Unfair Competition Related to Intellectual Property under the IP Vietnam Law
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Combat with Unfair Competition is an Independent Legal Tool
Intellectual property right is not a sole right but a bunch of different rights established based on different legal rules prescribed by the laws which allows the the right holders exclusively use and exploit the idea, intellectual creation such as invention, industrial design, new plant varieties, copyright, related right including commercial indications namely trademark, geographical indication[1].
However, where the ideas, innovative products as mentioned above are not protected yet because of some reasons, and which are being infringed by others, then the law still gives the right holder a final chance to prevent such infringement. For instance, a product packaging design or a slogan used stably in commerce and known by consumers are copycatted by others, the owner of that product packaging design or slogan may bring an anti-unfair competition action even though no rights over design or trademark are registered[2].
In other words, anti-unfair competition is a legal method independent from other legal remedies against infringement of patent, design, trademark or copyright, which may be granted in some circumstances.[3]
Four acts shall be deemed to be acts of unfair competition and the proving obligation
The Vietnam IP Law only accepts four (04) types of unfair competition acts:
Type 1: Using commercial indications to cause confusion as to business entities, business activities or commercial origin of goods or services;
Type 2: Using commercial indications to cause confusion as to the origin, production method, utilities, quality, quantity or other characteristics of goods or services; or as to the conditions for provision of goods or services;
Type 3: Using marks protected in a country which is a contracting party to a treaty of which the Socialist Republic of Vietnam is a member and under which representatives or agents of owners of such marks are prohibited from using such marks, if users are representatives or agents of the mark owners and such use is neither consented to by the mark owners nor justified;[4]
Type 4: Registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected trade names or marks of others, or geographical indications without having the right to use, for the purpose of possessing such domain name, benefiting from or prejudicing the reputation and popularity of the respective mark, trade name or geographical indication.[5]
Whoever asking to enforce the right to protection against acts of unfair competition is obliged to prove that his/her rights are being violated according to Article 130 of the IP Law. Among 4 types of acts above, Types 1 and 2 are most common and all relating to the use of commercial indications causing confusion.
Article 130 commercial indications may include unregistered industrial property rights such as trademarks, trade names, geographical indications, labels, business slogans, business logos, and packaging designs of the goods.
In order to prevail a claim against Types 1 & 2 unfair competition, a claimant usually has to prove that he/she meets the following 04 conditions:
(a) Commerce indications have been used earlier by the claimant than the competitor’s.
(b) Commercial indications have been widely used and stably in association with the claimant’s legitimate business activities and popularly known by the consumers.
(c) Commercial indications used by the competitor must be likely to cause confusion in term of business entity, commercial origin of goods or services, geographical origin, production methods, features, quality, quantity or other characteristics of goods or services.
(d) The competitor continues to use the trademark, trade name, or geographical indication that causes confusion through that domain name even though he/she has been warned by the owner of trademark, trade name.
Bross & Partners has experience in supporting and representing clients to protect trademark (brand name). Should you have needs, please contact us at Email: vinh@bross.vn; Mobile: 0903 287 057; WeChat: Vinhbross2603; WhatsApp: +84903287057; Skype: vinh.bross; Zalo: +84903287057.
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 preparing Vietnamese translation of PCT applications and entering the Vietnamese national phase, filing, prosecution, enforcement, anti-counterfeiting, litigation and domain name matters.
[2] Article 10bis of the Paris Convention on industrial property protection in which Vietnam is a party since March 08, 1949 regulates that any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition, for example: (a) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; (b) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; or (c) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.
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