Can a trade name be the same as a protected trademark?

Pursuant to Clause 1, Article 129 of the Intellectual Property Law 2005, amended and supplemented in 2009 and 2019, the use of identical or similar signs is protected for similar goods, services, goods and services without permission. The owner's permission is considered an infringement of trademark rights.

Also according to Clause 1, Article 19 of Decree 01/2021/ND-CP, it is forbidden to use protected trade names, trademarks, or geographical indications of organizations or individuals to form the business's own name. , unless approved by the owner of that trade name or trademark.

Thus, without the owner's approval, an enterprise cannot name a trade name identical to a protected trademark name. This is to protect the business's industrial property rights over the registered trademark and avoid causing confusion for customers.

Risks may arise when placing a trade name that is identical to a trademark

According to the provisions of Articles 211, 202, 212 of the 2005 Intellectual Property Law, amended and supplemented in 2009 and 2019, the sanctions that businesses may suffer in case of intellectual property rights infringement include:

• Penalized for administrative violations
• Civil measures will be applied such as: forced to stop infringing acts; forced to publicly apologize and rectify; forced to perform civil obligations; forced to pay compensation for damages;
• Will be criminally prosecuted if there are elements constituting a crime

How to handle businesses to avoid having a trade name that overlaps with a protected trademark

Business name registration and trademark registration are two different administrative procedures. The Business Registration Office under the Department of Planning and Investment where the enterprise is headquartered has the authority to approve the registration and change of enterprise name. The National Office of Intellectual Property reviews applications and grants trademark protection certificates. Therefore, there will be no comparison and detection of violations

Businesses can avoid naming a trade name identical to a protected trademark:

• For businesses preparing to register a business name: before registering a business name, business entities can refer to registered trademarks and geographical indications stored in the Database. Data on trademarks and geographical indications from state management agencies on industrial property.
• For businesses that have registered their business name: if the business name is identical to the protected trademark, it must change the business name. The order and procedures for changing the business name will comply with the provisions of Decree 75/2015/ND-CP on business registration.

Above is all the information we share about the risks of naming a trade name identical to a protected trademark. If you have any questions related to your business and its activities, please contact us via:

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