Cancellation of the Trademark Registration Certificate

I. Details of the incident

Company X is the only business with the name X. Prior to and at the time of being granted its business registration number on June 20, 2017, Company X’s name did not match or cause confusion with any other trademarks already protected in Vietnam.

To ensure the smooth operation of its business, both before and after its establishment, Company X signed the following contracts:

• In June 2017, Company X signed a contract with Mat Bao Joint Stock Company to register the domain name vn for X, and the website with this domain name has been continuously used by Company X ever since.
• At the end of June 2017, Company X signed a contract to have invoices printed. The invoices used by Company X are printed with the name of Company X and its trademark. Subsequent invoices issued by Company X to its partners and customers always include the image of Company X’s trademark. The trademark of Company X was designed by the owner.
• After establishing the necessary website and invoicing conditions, Company X, under the trade name X, conducted continuous business operations in various geographical areas across Vietnam with a large number of business partners.

Subsequently, Company X, due to negligence, failed to register its trademark. Company Y, a business partner and customer of Company X since July 2017, registered Company Y’s trademark in August 2018. In 2020, Company Y was granted a trademark registration certificate for the trademark commonly used by Company X. Company Y’s representative demanded that Company X immediately cease using the trademark, change its company name and domain name, compensate for damages, and publicly apologize for the trademark infringement.

The trademark needs to be filed for protection immediately.

Confused and worried, Company X sought the services of Inter Justice to protect them in this ironic situation.

II. Relevant legal regulations

Intellectual property law stipulates:

Article 17. Respect for pre-established rights

1. Industrial property rights may be invalidated or prohibited from use if they conflict with the intellectual property rights of other organizations or individuals that have been established previously.

Article 76. General conditions for protected trade names

A trade name is protected if it is capable of distinguishing the business entity bearing that trade name from other business entities in the same field and geographical area.

Article 78. Distinctiveness of Trade Names

A trade name is considered distinctive if it meets the following conditions:

1. Contains proper names, except where they are already widely known due to usage;
2. Not identical or confusingly similar to a trade name previously used by another person in the same business field and area;
3. It must not be identical or similar to the extent of causing confusion with another person’s trademark or with a geographical indication that has been protected before the date the trade name was used.

Article 74. Distinctiveness of Trademarks

2. A trademark is considered to lack distinctiveness if it falls under any of the following categories:

• k) A mark that is identical or similar to another person’s currently used trade name, if the use of that mark could cause confusion among consumers regarding the origin of goods or services;

III. The lawyer’s legal solution to the case

• It was found that trademark X granted to company Y does not meet the requirements for trademark registration due to the following violations:
• Firstly, there is a violation of Company X’s prior rights.
• Secondly, there is no distinguishing feature due to the similarity with the trade name of Company X.
• Thirdly, the name of X is eligible for protection under the regulations on trade names.
• The lawyer defended Company X by initiating proceedings to cancel Company Y’s trademark registration certificate.

IV. Outcome of the case resolution

• Company Y’s trademark registration certificate for X was cancelled, and therefore was not valid at the time of issuance.
• Company X successfully protected its trade name, trademark, domain name, and company name, avoiding being forced to publicly apologize or pay damages.
• Company X immediately proceeded to register intellectual property protection for the trademark it created and developed.