Joint Circular No. 05/2016/TTLT-BKHCN-BKHĐT detailing and guiding the handling of cases where business names infringe on industrial property rights

JOINT CIRCULAR

Detailed regulations and guidance on handling cases where business names infringe industrial property rights Business name infringing industrial property rights

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Pursuant to Decree No. 99/2013/ND-CP dated August 29, 2013 of the Government on administrative penalties for violations in the field of industrial property (hereinafter referred to as Decree No. 99/2013/ND-CP); (Pursuant to Decree No. 78/2015/ND-CP dated September 14, 2015 of the Government on business registration (hereinafter referred to as Decree No. 78/2015/ND-CP);

Pursuant to Decree No. 20/2013/ND-CP dated February 26, 2013 of the Government on the functions, tasks, powers, and organizational structure of the Ministry of Science and Technology;

Pursuant to Decree No. 116/2008/ND-CP dated November 14, 2008 of the Government on the functions, tasks, powers, and organizational structure of the Ministry of Planning and Investment;

The Minister of Science and Technology and the Minister of Planning and Investment issue this Circular detailing and guiding the handling of cases where business names infringe industrial property rights.

This Circular stipulates detailed regulations and guidance on the basis for determining business names that infringe industrial property rights and measures to mitigate consequences; procedures and formalities for changing business names, removing elements violating the business name, and revoking the Enterprise Registration Certificate in cases where business names infringe industrial property rights. 1. A business established under the Law on Enterprises uses a registered business name that infringes industrial property rights.

Chapter I

GENERAL PROVISIONS

Article 1. Scope of Regulation

2. The subject holding industrial property rights for trademarks, trade names, and geographical indications (hereinafter referred to as the subject holding industrial property rights).

Article 2. Applicability

3. Authorities with the power to handle violations in the field of industrial property; persons authorized to impose administrative penalties for violations in the field of industrial property.

4. The Business Registration Department under the Department of Planning and Investment (hereinafter referred to as the Business Registration Department).

5. Other organizations and individuals related according to the provisions of the law.

Article 3. Authority to handle violations and implement changes to business names and revoke Enterprise Registration Certificates

1. The authority to handle violations and the person authorized to impose administrative penalties concludes or decides that the business name infringes industrial property rights as provided in Chapter III of Decree No. 99/2013/ND-CP.

2. The authority to implement changes to business names and revoke Enterprise Registration Certificates is the Business Registration Department where the business with the infringing name has its principal office.

BASIS FOR DETERMINING BUSINESS NAMES INFRINGING INDUSTRIAL PROPERTY RIGHTS AND MEASURES TO MITIGATE CONSEQUENCES

Article 4. Basis for determining business names infringing industrial property rights

Chapter II

The basis for determining business names infringing industrial property rights shall be carried out in accordance with the laws on intellectual property, concluded or decided by the authority to handle violations or the person authorized to impose administrative penalties in the field of industrial property. RIGHTS OF INDUSTRIAL PROPERTY AND REMEDIAL MEASURES TO MITIGATE AFTEREFFECTS

Article 4. Basis for Determining the Name of an Enterprise Infringing Industrial Property Rights

The basis for determining the name of an enterprise infringing industrial property rights shall be carried out in accordance with the provisions of the law on intellectual property, concluded or decided by the competent authority to handle violations or the authorized administrative sanction decision-maker in the field of industrial property.

Article 5. Document concluding on the enterprise name infringing industrial property rights

The document concluding on the use of an enterprise name infringing industrial property rights as prescribed in Point a Clause 4 Article 19 Decree 78/2015/NĐ-CP includes:

1. The conclusion of inspection and examination by the competent authority handling infringement of industrial property rights as prescribed in Clause 1 Article 3 Circular this.

2. The administrative penalty decision of the authorized person to impose penalties, including the application of measures to remedy consequences such as compelling the change of the enterprise name or removing the infringing element from the enterprise name.

