Legal Status on Protection of Industrial Property Rights for Trade Names

2.1.2. Current status of law on protection of industrial property rights for trade names

The owner of a trade name has the right to use and transfer that trade name in accordance with the provisions of law. As with other civil relations, disputes related to the establishment of rights, use and transfer of industrial property rights to trade names often arise in society.

* Acts of infringement of rights to trade names

Along with the development of commercial activities and the remarkable progress of science and technology, "the situation of intellectual property rights infringement is also increasingly serious and alarming in every country in the world" [23]. Acts of intellectual property rights infringement not only have negative impacts on intellectual property rights holders but also cause harm to legitimate manufacturers, consumers, the economy and the whole society.

In Vietnam, the infringement of intellectual property rights is also increasing and becoming more sophisticated. According to Decree No. 105/2006/ND-CP dated September 22, 2006 detailing and guiding the implementation of a number of articles of the Law on Intellectual Property on the protection of intellectual property rights and state management of intellectual property, the act of infringement of intellectual property rights is the act of infringement of objects within the period of protection.

Maybe you are interested!

An act of infringement of industrial property rights to a trade name is 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 or service or for similar products or services, causing confusion about the business entity, business establishment, or business activities under that trade name.

The element of infringement of rights to a trade name is expressed in the form of a trade indication attached to goods, goods packaging, or means of transport.

services, transaction documents, signs, advertising means and other business means that are identical or confusingly similar to a protected trade name (Article 13 of Decree No. 105/2006/ND-CP of the Government). To determine whether a suspected sign is an element of infringement of the rights to a trade name, it is necessary to compare that sign with the protected trade name and compare the products and services bearing that sign with the products and services within the scope of protection, based on the following grounds: (a) The suspected sign is identical or confusingly similar to a protected trade name; in which a sign is considered identical to a protected trade name if it is similar to the trade name in terms of word structure, including pronunciation and transcription of letters; A sign is considered similar to a protected trade name if it is similar in structure, pronunciation, and transcription of letters, causing confusion to consumers about the business entity, business establishment, or business activities under the protected trade name; (b) Products and services bearing a suspected sign are considered identical or similar to products and services bearing a protected trade name if they are identical or similar in nature, function, use, and distribution channel (Article 13 of Decree No. 105/ND-CP).

From the above provisions, it can be understood that the act of infringing the rights to a trade name is the act of using a trademark, geographical indication, or trade name that is identical or similar to the point of causing confusion with the trade name that has been used by another person before. However, in reality, it is very difficult to determine trade indications (trademarks, geographical indications) that are similar to the point of causing confusion with the trade name of another person. Therefore, due to unclear provisions of the law, determining the act of infringing the rights to a trade name still has many problems in practice.

* Measures to protect rights to trade names

Measures to protect industrial property rights to trade names are methods used by the entity with rights to trade names or the State to protect rights to trade names when these rights are violated.

Our country's law recognizes many measures to protect intellectual property rights. To protect trade names, those measures are also applied. Because the right to a trade name is one of the objects of intellectual property rights. If based on the subject performing the protection act, the measures to protect the right to a trade name can be divided into two types: The subject owning the trade name protects the right to its trade name (self-protection measure) and the competent state agencies enforce the law and thereby protect the right to a trade name (measures to protect trade names by competent state agencies). State agencies can use many different measures to protect this right: "Administrative measures; civil measures; criminal measures; border control measures on industrial property (including trade names) on exported and imported goods" [20]. These measures are stipulated in the Law on Intellectual Property and many related documents: Civil law documents, administrative law documents, criminal law documents, commercial law documents. When there is an act of infringement of rights to a trade name, the determination of which measures will be applied to protect ownership rights is based on three factors: First, the choice of the infringed person (including cases where the damaged consumer reports to the competent authority); second, it depends on the choice of the competent authority (for example: In case of necessity, the competent state agency can apply temporary emergency measures, measures to control exported and imported goods, measures to prevent and ensure administrative sanctions according to regulations).

provisions of the Law on Intellectual Property and other relevant legal provisions); thirdly, based on the nature and extent of the infringement.

Specific measures applied to protect rights to trade names are:

- Self-protection measures:

Self-protection measures originate from the principle of respecting and protecting civil rights of Vietnamese law, recognized in Article 9 of the 2005 Civil Code and specified in Article 198 of the 2005 Law on Intellectual Property.

"Self-protection of a trade name is when a person with rights to a trade name takes measures within the framework of the law to protect his or her legitimate rights" [24].

Self-protection measures allow the subject whose rights have been infringed to apply certain measures to protect his/her rights. The measures that the subject whose rights have been infringed on a trade name can choose to apply are: Preventing acts of infringement; requesting organizations and individuals who have committed acts of infringement to stop the acts of infringement; forcing the infringer to compensate for damages. The person whose rights to a trade name have been infringed can use these measures by directly meeting the subject who has committed acts of infringement or using other methods such as: calling, sending letters by post, sending emails, sending faxes or taking specific actions to protect his/her ownership rights. The person whose rights have been infringed on can choose to apply one or more different measures to self-protect his/her intellectual property rights. However, the subject's application of measures to self-protect those rights must not be contrary to the provisions of law and social ethics.

Self-protection measures are commonly applied in life. In fact, when intellectual property rights are infringed, the first protection measure applied is

The measure is self-defense. First of all, this measure respects the subject's right to self-determination. Moreover, although there is no intervention from competent state agencies, to a certain extent, this measure also helps to quickly prevent and stop the infringement.

