Protection of industrial property rights for trade names according to the provisions of Vietnamese law

inventions, utility solutions, industrial designs, trademarks, appellations of origin of goods) or optional (for example, for geographical indications, trade secrets, trade names) and only related to the protection of industrial property rights for that object.

According to Article 21 and Article 22 of the 2005 Law on Enterprises of Vietnam: The contents of business registration include: Name of the trader, name of the authorized representative; trade name, signboard; official transaction address; business lines; charter capital or initial investment capital; duration of operation, branches, stores, representative offices, if any. Thus, the trade name is officially identified in the business registration certificate of the business entity, but it does not mean that the right to the trade name arises immediately at the time the business registration procedure is completed. In other words, it is only the time when the entity affirms its intention to use that trade name, while according to the provisions of the Law on Intellectual Property, the right to the trade name only arises when it is actually put into use in practice.

The owner of the rights to a trade name is the organization or individual that conducts business registration activities under that trade name. In the case where there are many people in the same business field and in the same business location using the same trade name, the rights to the trade name belong to the first user.

The provisions on the procedure for establishing rights to trade names under Vietnamese law are consistent with the Paris Convention of 1883 (amended in 1967) as well as the laws of many countries in the world. According to Article 8 of the Paris Convention: “A trade name is protected in all member countries without the requirement to register, regardless of whether or not the trade name is part of a trademark” [4].

The system of legal documents mentioned above, on the one hand, creates an important legal basis for the protection of trade names, on the other hand, also creates certain difficulties in the process of applying the protection of trade names in practice. The existence of many legal documents regulating the same issue has caused a lack of uniformity in the legal system on trade names. Specifically, these regulations have caused overlap between the Enterprise Law and the Intellectual Property Law, and from these regulations, it is easy to cause confusion between trade names and trademarks, from these inadequacies, it will cause certain difficulties in the process of establishing industrial property rights for trade names.

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* Inconsistency between the provisions of the Intellectual Property Law and the Enterprise Law on trade names

According to the 2005 Law on Intellectual Property, the Law amending and supplementing a number of articles of the 2009 Law on Intellectual Property and documents guiding its implementation (collectively referred to as the Law on Intellectual Property), a trade name is the name of an organization or individual used in business activities to distinguish the business entity bearing that name from other business entities in the same field and business area. A name will be protected as a trade name if this name is “not identical or confusingly similar to a trade name previously used by another person in the same field and business area”. Although the Law on Intellectual Property has provided a series of criteria to determine the “identical or confusingly similar” element of a sign, the Law on Intellectual Property has not defined what a “business area” is? In the Intellectual Property Law, “business area” is defined as “the geographical area where the business entity has customers, clients or reputation”, but this definition is unclear. According to this definition, can “business area” be understood as any geographical area where the enterprise distributes products?

Is the “business area” where the enterprise has its headquarters, branches or even just the place where the enterprise has its transaction office? For example, can a fish sauce manufacturing enterprise protect its business name as a trade name in province A while another enterprise in the same industry is using the same name for its product in province B?

There are many opinions that the business name is considered a trade name. However, there is no legal document confirming this. According to the 2005 Enterprise Law and its implementing documents - the latest document is Decree No. 43/2010/ND-CP dated April 15, 2010 of the Government on business registration (collectively referred to as the "Enterprise Law"), the business name includes two elements: (1) Type of enterprise (including: Limited liability company, the phrase "limited liability" can be abbreviated as "LLC"; joint stock company, the phrase "joint stock" can be abbreviated as "CP"; partnership company, the phrase "partnership" can be abbreviated as "HD"; private enterprise, the phrase "private" can be abbreviated as "TN") and (2) the proper name of the enterprise. That is, if X is the proper name of the enterprise, then the enterprise name will be “X Limited Liability Company”. In addition, the enterprise can use the business line, profession, and investment form to form the enterprise name if the enterprise has registered that business line or profession or made an investment in that form. For example, the business registration authority can accept the name “X Fish Sauce Company Limited” as the enterprise name.

The right to a business name is established when the business registers this name during the business registration process with the business registration authority in the province or city where the business intends to locate its headquarters. The business must then (and has the right to) write or attach the business name at the business's headquarters, branches, and representative offices and print or write the business name on transaction documents, records, documents, and publications issued by the business.

The business name is not necessarily a trade name for the following two reasons: First, as mentioned above, the concept of “business area” in the definition of a trade name is unclear and does not help to determine what a “business area” is; second, the scope of protection of a trade name is different from that of a business name.

According to the Law on Enterprises, the name of an enterprise containing a proper name component that is identical to the proper name of a registered enterprise will not be accepted by the business registration authority. This means that, in principle, if the name of an enterprise has been registered, other enterprises will not be able to use the name containing the proper name component of that enterprise to conduct business registration. However, this protection mechanism is only limited to the province or city, specifically the province or city where the relevant enterprise conducts business registration. Therefore, if “Company X” is registered in province Y, the Law on Enterprises does not prohibit other enterprises from registering the name “Company X” in province Z. Such a provision of the Law on Enterprises has created many difficulties and complications when applying the law in practice, it will cause a large number of enterprises with the same name nationwide. In addition, this provision also causes difficulties for the protection of trade names under the Law on Intellectual Property.

Trade names are protected on the basis of first use. Therefore, in principle, in the event that two enterprises with the same name use their own business name in business activities, the enterprise that uses the same name will have the right to use the same name.

