From 20th of May 2016, Joint Circular No. 05/2016/TTLT-BKHCN-BKHDT (Circular 05) by Ministry of Science and Technology (MOST) in coordination with Ministry of Planning & Investment (MPI), detailing and providing guidance on handling IPR infringement in Vietnam came into effect.
The infringement on corporate names (especially on trademark) has been rising due to the entrepreneurship establishment’s sharp increase. However, the lack of detailed guidelines of dispute resolution affects the intellectual property rights of the owner.
Circular 05 promulgated on 5th April 2016 details and guides grounds for determining corporate names that infringe industrial property rights and measures against such infringements.
Guides grounds for determining corporate names that infringe industrial property rights
As regulated in the Circular No.5 on handling IPR infringement in Vietnam, the written conclusion given by the competent authority, which specifies the corporate name infringes the industrial property rights, would be the grounds, including:
1. Conclusions on the inspection made by the competent authority to handle infringements in the industrial property rights. The competent authorities are Ministry of Science and Technology Inspector, Market Control Department, Customs Department, Public Security, etc…(regulated in Section III of Decree No. 99/2013/NĐ-CP);
2. The decision on the imposition of administrative penalties given by the competent official, imposing administrative penalty which requests the company to change its name or remove infringing elements from its name.
Measures for handling IPR infringement in Vietnam
According to the Circular 05, IP dispute resolutions include:
– Forcible change of the company’s name or forcible removal of infringing elements from the company’s name.
– Revocation of the enterprise registration certificate
The first measure shall apply to cases where the violating company fails to terminate its act of using infringing name on products or fails to carry out procedures for changing such infringing.
The second one shall apply to the cases where the violating company fails to comply with the forcible change of the company’s name or the forcible removal of infringing elements from the company’s name as prescribed in the decision on the composition of administrative penalties given by the competent officials, and fails to provide explanation to the business registration office within 06 months as of the end of the deadline for sending such explanation or at written request.
Procedures for handling IPR infringement in Vietnam related to corporate names
The new Joint Circular create favorable conditions for the proprietor of a trademark whose rights have been infringed to submit the request for handling infringement in Vietnam.
When receiving the request, the infringement-handling authority may request the alleged violator to provide information, documents and evidences or conduct the inspection, verification and collection of evidences.
When the result comes out, the authority shall give one of the following documents:
a) The written conclusion on the corporate name that infringes the industrial property rights.
b) The decision on the imposition of administrative penalties, specifying the forcible change of the company’s name or the forcible removal of infringing elements from the company’s name.
The new regulations enable the involved parties to negotiate within 30 days as of the issuance of written conclusion on the corporate name that infringes the industrial property rights.
If the concerned parties reach an agreement within the prescribed time-limit and propose handling measures in compliance with the law on intellectual property without affecting rights and interests of third parties, the authority shall issue a notice recording such agreement and stop its settlement in this case.
In case the concerned parties cannot reach an agreement, the holder of industrial property rights is entitled to send written notice to the business registration office, requesting the business registration office to grant the request to the company whose name infringes the industrial property rights to change its name as regulated.
Some Pending Issues in handling IPR infringement in Vietnam
With the new circular crafted jointly by the MOST and the MPI, the Vietnamese authorities aims to resolve the scenario in which lack of collaboration and incompatible legislative regulations between these two ministries.
However, the new law only provides measures, procedures for handling IPR infringement in Vietnam but there is no guide to control the infringing activities. The business registration currently occurs at the Department of Planning and Investment (DPI) of the relevant province/city. Meanwhile the National Office of Intellectual Property of Viet Nam is liable for registering trademarks and geographical indications. The conflicted information system of these ministries leads to failure in dealing with the identical/similar trademarks, geographical indications or corporate names. On the account of the ambiguous proceeding involved and the imprecise interpretation of the relevant laws, the enterprises has often faced with the difficulty not only in business or trademarks registrations but also in handling IPR infringement in Vietnam.
In total, the process for successfully mitigating corporate names infringement should be included sharing information and collaboration of the competent authorities. To ensure that action is taken at the earliest possible point and the business’ interests is secured, companies should familiarize themselves with procedures of handling IPR infringement in Vietnam as well as related legislation.
In case you require more information or require advice on handling IPR infringement in Vietnam, Laos, Cambodia, and Myanmar as well as other IP matters, please do not hesitate to contact us via email: firstname.lastname@example.org