trade names.
Owners of industrial property rights as to trade names are organizations or
individuals conducting business activities under those trade names. They have
the rights to:
-used such trade names to introduce themselves in business activities, or
displaying them on transaction papers, signboards, products, goods packaging
and in advertisements;
-transfer trade names under contracts or bequeath them to others, provided
that, the transfer must be conducted together with the entire business
establishments and activities under those trade names;
-request the State competent authority to stop the third parties ,
infringement of pay compensation for damages.
of trade names in Vietnam
Industrial property rights as to trade names shall be automatically occurred
when trade names meet the above-mentioned conditions without registration with
the NOIP. Protection of trade names is to prevent the use of any commercial
indication ( including information, trademarks, business symbols, business
slogans, etc.) which is identical or confusingly similar to trade names which
are protected for the same kind of similar goods or services, causing
confusion as to business subjects, business establishments or business
activities under such trade names.
3.Applying Decree 54 in protection of trademarks
The application of Decree 54 in protection of trademarks means in the nature
the application of provision on the protection of industrial property related
anti-unfair competition in Chapter IV of this Decree.
a.Acts being deemed unfair competition related to industrial property
under Decree 54
Vietnam, the following kinds of acts shall be deemed unfair competition:
The first kind
This includes the use of commercial indications causing misleading to the
awareness, and information about business subjects, business establishments,
business activities, goods and/or services for the purposes of;
advantage of the prestige and reputation of other entities to their business
prestige and reputation of other entities; or
confusion on origin, methods of production, functions, quality, quality or
other characteristics of goods and/or services to consumer in the awareness
and selection of goods, services or in their business activities.
Commercial indication” are understood as signs and information which serve
as commercial instructions on business of goods and services including
trademarks, trade names, business logos, business slogans, geographical
indication, packaging designs and goods labels.
of commercial indications means:
commercial indication on goods, goods packaging, service means, transaction
papers, and adverting tools;
goods bearing commercial indications;
-Advertising goods bearingcommercial
-Storinggoods bearingcommercial indication; or
-Importinggoods bearingcommercial indications.
any individual or entity conducting one of the above-specified acts to mislead
the awareness and information about business activities, goods and/ orservices, or taking advantage of your prestige, or aiming at damaging
others , prestige or reputation, or causing confusions to the
consumers on origin, functions, characteristics of goods, etc. Shall
constitute unfair competitions in industrial property.
The second kinds
This includes possession and use of others investment results without their
term “ investment results” is understood as knowledge or information in
the forms of technology, inventions, utility solutions, industrial designs ,
technical know-how or trade secrets to conducts activities without permission
of owner(s) to provide services, do business, store or import products.
Decree 54 dose not clearly stipulate when and how an act shall be deemed
seizing possession of investment results.
b.Dealing with unfair competition in industrial property
Where your interests are damaged or in danger of being damaged due to
above-mentioned acts of competitors, you are entitled to request the State
competent authorities to:
infringers stop their acts;
infringers pay compensation for damages caused by their unfair competition;
administrative measures; and/or
criminal measures ( if applicable).
When requesting the intervention of the State competent authorities, you are
responsible for proving with the State authorities the unfair competition acts
of competitors and the actual damages occurred to be cccurred to your right
d.Applying Decree 54 in protection of trademarks
Infringement in trademarks is mainly related to the “ use of commercial
indication” in order to mislead the customers , awareness and
information about business subjecst, business activities, goods or services.
Normally, any use of commercial indications or any sign causing confusion with
registered trademarks within protection duration or unregistered trademarks
being recogized by the NOIP as well known marks shall constitute acts of
infringement of industrial property rigths with respect to trademarks. Such
acts are regulated by relevant regulations of the Civil Code, Decree 63/CP,
Circular 3055 and other related regulations such as Decree 12/1999/ND-CP dated
March 6, 1999 on sanctions against administrative violations in industrial
property sector, inter-ministerial Cirular 10 guiding the implementation of
Directive 31/TTg of the Prime Minister on combating against production and
business of counterfeit goods, ect.
protecting anti-unfair competition in trademarks is carried out irrespectively
of whether the trademarks are rigistered or not, but based on the dishonesty
or unfairness of the infringer. Thus Decree 54 could be mentioned as an useful
legal mean to protect unregistered trademarks in Vietnam.
an infringement of a trade marks is occurred while the trademarks has not been
actually used by owner in the Vietnamese market within a permitted time limit
( not exceed 5 consecutive years), or if the infringement is unintentional due
to the lack of information and laws understanding, the following factors shall
be taken into account:
-The trademark owner and the infringer are conducting business
activities in the same sectors in the Vietnamese market;
-The trademark owner has been using honestly the trademarks in
business activities for a certain duration in the Vietnamese market;
-Goods or services bearing the owner ,s trademarks have
good quality and reputation in the market; and
infringer intentionally uses “ commercial indications” causing confusion
with the owner ,strademarkaimingto lower owner ,s
reputation, or to take advantage of the owner ,s prestige and
in order to protect your trademarks based on Decree 54, owners should be
responsible for proving the unfair competition atcs with the competent
authorities. The following factors should be indicated by the owner:
-his goods or services are popular and reputable in the marks;
commercial indications which are being used cause confusion to the
act the infringer is intentional and aimed at taking advantage of the owner ,s
reputation, or at damaging the owner ,s prestige and reputation;
-the actual damages caused, or to be caused due to the unfair
Since the new Law on Intellectual Property of Vietnam has come into effect from 1 July 2006, foreign and Vietnamese enterprises are now paying special attention to provisions on intellectual property, especially provisions relating to commercial activities. This Paper is intended to provide certain comments on forms and criteria for protecting tradename and trademark under the New Law.
