Pham Duy Khuong, partner
S & B Law
Enterprise names that infringe upon protected industrial property subject matters, including marks, geographical indications and trade names, can be seen everywhere in Vietnam. This is due to inconsistence between regulations on business registration and those on intellectual property rights.
|Enterprise names that infringe upon protected industrial property subject matters can be seen everywhere in Vietnam__Photo: Internet
Though the regulations on enterprise registration procedures prohibit enterprises from registering names confusingly similar or identical to registered brands, they provide no measure to prevent and handle infringements. As a result, numerous enterprise names are using industrial property subject matters protected in Vietnam, especially well-known brands. The infringers usually refuse to remove infringing elements from their names for the reason that their names have been registered with business registry offices.
Before Joint Circular No. 05/2016/TTLT-BKHCN-BKHĐT is enacted, enterprise names that are concluded to have infringing elements against protected industrial property subject matters are handled in accordance with the Law on Intellectual Property and Law on Enterprises and their guiding documents, including Decree No. 99/2013/ND-CP dated August 29, 2013, on sanctioning administrative violations in industrial property and Circular No. 11/2015/TT-BKHCN guiding a number of articles of Decree No. 99/2013/ND-CP, and Decree No. 78/2015/ND-CP on business registration.
Enforcing the above documents is the Inspectorate of the Ministry of Science and Technology, Inspectorates of provincial-level Science and Technology Departments, Police Departments, Market Management Force and Business Registry Offices. Since these bodies have different powers and carry out varied procedures for handling industrial property infringements, the handling of infringing enterprise names remain ineffective and has little deterrent effect.
Joint Circular No. 05/2016/TTLT-BKHCN-BKHĐT, jointly issued by Ministry of Science and Technology (with authority and responsibility for management of industrial property) and Ministry of Investment and Planning (with authority and responsibility for management of enterprise registration), is expected to help address the situation. It comprehensively prescribes specific procedures and powers of each responsible body for handling infringing enterprise names.
The new regulation compels cooperation between infringers and industrial property rights holders in settling their disputes through negotiations or prescribes heavy fines to be imposed for infringements.
In addition to sanctions prescribed in this Joint Circular, as per the new Penal Code which will come into effect on July 1, infringements upon protected marks, geographical indications or trade names may be punishable by imprisonment penalty. This is the most severe punishment that IPR infringers can carry in Vietnam.-