Guidance on actions against enterprises’ names infringing upon industrial property rights in Vietnam

Guidance on actions against enterprises’ names infringing upon industrial property rights in Vietnam (Internet image) 

1. Guidance on actions against enterprises’ names infringing upon industrial property rights in Vietnam

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

• The use of trade names, trademarks, geographical indications of organizations, or individuals that have been protected to form a business's proper name is not allowed unless consent from the owner of such trade names or trademarks is obtained. Before registering a business name, the person establishing the business or the business should refer to the trademarks and geographical indications registered and stored in the Industrial Property Database of the state management agency responsible for industrial property.

• The basis for determining whether a business name infringes industrial property rights is carried out according to the provisions of intellectual property law.

Businesses must assume legal responsibility if naming the business infringes industrial property rights. In case of infringement, the business with the violating name must register to change its name.

• Owners of industrial property rights have the right to send a written request to the Business Registration Authority, asking the business with an infringing name to change its name to comply. Accompanying the request must be copies of the following documents:

  • A written conclusion from a competent authority regarding the use of the business name infringing industrial property rights;

  • Trademark Registration Certificates, Geographical Indications Registration Certificates, extracts from the National Registration Book on protected trademarks and geographical indications issued by the state management agency for industrial property; International Trademark Registration Certificates protected in Vietnam issued by the state management agency for industrial property; a contract for use of the industrial property object if the requester is the transferee of the usage rights of that intellectual property object.

• Within 10 working days from the date of receipt of all documents as prescribed in Clause 3, Article 19 of Decree 01/2021/NĐ-CP, the Business Registration Authority will issue a notice requesting the business with the infringing name to change it and proceed with the procedures to register the name change within 2 months from the date of notification.

Accompanying the notice must be the documents specified in Clause 3, Article 19 of Decree 01/2021/NĐ-CP. After this period, if the business does not register to change its name as required, the Business Registration Authority will notify the competent state agency for further action according to the intellectual property law.

• If the competent authority issues an administrative penalty decision, applying remedial measures such as forcing the change of the business name or eliminating the infringing elements in the business name, and the violating organization or individual does not comply within the legally specified time, the competent authority for handling violations will notify the Business Registration Authority to request the business to report as prescribed in point c, clause 1, Article 216 of Enterprise Law 2020. For non-reporting businesses, the Business Registration Authority will revoke the Enterprise Registration Certificate as prescribed in point d, clause 1, Article 212 of Enterprise Law 2020.

• The Business Registration Authority shall notify the results of handling cases of business names infringing industrial property rights to the industrial property rights holder as prescribed in Clause 3, Article 19 of Decree 01/2021/NĐ-CP.

2. Regulations on registration of enterprise’s name in Vietnam

Regulations on registration of enterprise’s name in Vietnam according to Article 18 of Decree 01/2021/NĐ-CP are as follows:

• The business founder or the business itself must not register a business name that is identical or confusingly similar to another business name already registered in the National Business Registration Database nationwide, except for businesses that have been dissolved or have a valid court decision declaring them bankrupt.

• The Business Registration Authority has the right to approve or reject the proposed business name in accordance with the law. To avoid duplicate, confusing, and violating regulations on business name registration, the decision of the Business Registration Authority is final. In case of disagreement with the Business Registration Authority's decision, the business may file a lawsuit according to the administrative procedure law.

• Businesses operating under an Investment License or an Investment Certificate (which also serves as the Business Registration Certificate) or equivalent legal documents issued before July 1, 2015, can continue using the registered business name and are not required to change the name even if it is identical or confusingly similar to a name already registered in the National Business Registration Database.

• Encouragement and facilitation are provided for businesses with identical or confusingly similar names to negotiate and register for a name change voluntarily.

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