Difference, coincidence and inter-dependability of tradenames and trademarks
Firstly, let’s revisit the definition of a trademark and a tradename referred to in the Law. By the Law, a trade name is defined as “the name of an organization or individual used in business activities in order to distinguish the business entity bearing such trade name from other business entities in the same business sector and area”, whereas, trademark is defined as “a sign used to distinguish goods or services of different organizations or individuals”. From this, we can see immediately the difference as well as the coincidence between a trade name and a trademark. In particular, a trade name is a name and a mark is a sign. From one point of view, a trade name is normally perceived in Vietnam as bearing
full name of a company (as provided for in the Enterprise Law, the full name of a company comprises of the following elements: name of that company and legal type of that company, being: limited or Joint stock, etc.,) as indicated in the business licence and a trademark is considered as being a name of a product or service offered to the public by an enterprise. That is the difference. However, from another point of view and in certain circumstances where a trade name and a sign can be the same as an enterprise uses its name (not full name) for the enterprise sign to distinguish its goods or services from other entities. Thus, in this case, can a trade name be understood as the full enterprise name as indicated in the business licence? This has not yet been clearly defined in guiding decrees and as a result, this might lead to occurrence of disputes in the future. The fact is that the name of an enterprise is normally perceived by consumers in a short form of full name, for example:
Dong Tam, Trung Nguyen, etc and few people know the full name of that enterprise and this will cause debates in the future regardless of whether or not functional bodies have the same perception or understanding of that name. Thus, under relevant regulations, it is essential to take into account the consumers’ understanding and perception of the names of organizations.
Another difference is that a trade name can be automatically protected if it meets all of the criteria as regulated without completing registration procedures (Article 6.3 of Decree 103/2006). However, a mark must be filed (except well-known marks) and will be examined as to form and then as to substance. To some extent, the scope of protection of a trade name is considered to be narrower than the scope of protection of a mark (across Vietnam territory), however, to some circumstances where the protection of a trade name and a mark is considered the same. Specifically, a trade name will only be protected within a business area and under the Law a business area has been defined as “the geographical area in which a business entity has its partners, customers or reputation”. Hence, there will be disputes in the future and occurrence of new legal events when determining a restricted or larger business area (the issues are to be discussed later in the following section).
Inter-dependability of a trade name and a trademark can be seen under criteria stipulated in terms of distinctiveness of the trade name and trademark. A trade name and/or a trademark which is required to be protected must be distinguishable. Under Article 74.2(k) of the Law on Intellectual Property, “a mark is to be deemed to be indistinctive if it is identical with or similar to another person's trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services”. On contrary, Article 78.3 of the Law on Intellectual Property provides that “a trade name can only be considered to be distinctive if it is not identical with or confusingly similar to another person's mark or a geographical indication which was protected before the date of use of such trade name”. Such inter-dependability will cause a new legal issue to be arisen in the future and should be predicted in advance by enterprises in commercial activities.
Certain legal circumstances
From the above facts and the existing situation of business registration at Planning and Investment Offices, I would like to present the following issues:
Determining what is a trade name of an enterprise is considered as an easy task but difficult one.
It never happens where enterprises have their full names coincident in business registration certificate/license (in terms of private names, supplements and types) in the same city but it can happen in other locations because we do not have a central body specialized in issuing business registration certificates and thus we do not have an uniform database. Furthermore, there is no link or connection of databases of Planning and Investment Offices in Vietnam. However, where enterprises only have different names in terms of legal type and supplements (for example, foodstuff trading, agricultural processing, etc) but coincidence in private names which have occurred in the same location. Dealing with those disputes is found to be very difficult because of lack of clear regulations. If enterprises have different business areas, it is easy to deal with the disputes arising from such coincidence, however, what happen in the current economic development condition if:
Enterprises operating in diversified areas.
Large or diversified corporations which take use of their reputation to squash other small sized enterprises (which unluckily have coincident names) in other locations.
and other circumstances where attention should be made in respect of:
A regulation stipulated that a mark is deemed to be indistinctive if it is identical with or similar to another person's trade name currently in use will cause difficulties for protection if the trade name is defined as having the scope of protection in accordance with the business area (narrower than the scope of protection of mark). Thus, which ground a functional body will rely on to determine the business area of the trade name. This regulation may be used by parties to drive future disputes. For example, that regulation can be used to invalidate the protected mark. If this happens, it will impose an overloaded work on functional bodies and if it happens the resolution of the dispute will be delayed and therefore resulting in ineffective execution of the law.
Assuming that a trade name is only reputable in a certain geographical area, whether or not will the effectiveness of a mark being protected be caused to be terminated respective of such area. There have not yet been any regulations stipulating this issue.
How to determine a trade name to serve as a basis for invalidation of the effectiveness of a mark being protected is still a vague issue. As mentioned above, the name of an enterprise referred to in the business registration certificate can only be different in terms of type, complements but still coincide with each other in terms of specific name.
Currently, for examination of trademark applications, Intellectual Property Office cannot yet apply regulations relating to trade names clearly due to lack of too many conditions (not having an uniform database, not having a legal basis to determine trade names, business areas, reputation, etc). If possible, the application of such regulations may prolong the examination time (running counter the resolution time). However, dependability of a trade name and mark as referred to above is still applied (as stipulated in the Law) and this is the regulation where enterprises should take into account and apply flexibly to commercial disputes (including foreign enterprises).
From the circumstances referred to above, any protection forms also have their own disadvantages. The problem is that there are two Laws stipulating tradename/company name in Vietnam (Law on Intellectual Property and Enterprise Law) and inter-dependability of tradenames and trademarks as stipulated in Law on Intellectual Property. When an enterprise fully understands these problems and apply them flexibly, the legitimate rights and interests of the enterprise will be protected on a proper and sustainable basis.