By Linh Nguyen
Overview of the law case
Parties:
- Plaintiff: Dat Xanh Group (abbreviated as DXG)
- Defendant: Real Estate Dat Xanh 47 Company Limited (abbreviated as DX 47).
DXG, having business registration granted by Department of Planning and Investment in Hochiminh on 23/11/2003, owns trademarks “Dat Xanh” protected under several trademark registrations since 05/03/2009. The company’s main business fields are: trading real estates, houses and buildings, and office leasing services.
DX 47 was granted the business name including “Dat Xanh” in business registration by Department of Planning and Investment in Dak Lak on 12/07/2021 with range of business lines including identical business fields as DXG.
DXG filed a lawsuit petition to the Civil Court of Dak Lak alleging that the Defendant infringed their trademarks “Dat Xanh” by registering identical sign as business name and using it in the same business fields.
Court Decision and Rationale Behind
The Court accepted the petition of DXG, and forced DX 47 to terminate the usage of business name including the registered trademark of the plaintiff together with publicly apologizing for infringement actions of trademark “Dat Xanh” belonging to the plaintiff, and rectifying in three consecutive issues of national and local newspapers in Dak Lak. The Court’s judgement is based on the below legal basis:
Article 129 of Vietnam IP Law stipulates infringing acts of trademark and trade name as using signs identical with protected marks for identical or similar goods/services that is likely to cause confusion as to the origin of the goods or services.
Clause 19 of Decree 01/2021/ND-CP on enterprise registration stipulates that “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…”. Vietnam IP Law is the basis for identification of enterprises’ names that infringe upon industrial property rights, and enterprises shall assume legal responsibility in such circumstance, and must follow procedures for change of its name then.
Analysis and Commentary
Most people think that business name, trade name and trademark are one as after all, they themselves identify a business. The fact is they are different, and used for different purposes. It is highly crucial to understand the differences there-between so that you may craft your business identity and build up your brand amidst legal harmony.
Let’s break them down in simple way:
So, why this distinction is important? It is because you only have strong basis to take legal action against someone who uses your trademark without your permission. On the other hand, the business name registration may constitute an infringing acts against registered trademark of other third party. By aware of such differences, before establishing your business, you should consider about these following matters:
- Check for Similar Names: make sure no one else is using it, especially as a trademark.
- Register trademark to protect your business and brand.
- Use trade name in daily business operations.
- Keep an Eye Out: Once your mark is registered, watch out for anyone trying to use it without your permission. You have the legal rights to stop them.
Thus, after all, you can protect your business and brand, and avoid legal headaches down the road. It’s worth taking the time to get it right!
Need help with IP registration and consultation in Vietnam? Reach out to us at kass@kass.asia!
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