DETERMINATION OF TRADE NAME INFRINGEMENT

Trade name is an object of intellectual property rights protected under the provisions of Vietnamese law, aimed at the group of objects of industrial property rights. Infringement of trade name rights can be fined up to VND 20 million. So, what kind of behavior is determined as trade name infringement?

1.         What is trade name?

Trade name means the designation 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. Therein, business area as stipulated in this clause means the geographical area in which a business entity has its partners, customers or reputation.

2.         How are trade name protected from trade name infringement?

According to the current provisions of Vietnam Intellectual Property law, industrial property rights to a trade name shall be established on the basis of lawful use thereof. This means that trade name protection does not depend on registration with a state agency.

Trade name protection conditions are established on distinctiveness. Specifically, a trade name is protected if it is capable of distinguishing the business entity bearing that trade name from other business entities in the same field and business area. Distinctiveness ability is determined as follows:

–          It consists of a proper name, except where the proper name was widely known by use.

–          It is not identical with or confusingly similar to a trade name which was used earlier by another person in the same business sector and locality.

–          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.

>> REPORT ON DEMAND FOR FOREIGN WORKERS, PROCEDURES IMPLEMENTATION https://linconlaw.vn/report-on-demand-for-foreign-workers-procedures-implementation/

>> RIGHTS TO INDUSTRIAL DESIGN, DETERMINATION OF INFRINGEMENT ELEMENTS https://linconlaw.vn/rights-to-industrial-design-determination-of-infringement-elements/

3.         Determination on acts of trade name infringement

Infringement elements on the rights to trade name 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 trade name infringement element is that the scope of trade name protection determined on the basis of evidence demonstrating the legal use of that trade name as provided 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.

Signs suspected of being trade name infringement will need to be compared:

–          With a protected trade name;

–          Business entities, business establishments, business activities related to suspected signs;

–          Goods and services bearing that mark with goods and services of the protected trade name.

The comparison to determine trade name infringement is based on the following grounds:

–          The suspected sign is identical or confusingly similar to the protected trade name; In which 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, causing confusion for consumers about the business entity or business establishment. doing business or 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 name 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 or function or method of implementation.