“The strong development of the world economy in recent years has been followed by the integration of enterprises, with the expansion of business activities to other countries, businesses have sought for themselves potential investment opportunities. However, besides that, businesses also face risks from being infringed or in which disputes revolve around the issue of trademarks and trade names of enterprises.”
This article will help foreign businesses find ways to protect trademarks and trade names effectively in Vietnam.
1.Definition of trademarks and trade names
Many foreign enterprises investing in Vietnam have not yet been able to find the Law on Intellectual Property to distinguish trademarks and trade names, as well as the differences of trademarks and trade names that enterprises want to protect.
First of all, let’s look at the definition of trademarks and trade names under article 4 of the Law on Intellectual Property 2005, amended in 2009:
Trademark: It is a sign used to distinguish goods and services of different organizations and individuals.
Trade name: It is the name of the organization or individual used in business activities to distinguish the business subject bearing that name from other business subject in the same field and business area.
Simply put, the trademark is a sign to recognize the products and services that the enterprise puts on the market, while the trade name is the name to distinguish the enterprises and is usually understood according to the full name of the company in the Business Registration Certificate.
2.Conditions and procedures for registration of trademark protection under the Law on Intellectual Property
2.1 Conditions of protection
According to Article 6 of the Law on Intellectual Property 2005, industrial property rights with respect to trademarks are established on the basis of granting protection titles of state agencies or recognition of international registration in treaties to which the Vietnamese state is a contracting party. Well-known trademarks are established on the basis of usage, not on the basis of registration procedure.
A trademark is protected in Vietnam if it meets the conditions in Article 72,73,74 and 75 of the Law on Intellectual Property 2005, amended in 2009 and 2019 as follows:
- Is a visible sign in the form of letters, words, drawings, images, including 3-Dimension shapes or a combination of such elements, expressed in one or more colors;
- Ability to distinguish goods and services of trademark owners from goods and services of other subject;
- There must be no signs of coincidence or similar to Vietnamese and international political organizations without their permission;
- There must be no signs of misleading, confusing or deceiving consumers about the origin, features, uses, quality, value or other characteristics of goods and services.
2.2 Registration procedures
Foreign enterprises may carry out procedures for registration of trademark protection when enterprises register trademarks used for goods they produce, services they provide or products they put on the market produced by others and such person does not use or oppose the registration. In addition, the mark registered by the enterprise must be permitted by a competent state authority and objective conditions specified in Article 87 of Law on Intellectual Property 2005.
A trademark protection registration dossier includes:
- Registration declaration form;
- Documents, specimens, information on determination of trademarks to be protected;
- Power of authority if the representative goes to apply;
- Documents proving priority rights, if there is a request for priority rights;
- Documents for payment of fees and charges.
Foreign enterprises applying for trademark protection should pay attention: Each application may request the issuance of a Trademark Registration Certificate for one or more different goods, in addition to which the mark is given priority for the enterprise to file the first application. The enterprise may extend it several times in a row after 10 years effective from the date of issue or may terminate the trademark protection.
3.Protection conditions and mechanisms for protection of trade names
3.1 Conditions of protection
Enterprises have ownership rights to trade names without carrying out registration procedures established on the basis of the practice of legally using such trade names corresponding to the region (territory) and business domains under Article 6, Decree 103/2006/ND-CP.
Trade names are protected if they satisfy the following conditions:
- Not to be confused with the trade names of other enterprises in the same field and business area;
- Not to be confused with the trademark that others have used;
- Must not be the same as the names of Vietnamese state political organizations and other subject not related to business activities;
- Ability to distinguish such as containing its own name component, except where previously widely known;
- Must not register, occupy or use domain names that are similar or confusingly similar to other people’s protected
3.2 Protection mechanism
In Vietnam, in order to be protected for trade names, foreign enterprises need to use trade names named in business activities, expressing trade names in transaction papers, signs, products, goods, packaging of goods and means of providing services and advertising.
In addition, foreign enterprises should pay attention to trade names not to be transferred, or to be transferred only together with the transfer of the entire business establishment and business activities under that trade name.
When we thoroughly study the Law on Intellectual Property 2005 amended in 2009 and 2019, we see that the basis for development of rights and protection mechanisms for trademarks and trade names is completely different in accordance with Vietnamese law. Therefore, foreign enterprises should pay attention and use trademarks and trade names in their actual business activities in order to suit their functions and create protection facilities in accordance with the law for each subject.