The Factors Infringing the Rights to Trade Names Including Factors under the Latest Regulations?
What are the elements of infringing upon the rights to a trade name?
Article 79 of Decree 65/2023/ND-CP on the elements of infringing upon the rights to a trade name includes the following elements:
- The element of infringing upon the rights to a trade name is manifested in the form of commercial indications attached to goods, packaging of goods, service means, transaction papers, signs, advertising means, and other business means, which are identical or similar to the extent of causing confusion with the protected trade name.
- The basis for considering the element of infringing upon the rights to a trade name is the scope of protection of the trade name determined based on the evidence showing the lawful use of the trade name provided by the owner of the trade name, specifically identifying the business entity, business establishment, business activities, field of business, and business area and the process of using the trade name.
- To determine whether a sign suspected of being an element of infringing upon the rights to a trade name, it is necessary to compare that sign with the protected trade name, compare the business entity, business establishment, business activities related to the suspected sign, and compare the goods or services bearing the suspected sign with the goods or services of the protected trade name, based on the following basis:
- The suspected sign is identical or similar to the extent of causing confusion with the protected trade name; a sign is considered identical to the protected trade name if it is identical in terms of word structure, including pronunciation and transliteration of the trade name; a sign is considered similar to the protected trade name if it is similar in terms of word structure, pronunciation, transliteration of the trade name, causing confusion for consumers about the business entity, business establishment, business activities under the protected trade name.
- Goods or services bearing the suspected sign are considered identical or similar to the goods or services bearing the protected trade name if they are identical or similar in nature or function, utility, and have the same distribution channels; or are related to each other in terms of nature or function or implementation method.
What are the elements of infringing upon the rights to a trade name according to current regulations? (Image from the Internet)
How is the industrial property right for a trade name established?
According to Clause 3, Article 10 of Decree 65/2023/ND-CP, the industrial property right for a trade name is established based on the practical lawful use of the trade name corresponding to the geographical area (territory) and field of business without the need to carry out registration procedures. When using the right and resolving disputes regarding the right to a trade name, the entity with the trade name must prove their right with evidence as prescribed in Point b, Clause 5, Article 91 of Decree 65/2023/ND-CP.
How is the scope of rights to a trade name regulated?
Based on Article 34 of Decree 65/2023/ND-CP, the regulation is as follows:
Scope of industrial property rights
1. The scope of industrial property rights for inventions, industrial designs, layout designs, trademarks, geographical indications is determined according to the scope of protection recorded in the National Register of Industrial Property, International Register of Trademarks and International Register of Industrial Designs or in protection titles, certificates of international trademark registration, decisions to accept protection of internationally registered industrial designs.
2. The scope of rights to a trade name is determined according to the scope of protection of the trade name, including the trade name, business field, and business territory in which the trade name is lawfully used by the subject bearing the trade name. Registering the name of a business entity in business procedures is not considered as the use of that name but only a condition for the use of that name to be considered lawful.
3. The scope of rights to trade secrets is determined according to the scope of protection of trade secrets, including a collection of information that constitutes trade secrets, arranged in a precise and complete order to the extent that it can be exploited.
4. The entities of industrial property rights enjoy rights and fulfill obligations according to the scope of protection with conditions prescribed in Articles 132, 133, 133a, 134, 135, 136, 136a, 137 of the Intellectual Property Law.
Thus, the scope of rights to a trade name is determined according to the scope of protection of the trade name, including the trade name, business field, and business territory in which the trade name is lawfully used by the subject bearing the trade name.
Registering the name of an organization or individual engaging in business in business procedures is not considered as the use of that name but only a condition for the use of that name to be considered lawful.
LawNet