The first enterprise will be recognized as the legal owner of that trade name. However, in reality, this issue is not simple. As mentioned, the elements to determine a trade name include "business field" and "business area", while "business field" is clear, "business area" is almost very difficult to determine. For example, there are two enterprises with the same name, the first enterprise packages packaging and products with the name of the enterprise and distributes the products in province Y. Then, the second enterprise also packages its products with its own business name and distributes the products in province Z (according to the Law on Enterprises, the second enterprise can register to do business with the same name as the first enterprise but in a different province or city). These two enterprises not only have the same name but also operate in the same business field, is the act of packaging products under the business name of the first enterprise considered prior use? If the answer is “yes”, then the “business area” in this case must be understood as the entire territory of Vietnam, because the first enterprise used the enterprise name (as a trade name) first but only within the geographical limits of province Y and the second enterprise used that name later but also only within the limits of province Z. Conversely, if the answer is “no”, then it means that the “business area” must be interpreted separately as province Y and province Z, that is, the geographical area where the enterprise distributes products and therefore “has partners, customers or reputation”.

When the law on enterprises stipulates that the name of an enterprise must not be the same or confusingly similar to the name of another enterprise registered within the province or centrally-run city, enterprises will still encounter difficulties in expanding their scope of operations to other provinces.

Clause 4, Article 11 of Decree No. 88/2006/ND-CP of the Government on business registration stipulates: “In case the name of an enterprise violates the regulations

According to the provisions of the law on protection of industrial property rights for trade names, the enterprise with the infringing name must register to change its name. If this provision is applied to the above example, one of the two enterprises, if deemed to have infringed intellectual property rights, will have to change its business name even though both enterprises have fully complied with the provisions of the law on enterprises during the process of business registration.

* The overlap between trade name and trademark

Trade names and trademarks are both subjects of industrial property rights under the Law on Intellectual Property. However, many businesses now confuse trade names and trademarks as one, but in fact these are two different subjects with completely different characteristics and protection regulations.

A trade name is the name of an organization or individual used in business activities to distinguish the business entity bearing that name from other business entities in the same field and business area. Thus, when establishing a business, the founder must name and use it to register with the state management agency to be able to conduct business activities. Meanwhile, a trademark is a sign to distinguish goods and services of the same type from different production and business establishments. A trademark can be a word, an image or a combination of those elements expressed in one or more colors. However, in reality, this distinction is completely relative. Normally, the accepted trade name is the full name of the company as recorded in the business registration certificate, while a trademark is a sign to distinguish a product or service brought to the market by the business. That is the difference. In other cases, the trade name and the trademark may be one, because the enterprise uses its name as the main sign to

distinguish the goods and services that the enterprise trades with other entities that also trade in the same type of goods and services.

The provisions of the Enterprise Law on enterprise names make it possible for different enterprises to use the same proper name when established and only need to be of different types to be granted a business registration certificate. In addition, the business registration agency does not have the data system of the Intellectual Property Office, so it has granted many business names that are identical or similar to the trademarks and geographical indications of other organizations and individuals, but do not violate the provisions of the Enterprise Law on enterprise names. On the other hand, the scope of trademark protection is nationwide, however, the scope of trade name protection is limited to the local area, so there are many specific cases where two businesses with completely identical names in two different localities, one business has "quickly" registered a trademark as part of the business name before the other business and according to regulations, the business has "the exclusive right to use that trademark nationwide" [10], so the business with the duplicated trade name will likely violate industrial property rights for the trademark. But the problem is, the business has not registered a trademark but the business registration agency has granted the business name completely in accordance with the Law on Enterprises, so can the violation of industrial property rights be handled? The answer is no, because the current law does not stipulate measures to compel the amendment of the business name that the business itself has been granted correctly. This issue is also causing headaches for the authorities at present when merging the administrative boundaries of the entire former Ha Tay province into Hanoi. According to information from the Business Registration Office, there are currently 772 enterprises with the same name. So what solution to handle the above problems is still an open question. According to the provisions of Article 17 of the Decree

No. 43/2010/ND-CP on business registration, it is not allowed to use the trade name, trademark, geographical indication of an organization or individual that has been protected to form the proper name of the enterprise, except in cases where it is approved by the owner of that trade name, trademark, geographical indication. Enterprises must take responsibility before the law if their business name violates intellectual property regulations. In case "the name of the enterprise violates the regulations on protection of industrial property rights, the enterprise with the violating name must register to change its name" [6]. Industrial property owners have the right to request the business registration authority to request the enterprise with a name that violates their industrial property rights to change its name accordingly. Although the law stipulates this, in reality it is very difficult to enforce because not every business accepts to change its name, because they have been granted business registration in accordance with the provisions of the law on enterprises and they have to work very hard to build their reputation in the market.

In addition, according to the provisions of the Investment Law, the investment certificate for a foreign-invested project is also the business registration certificate. The investment certificate is issued by the provincial People's Committee and the management boards of industrial parks and export processing zones, which also leads to the duplication of names between foreign-invested enterprises and domestic enterprises.

Through the above analysis, it can be seen that the overlap and lack of consistency between the provisions of the Intellectual Property Law and the Enterprise Law have caused difficulties and complications in applying the law in real life, leading to inconsistencies in the interpretation of the law and affecting the protection of trade names under the Intellectual Property Law due to different adjustments of the two specialized laws.

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