Trademark infringement is the unauthorized use of a mark that is identical or confusingly similar to a registered trademark, violating the rights of the trademark owner. In Vietnam, trademark protection is governed by the Law on Intellectual Property 2005 (amended in 2009, 2019, 2022) and related regulations. Understanding infringing acts is crucial for businesses to safeguard their brands and take legal action when necessary.
Clause 1, Article 129 of the current Intellectual Property Law states: The following acts, when conducted without the permission of the trademark owner, shall be considered trademark infringement:
a) Using a sign identical to a protected trademark for goods or services identical to those listed in the trademark registration.
b) Using a sign identical to a protected trademark for similar or related goods or services, if such use is likely to cause confusion about the origin of the goods or services.
c) Using a sign similar to a protected trademark for identical, similar, or related goods or services, if such use is likely to cause confusion about the origin of the goods or services.
d) Using a sign identical or similar to a well-known trademark, or a translated or transliterated version of a well-known trademark, for any goods or services, including those that are not identical, similar, or related to the goods or services registered under the well-known trademark, if such use is likely to cause confusion about the origin of the goods or create a false impression of a connection between the user of the sign and the owner of the well-known trademark.
To better illustrate this, let’s take a look at an example. Consider a well-known Vietnamese coffee brand, “Trung Nguyên”, which holds a registered trademark for coffee products. The following situations illustrate potential trademark infringement under Clause 1, Article 129:
Case (a): Direct Copying – If a company produces instant coffee and labels it “Trung Nguyên” without authorization, it infringes on the trademark because the sign is identical, and the products are the same.
Case (b): Confusing Similarity – If a company sells tea or energy drinks under the name “Trung Nguyên”, confusion may arise since these products are related to coffee.
Case (c): Similar Marks – A company using “Trung Nguyênn” or “TrungNguyên” for coffee products could also mislead consumers, violating this provision.
Case (d): Well-Known Trademark Protection – If a fashion company launches “Trung Nguyên” brand shoes, it could still infringe, even though footwear is unrelated to coffee, because consumers might mistakenly associate the brand with Trung Nguyên Coffee.
In Vietnam, trademark protection is an important legal aspect that businesses should be aware of when entering the market.
For businesses that already own a registered trademark, Vietnamese law provides strong protection against unauthorized use. Clause 1, Article 129 of the Intellectual Property Law states that if another company uses a trademark that is identical or confusingly similar to yours without permission, you have the right to take legal action. This applies whether the infringing mark is used for the same, similar, or even unrelated goods or services, as long as it creates confusion. Legal options include filing a complaint with enforcement agencies, seeking damages through court proceedings, or requesting the infringing party to stop their actions.
For businesses entering the Vietnamese market and registering a trademark, it is essential to check for existing trademarks before launching a brand. Using a name, logo, or packaging that is too similar to an existing trademark can lead to legal disputes, fines, or forced rebranding. Additionally, Vietnam also protects well-known trademarks, meaning even unregistered marks with strong international recognition could be legally protected.
While these regulations provide strong trademark protection, enforcement can sometimes be challenging. Trademark disputes can take time to resolve, and online infringement, such as counterfeit goods sold on e-commerce platforms, is a growing issue.
Despite these difficulties, having a registered trademark significantly strengthens a company’s position when enforcing its rights. For businesses operating in Vietnam, understanding these legal realities helps in making informed decisions about brand protection strategies and potential risks in the market.
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1. Lawyer Vu Thi Phuong Thanh, Manager of TLA Law LLC, Ha Noi Bar Association
Email: vtpthanh@tlalaw.vn
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Email: tmle@tlalaw.vn.
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