Many brands owning trademarks registered for protection in Vietnam have been approved by the Courts of Vietnam to register and use a national domain name containing the registered trademark element. So, what is the basis for the Court’s view? Information about Judgment No. 24/2020/KDTM-PT dated 22 June 2020 (“Judgment”) issued by the High People’s Court in Ho Chi Minh City (“Court”) was published on the website announcing the Court’s judgments and decisions at congbobanan.toaan.gov.vn, BLawyers Vietnam analyzes below.

1. What is the difference between domain name registration and trademark protection registration?

There are 3 main differences, including:

1. 1. 1. The function of using a domain name and using a trademark is different. The domain name is used to identify the server’s internet address consisting of a series of characters separated by a period “.”. The trademark is a sign used to distinguish goods and services of different business entities in the form of alphabets, words, drawings, images, holograms or a combination of these elements.
      2. Currently, Vietnamese law does not have a specific document governing domain name and domain name registration. The Ministry of Information and Communications is the management authority for domain names registered in Vietnam. For trademarks, the governing documents are the Law on Intellectual Property and guiding decrees and circulars. When registering, the owner will register with the Intellectual Property Department under the Ministry of Science and Technology.
      3. The registration of domain name and the registration of trademark protection have no default relationship according to Vietnamese law. Thus, the misunderstanding that a successful domain name registration will automatically be protected by a trademark associated with the element of the domain name can lead to an infringement of the protected trademark rights of other subjects.

Although the current Law on Intellectual Property has provided regulations to solve the relationship between a domain name and trademark, domain name infringement is only considered as an act of unfair competition.

2. What is the Court’s view of the Judgment?

The following is a summary of the content of Judgment regarding BMW (Germany) company suing a Vietnamese citizen over the use of a domain name like bmwmotorrad.com.vn (registered since 2014) associated with the element “BMW”, which has been registered by the plaintiff for trademark protection in Vietnam since 1997 and earlier.

The Court, when accepting to settle the Judgment, applied the provisions of the Civil Code, Law on Intellectual Property, and relevant legal documents to raise the following views:

1. 1. 1. Plaintiff’s trademark has been registered for protection in Vietnam and other countries;
      2. As the trademark owner, the plaintiff has the exclusive right to use and authorize others to use the plaintiff’s trademark under protection;
      3. Respondent has not been allowed by the plaintiff to use the plaintiff’s trademark in any way, so the respondent has not had any legal rights and interests related to the plaintiff’s trademark as well as the domain names containing elements associated with the plaintiff’s trademark; and
      4. However, the content of the national domain name registration to introduce/advertise the defendant’s vehicle-related services is confusingly like the plaintiff’s protected trademark.

Therefore, the Court approved the plaintiff’s petition, giving priority to the plaintiff to register and use the national domain name that contains elements of the registered trademark. It requested the respondent to revoke the domain names infringing the plaintiff’s trademark, which forced the respondent to make a public apology about the infringement in a newspaper.

According to current regulations and the opinion of the Court in the Judgment, if the subject has registered a domain name but that domain name infringes on the registered trademark name of other subjects, the domain name registration may still not be recognized.

The above is not official advice from BLawyers Vietnam’s lawyers. Should you have any questions about the above content, please revert to BLawyers Vietnam at consult@blawyersvn.com. We are more than happy to hear from you!

Date: 04 July 2023

Writer: Minh Truong