Actions against enterprises’ names infringing upon industrial property rights in Vietnam

Actions against enterprises’ names infringing upon industrial property rights in Vietnam (Internet image)

Regarding this issue, LawNet would like to answer as follows:

1. Actions against enterprises’ names infringing upon industrial property rights in Vietnam

Actions against enterprises’ names infringing upon industrial property rights according to Article 19 of Decree 01/2021/ND-CP is as follows:

- It is prohibited to use a protected trade name, brand name, or geographical indication of an entity as part of an enterprise’s proper name unless it is accepted by the owner of such protected trade name or brand name.

Before registering a name, the enterprise or its founder may check the database of industrial property authorities for registered brand names and geographical indications.

- Regulations of the Law on intellectual property are the basis for identification of enterprises’ names that infringe upon industrial property rights.

Enterprises shall assume legal responsibility if their names infringe upon industrial property rights. Every enterprise whose name infringes upon industrial property rights must follow procedures for change of its name.

- Every holder of industrial property rights is entitled to send a written request to the relevant Business Registration Office to request the enterprise whose name infringes upon industrial property rights to change its name.

Such written request must be accompanied with the following documents:

+ The conclusion given by a competent authority that the enterprise’s name infringes upon industrial property rights;

+ The certificate of registration of brand name or geographical indication; an extract from the national register of protected brand names and geographical indications issued by an industrial property authority;

The certificate of registration of international brand name protected in Vietnam issued by an industrial property authority;

The contract for use of an object of industrial property in case the requester is the transferee of rights to use such object of industrial property.

- Within 10 working days from the receipt of adequate documents prescribed in Clause 3 of Article 19 of Decree 01/2021/ND-CP, the relevant Business Registration Office shall request the enterprise whose name infringes upon industrial property rights to change its name within 02 months from the date of request.

The request sent to the enterprise must be accompanied with the documents mentioned in Clause 3 of Article 19 of Decree 01/2021/ND-CP.

If such enterprise fails to change its name as requested by the aforementioned deadline, the Business Registration Office shall notify a competent authority for taking actions in accordance with regulations of the Law on intellectual property.

- In case the notified authority issues a decision to impose an administrative penalty which requests the enterprise to change its name or remove infringing elements from its name, if the enterprise still fails to comply with such request by the prescribed deadline, the Business Registration Office shall request the enterprise to provide explanations as prescribed in Point c Clause 1 Article 216 of the Law on Enterprises.

If the enterprise fails to provide explanations, the Business Registration Office shall revoke the enterprise registration certificate as prescribed in Point d Clause 1 Article 212 of the Law on Enterprises.

- The Business Registration Office shall notify results of actions against the enterprise’s name infringing upon industrial property rights to the holder of industrial property rights prescribed in Clause 3 of this Article.

- The Ministry of Planning and Investment shall cooperate with the Ministry of Science and Technology to elaborate this Article.

2. Registration of enterprise’s name in Vietnam

According to Article 18 of Decree 01/2021/ND-CP, regulations on registration of enterprise’s name in Vietnam are as follows:

- The enterprise or its founder shall not use a name that is already used by another enterprise or easily confused with another enterprise’s name that is already registered on the National Enterprise Registration Database, except for the names of enterprises that have been dissolved or declared bankrupt by the Court.

- Business Registration Offices are entitled to accept or reject the names selected by enterprises as prescribed by law. In order to avoid the use of used or confusing names or commission of violations against regulations on naming of enterprises, the Business Registration Office’s decision will be final.

If disagreeing with the decision given by the Business Registration Office, the enterprise may file a lawsuit in accordance with regulations of the Law on administrative procedures.

- Enterprises that are operating under their investment licenses or investment certificates (also business registration certificates) or another document of equivalent validity issued before July 01, 2015 and whose name are the same as or confused with other enterprises’ names registered on the National Enterprise Registration Database may continue using their registered name and are not required to change such names.

- Enterprises whose names coincide or are confused with each other are recommended to negotiate about changing their names.

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