The law clearly distinguishes trademarks from trade names. Nevertheless, many businesses use trade names that are consistent with the trademarks of their products or services.
For example: The trade name ‘Coca-Cola’ and the trademark ‘Coca-Cola’.
Using a trade name as a trademark that is not registered for protection at the National Office of Intellectual Property (NOIP) might result in a high risk of trademark infringement.
Therefore, it is necessary to be able to clearly distinguish a trademark from a trade name in order to pick the most appropriate protection scheme for your business.
A trademark is a recognizable sign used to distinguish the goods and services of one business entity from those of others.
A trade name is a designation capable of distinguishing the business entity bearing it from another entity in the same business domain and area.
A trade name is the name of the trademark holder.
For example: The trade name of Coca-Cola Beverages Vietnam Limited is ‘Coca-Cola’.
Coca-Cola owns the following brands: Coca-Cola, Fanta, Sprite, Minute Maid Nutri Boost, Dasani, and more, among which Coca-Cola is the most well-known brand.
Basis of protection
Requirements on criteria of trademark protection must be met.
A Certificate of Trademark Registration will be issued by the NOIP.
No registration required.
Protection is founded on the basis of lawful, long-term, and continuous use.
In the event of a dispute, the proof of continuous use shall be based on the number of years the company has been in operation, the number of consumers who recognize the Company’s product(s), its market share or popularity in a region, etc.
Scope of protection
Within the registered territory.
Within the business domain and area.
Validity of protection
10 years and can be renewed for many consecutive terms.
No limit. Protection terminated when not in use.
The right to use the trademark is assigned/transferred.
All business establishments and activities are transferred.
A trademark expresses a wider degree of distinction and recognition than that of a trade name.
While a trade name is simply a designation of a business entity, a trademark can be in the form of letters, words, numerals, logos, a combination of colors, or geometric figures, etc. Some countries even accept smells and sounds as trademarks to be protected.
Trademark registration is the safest, most comprehensive, and effective way to protect the rights of business owners in terms of trademarks and trade names.
Article 73, 74, 75, 76, 77, 78, and 79 of the 2005 Law on Intellectual Property, amended in 2009
- For optimal protection, trademark holders should also extensively register for the protection of related classes of goods and services.
For example: Vehicle business owners can register the following 3 classes of goods and services for trademark protection:
- Class 12: Vehicles; apparatus for locomotion by land, air or water.
- Class 35: Advertising; business management; business administration; office functions.
- Class 37: Building construction; repair; installation services.
- First-to-use countries vs. First-to-file countries
In cases of trademark and trade name infringement, countries like the UK, the United States, and Ireland adopt the “first-to-use” principle.
On the other hand, France, China, Vietnam, and a few other countries tend to apply the “first-to-file” principle.
This is important to know when it comes to registering for protection abroad or resolving intellectual property disputes.
- Evidence proving the use of trade names can be effectively utilized as a foundation to prove the ownership of trademarks in cases of disputes or rejection by the NOIP.
For example: Sagami Chain Co., Ltd. (Japan) successfully proved that the trade name ‘SAGAMI’ (coinciding with the text in the brand name) had been used since 1970. This evidence was used the basis in opposing the granting of a protection title to the trademark ‘SAGAMI’ of Masan Consumer Corp.