Guidance on identifying acts of appropriating the domain name use right or using domain names regarding industrial property in Vietnam

Guidance on identifying acts of appropriating the domain name use right or using domain names regarding industrial property in Vietnam (Image from the Internet)

On September 30, 2024, the Minister of Science and Technology of Vietnam issued Circular 06/2024/TT-BKHCN amending Circular 11/2015/TT-BKHCN which provides guidance on Decree 99/2013/ND-CP governing the administrative sanctions in industrial property in Vietnam.

Guidance on identifying acts of appropriating the domain name use right or using domain names regarding industrial property in Vietnam

Specifically, from November 15, 2024, acts of appropriating the domain name use right or using domain names in the field of industrial property as stipulated in Point a, Clause 16, Article 14 of Decree 99/2013/ND-CP will be identified as follows:

(1) Entities entitled to request the handling of acts of appropriating the domain name use right or using domain names stipulated in Point a, Clause 16, Article 14 of Decree 99/2013/ND-CP are organizations and individuals that are harmed or potentially harmed by these violating acts. Herein, the domain name referred to in Point a, Clause 16, Article 14 of Decree 99/2013/ND-CP is a domain name under the management of Vietnam (excluding domain names allocated through auction per the telecommunications law);

(2) Acts of appropriating the domain name use right or using domain names are considered acts of unfair competition in industrial property in the following cases:

- Possession and use of a domain name with a string identical or similar, causing confusion with a protected trademark, trade name of another party, or geographical indication which one has no right to use to introduce products, offers, sell goods, identical, similar services, or related services on the website to which the domain name leads; causing confusion to exploit the reputation, fame of the trademark, trade name, or geographical indication to illicitly gain profit.

- Possession and use of a domain name with a string identical or similar, causing confusion with a protected trademark, trade name of another party, or geographical indication which one has no right to use with bad intention under one of the following conditions:

(i) There is evidence proving the organization, individual possessing, using the domain name aims to resell, transfer the domain name registration, use rights to the trademark, trade name holder, agency, organization with authority over geographical indications for profit. Meanwhile, there is evidence that at the time of domain name registration, the organization, individual knew or had reason to know said trademark, trade name, or geographical indication was protected in Vietnam;

(ii) The website to which the domain name leads posts information that harms the reputation, fame of the very trademark, trade name, geographical indication that is protected in Vietnam.

(3) Requests for handling acts of appropriating the domain name use right or using domain names stipulated in Point a, Clause 16, Article 14 of Decree 99/2013/ND-CP must be accompanied by the following information and documents:

- Regarding acts of possession, use of a domain name identical or similar, causing confusion with a protected trademark, trade name of another party, or geographical indication which one has no right to use to exploit the reputation, fame of the respective trademark, trade name, geographical indication for illicit profit:

Documents proving trademarks, geographical indications, trade names are protected in Vietnam, and trademarks, trade names are widely used or are known by Vietnamese consumers in related fields for their reputation, fame or prove that the trademark is considered famous according to Article 75 of the Intellectual Property Law (e.g., information on advertising, marketing, exhibitions; sales revenue; amount of product sold; distribution system, joint ventures, collaborations; investment scale; evaluations by state agencies, associations, professional social organizations, media, consumer votes; charitable, public activities or other information showing the trademark, geographical indication, trade name is widely used in Vietnam or proven to be famous); and

Information, documents proving the party requested to be handled has used the domain name on the Internet to introduce products, offer, sell goods, identical or similar services, or related services on the webpage to which the domain name leads; causing confusion to exploit the reputation, fame of the trademark, trade name, or geographical indication which is protected in Vietnam for illicit profit (e.g., introduction, instructions or other information leading Vietnamese consumers to understand it as agents, branches, or representation offices in Vietnam);

- Regarding acts of possession, use of a domain name identical or similar, causing confusion with a protected trademark, trade name of another, or geographical indication which one has no right to use with bad intention:

Information, documents proving the organization, individual possessing, using the domain name aims to resell, transfer the domain name registration, using rights to the trademark, trade name holder, agency, organization managing the geographical indication for profit and information showing at the time of domain name registration, the organization, individual knew or had reason to know said trademark, trade name, geographical indication was protected in Vietnam; or information showing the website to which the domain name leads posts information harming the reputation, fame of the trademark, trade name, geographical indication that is protected in Vietnam;

- Information, documents proving the party requested to be handled does not have legal rights or legitimate interests in the trademark, geographical indication, trade name protected in Vietnam; information proving the party requested to be handled was not a member, partner, agent with the right holder (if any).

More details can be found in Circular 06/2024/TT-BKHCN which comes into force in Vietnam from November 15, 2024.

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