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Forcibly removed the trade name, trademark of another person from company name, a judgment decided by a court

Bross & Partners has just helped clients win a commercial and business lawsuit involving incorporation name that infringes the exclusive rights of trademark and trade name. According to the case file, the plaintiff, a Hanoi-based household business Brand Dong Tien (Hiệu Đồng Tiền or Coin Brand) widely known by his 20-year-old brand “Brand Dong Tien” with high goodwill used for fried shrimp powder and fried crispy flour, sued the defendant (Cong ty co phan bot thuc pham Asea Dong Tien) for infringement of the plaintiff’s exclusive right to use of trade name and trademark Hieu Dong Tien, asked the court to force the defendant to carry out procedures to change the defendant’s corporate name at the Business Registration Office under the Hanoi Department for Planning and Investment

Amongst the important findings made by the Hanoi city’s people court in its first instance verdict 17/2019/KDTM-ST of May 31, 2019 (that entered in force due to no appeal), the following ones are significant:

1. The plaintiff has been using his name (Brand Dong Tien) in his business, promotion and introduction activities in the market of Hanoi and neighboring provinces before the defendant established and registered business practice in 2014. The plaintiff is the owner of registered trademarks "Hieu Dong Tien & coin device" granted by registration nos. 59681 and 208482 by the NOIP. The defendant’s corporate was granted a business registration on June 20, 2014 and the business identifier "Asea Dong Tien" (Asea Coin) that started to used on March 3, 2016 (later) compared to the trademark right "Brand Dong Tien” established (sooner) by the plaintiff on July 9, 2013.
2. The expert report (expert opinion) issued by the VIPRI also confirmed that the business identifier Asea Dong Tien included in the defendant’s company name is an infringement element of the plaintiff's protected trademark.
3. The use of the defendant's trade name does not satisfy the required criteria under Section 74, 78 of the IP Law, which stipulates that a trade name is capable of distinguishing if “it is neither identical with nor confusingly similar to other trade names that have been used before by others in the same industry and business areas”. Accordingly, all acts of using commercial instructions or business identifiers identical with or confusingly similar to those used by other traders or entities for the same types of products and services, causing confusion in terms of business subjects and business activities under such trade names are considered to be infringing upon the rights to trade names.
4. Naming an enterprise by the defendant is based on the Law on Enterprise of 2015 but leads to a violation of intellectual property rights stipulated in the IP Law while the IP Law states that "where there is a difference between intellectual property related provisions of this Law with the provisions of other Laws, the provisions of this Law shall prevail”. On the other hand, Article 19 (1) Decree 78/2015/ND-CP stipulates that commercial names of other organizations and individuals may not be used to form the proper names of enterprises. Therefore, the plaintiff's initiating a lawsuit, asking to force the defendant to terminate the infringement of both trademark and trade name Brand Dong Tien, to force the defendant to proceed with the procedure for change in name with the business registration office by removing the commercial identifier Dong Tien from his business name, transaction name, abbreviated name is grounded.
5. It took about 10 months from the acceptance date until the court released its judgment is acceptable timelimit if comparing with other lawsuits in other provinces.

Lessons Learnt

The court’s ruling mentioned above has showed that justice has been enforced, the enterprises communities’ faith in the Vietnamses judicial hearing system is optimistic. From our perspective, we see some important messages that can be drawn from this case:

1. The phenomenon of abusing simple and easy procedures for business registration to appropriate brands, trademarks and trade names protected by other enterprises to constitutes as one’s company name is real one in the business environment in Vietnam and the occurrence of this phenomenon tends to increase, also similar to the phenomenon of abuse of domain name registration mechanism by appropriating brands, trademarks, names of others to register domain names, especially the national domain name .VN

2. Upon a business registration certificate containing other’s trademark, trade name, such registrant has publicly showed its intention is to use its company name either in the form of a trademark or trade name, both of them cause confusion about the business subject, business activities with other person’s brands or trademarks with prestige, popularity or goodwill, to make the public mistakenly believe that goods or services bearing those similar commercial indications have the same source of commerce.

3. A request for handling infringer with administrative measure according to Decree 99/2013/ND-CP may be failed or rejected by the IPR enforcement agencies (before being accepted and heard by the court, this case was refused by the competent authority) because the business registration granted is deemed as a basis to justify the legal use of the business name containing others’ trademark or trade name..

4. The Law cannot be a tool for the advantageous parties to carry out illegal acts, more specifically business registration issued under the Law on Enterprise of 2014 cannot be a tool to support the the subject has a bad intention, ie. copying or putting a trademark or trade name - objects of intellectual property rights - of another person being protected by the State under the IP Law into his or her business name. The phenomenon of this advantage is technically a reflection of the possibility of conflict between corporate law and IP law, whereby this way of resolving conflicts is the principle of applying specialized law at Section 5(2) of the Law on Intellectual Property stipulates that in case of differences between the provisions of intellectual property of this Law and the provisions of other laws, the provisions of this Law shall apply. In order to concretize the principle of applying specialized laws, the Government has assigned the task of two specialized management ministries, the Ministry of Planning and Investment and the Ministry of Science and Technology, to guide the procedures for naming enterprises in the business registration procedures to ensure not infringing upon rights to trademarks or trade names. On the other hand, Decree 78/2015/ND-CP dated September 14, 2015 guiding the implementation of the Law on Enterprise of 2014 also states the principle of preventing the abuse of business registration regulations to infringement of other’s intellectual property rights, particularly paragraph 1 Article 19 provides that "trade names, trademarks, geographical indications of protected organizations and individuals must not be used to constitute the proper name of the enterprise, except for the school to be approved by the owner of the trade name, trademark, or geographical indication. Before registering a new business name, a potential enterprise or its founder may refer to registered trademarks and geographical indications databases kept by State industrial property management agency".

Should you have any query, please get in touch with us at vinh@bross.vn or 84-903 287 057

 Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.