In terms of economy: Self-defense is the most economical measure because it saves time and costs for dispute resolution. While dispute resolution by filing a lawsuit not only costs time for resolution according to the litigation procedure but also costs for participation in litigation and appraisal costs.

Protection effectiveness: Self-protection measures are timely measures, creating the ability to prevent infringement from the beginning. As soon as an infringement or a potential infringement is discovered, the subject can apply it immediately without waiting for any procedures. This feature also partly prevents the infringement from becoming more serious. Self-protection measures, in addition to the advantages of effective protection such as being quick and timely, have a major limitation in that their effectiveness is not high, because they are not guaranteed by state coercion. The subject's request is not guaranteed by a state power mechanism but completely depends on the willingness and goodwill of the infringing party. Therefore, if the infringing party does not voluntarily and willingly stop the infringement and remedy the consequences, this measure will not be effective.

- Administrative measures:

Handling of administrative violations of the law on trade names is the application by competent state agencies of pre-determined measures on handling of administrative violations to handle acts of infringement of industrial property rights of individuals and organizations that have not yet reached the level of prosecution.

investigate criminal liability. Handling of acts of infringement of industrial property rights by administrative measures is stipulated in Section I, Chapter XVIII of the Law on Intellectual Property, Chapter IV of Decree No. 105/2006/ND-CP dated September 22, 2006 of the Government detailing and guiding the implementation of a number of articles of the Law on Intellectual Property on the protection of intellectual property rights and state management of intellectual property and most recently Decree No. 97/2010/ND-CP dated September 21, 2010 of the Government regulating administrative sanctions on industrial property replacing Decree No. 106/2006/ND-CP dated September 22, 2006.

Organizations and individuals who perform one of the following acts for business purposes causing damage to consumers or society, and do not stop the act of infringement despite being requested by the right owner, infringe upon the rights to another person's trade name and shall be subject to administrative sanctions. These acts are: "Selling; offering for sale; transporting, including transiting; storing; displaying for sale goods or services that infringe upon the rights to a trade name; Ordering, assigning work, or hiring others to perform the above acts" [7].

In addition, there are acts of infringement of rights to trade names.

like:

(a) Manufacturing (including: Designing, manufacturing, processing, assembling, processing, packaging) goods bearing signs of infringement of trade name rights; (b) Attaching (including: Printing, pasting, attaching, casting, stamping or in other forms) stamps, labels, other items bearing signs of infringement of trade name rights to goods; (c) Importing goods bearing signs of infringement of trade name rights; Ordering, assigning work, hiring others to perform the acts specified in points a, b and c [7].

Acts of using signs that infringe upon rights to trade names

in advertising or displaying such a mark on business documents,

signs, product packaging, business vehicles, service vehicles, advertising vehicles.

Regarding administrative measures, the methods of protecting the rights of subjects whose intellectual property rights are infringed are generally very diverse. Specifically, they include administrative sanctions (including main sanctions and additional sanctions) and remedial measures. Each administrative violation is subject to only one main sanction, which is a warning or a fine. In addition, depending on the nature and severity of the violation, the organization or individual committing the violation may also be subject to one or more additional sanctions. According to Article 11 of Decree No. 97/2010/ND-CP, additional sanctions include: Confiscation of exhibits and means of violation; Suspension of business activities of infringing goods and services, including e-commerce activities, for acts of infringement of rights to the above-mentioned trade names. In addition, there are also remedial measures such as: Forced removal of infringing elements; Compulsory destruction of infringing elements, compulsory destruction of infringing goods without removing infringing elements; Compulsory distribution or use for non-commercial purposes of infringing goods for violations specified in Clauses 1 to 12 of this Article; Compulsory removal from the territory of Vietnam of infringing transit goods or compulsory re-export of infringing imported goods after removing infringing elements from the goods; Compulsory removal of information about infringing goods and services on advertising media, electronic news sites or change or withdrawal of business names and domain names containing infringing elements; Recovering to the state budget the amount of illegal profits earned from committing infringing acts.

To ensure effective handling of acts of infringement of rights to trade names by administrative measures, the Law on Intellectual Property allows competent state agencies to apply preventive and protective measures.

ensure administrative sanctions. However, competent state agencies may only apply preventive measures and ensure administrative sanctions in certain cases as prescribed in Clause 1, Article 215 of the Law on Intellectual Property: (a) Acts of intellectual property infringement that risk causing serious damage to consumers or to society; (b) Violations are at risk of being dispersed or the violating individual or organization shows signs of evading responsibility; (c) To ensure enforcement of administrative sanctions decisions.

In addition, the request of organizations and individuals whose industrial property rights are violated to which agency to handle the violation is also a major issue that needs to be considered for improvement. Currently, the law stipulates the authority to handle administrative violations for many agencies. According to Clause 3, Article 200 of the Law on Intellectual Property, the application of administrative measures is under the authority of inspection agencies, market management, customs, and People's Committees at all levels, specifically as follows: The Science and Technology Inspection Agency has the authority to handle acts of infringement of the above-mentioned trade names, except for acts occurring in the transit, export, and import of goods; The market management agency has the authority to handle acts of infringement in the trading and transportation of infringing goods in the domestic market; The Customs agency has the authority to handle acts of infringement in the transit, export, and import of goods; Provincial and district People's Committees have the authority to handle violations of industrial property rights occurring in their localities where the fines, forms of penalties, and handling measures applied to such violations exceed the authority of inspection, market management, and customs agencies. In reality, these agencies sometimes operate in overlapping ways, and sometimes no agency handles violations. Therefore, in order to handle violations of intellectual property rights in general effectively, these agencies must:

Comment