What should the owner do when its trademark is infringed
What should an individual/organization do when its registered trademark has not yet been granted a protection title, or has been granted the protection title but the trademark has been used by others?
A trademark is a sign used to distinguish goods or services of different individuals/organizations. Registration of trademark protection helps an individual/ organization to establish rights to its trademark.
Article 2.1 of Law No. 42/2019/QH14 amending and supplementing a number of articles of Law on Insurance Business and Law on Intellectual Property stipulates that: “Industrial property rights to an invention, an industrial design, a layout design, a trademark are established on the basis of the decision on granting a protection title of competent state agency ….. “.
Thus, according to the mentioned-above provision, the trademark protection title is a legal basis for an individual/organization to establish rights to its trademark for goods and services listed in its trademark registration application. Under Article 9, Article 129, Article 138 and Article 141 of the 2005 Intellectual Property Law, after being granted the trademark protection title, a trademark owner has the following rights:
- To use, advertise and print the trademark on goods, packages, business facilities, means of service provision and transaction documents in business activities;
- Transferring ownership, right to use the trademark to other individuals/organizations; and
- To take measures permitted by law to protect its intellectual property rights
In fact, there are many persons infringing right to trademark of others by using identical or similar marks without the permission of its owner. In this situation, the owner of the infringed trademark has the right to request persons who have committed acts of infringement to terminate the infringing acts, and make complaint to state agencies for handling these infringing acts.
- The Intellectual Property Law and its guiding legal instruments have not provisions on carrying out procedures for trademark registration before using it. Accordingly, individuals/organizations may design and use a trademark if they have demand to use it. However, they should pay attention to respect and not infringe other individuals/organizations’ rights to trademark in accordance with the Intellectual Property Law and other relevant laws.
- “First to file principle” and “Priority principle” provided in Article 91 and Article 92 of the 2005 Intellectual Property Law indicates that an applicant for registration of a trademark may claim priority on the basis of the first application for the same object at the time of filing of the application. According to these principles, a protection title shall be issued to the owner of trademark who has a valid application with the priority date or earliest filing date that meets the conditions for the protection. Thus, before being granted a protection title, the owner can only have priority right but not other rights to its trademark as described above