Article 6. Measures to compel the change of the enterprise name, removal of the infringing element from the enterprise name

1. The measure to compel the change of the enterprise name, removal of the infringing element from the enterprise name shall only be applied when the violating enterprise does not cease using the infringing enterprise name on goods, business means, service means, signboards, transaction documents, or does not proceed with the procedures to change the infringing enterprise name according to the notification of the Business Registration Department or according to the agreement of the parties.

2. When the Administrative Penalty Decision applies remedial measures to compel the change of the enterprise name or to compel the removal of the infringing element from the enterprise name, the enterprise shall implement one or more of the following measures:

a) Registering the change of the enterprise name;

b) Notifying in writing about the change of the enterprise's business sectors to the Business Registration Department;

c) Other measures as prescribed by law.

3. The registration of the change of the enterprise name, notification of the change of the enterprise's business sectors as prescribed in Clause 2 of this Article shall be carried out in accordance with the provisions of the Law on Enterprises.

Article 7. Measure to revoke the Enterprise Registration Certificate

The measure to revoke the Enterprise Registration Certificate shall be applied to enterprises that violate and fail to implement the remedial measure of changing the enterprise name or removing the infringing element from the enterprise name as decided by the administrative penalty decision of the authorized person, and the violating enterprise does not submit a report explaining the situation as prescribed in Point c Clause 1 Article 209 Enterprise Law to the Business Registration Department within six months from the date of expiration of the submission deadline or upon request in writing.

Chapter III

PROCEDURES AND FORMALITIES FOR HANDLING CASES OF ENTERPRISE NAMES INFRINGING INDUSTRIAL PROPERTY RIGHTS

Article 8. Procedures and formalities for handling violations related to enterprise names

1. Upon receipt of a request to handle violations related to enterprise names, the competent authority handling violations may require the party being requested to provide information, documents, evidence to explain as prescribed in Point c Clause 2 Article 25 Decree 99/2013/NĐ-CP or conduct inspections, examinations, verifications, and collection of evidence. The result of the violation handling process, the competent authority handling the violation shall issue one of the following documents:

a) Document concluding on the use of an enterprise name infringing industrial property rights, in which it evaluates and concludes that the enterprise name contains elements infringing trademarks, geographical indications, protected trade names; the use of that enterprise name on goods, business means, service means, signboards, transaction documents in related business fields is considered an act of infringing industrial property rights;

b) Administrative penalty decision in which remedial measures include compelling the change of the enterprise name or compelling the removal of the infringing element from the enterprise name.

2. The procedures and formalities for changing the enterprise name, changing business sectors, and revoking the Enterprise Registration Certificate shall be carried out in accordance with the provisions of the Law on Enterprises.

Article 9. Procedure and process for changing the name of a business and removing infringing elements from the business name in cases where there is a conclusion document stating that the business name infringes on industrial property rights.

1. In cases where the competent authority issues a conclusion document regarding the use of a business name that infringes on industrial property rights according to Point a, Clause 1, Article 8 of this Circular, the competent authority shall send such document to the subject of industrial property rights, the violating business, and create conditions for the parties to negotiate and reach an agreement within thirty days from the date of issuance of the conclusion document.

2. If the parties reach an agreement within the prescribed time limit and propose a solution in compliance with intellectual property laws, which does not affect the rights and interests of third parties, consumers, and society as stipulated in Clause 2, Article 27 of Decree 99/2013/NĐ-CP, the competent authority shall issue a notification recording the agreement and cease further processing of the case.

If the parties fail to reach an agreement within the prescribed time limit, the subject of industrial property rights has the right to send a notification to the Business Registration Agency requesting a document requiring the business with an infringing name to change its name appropriately. The notification from the subject must be accompanied by all necessary documents and files as specified in Clause 4, Article 19 of Decree 78/2015/NĐ-CP.

Within ten working days from the date of receiving complete valid documents, the Business Registration Agency shall issue a Notification requiring the business with an infringing name to change its name and proceed with the name change procedure within two months from the date of issuance of the Notification.

3. Within two months from the date of issuance of the Notification, if the business with an infringing name proceeds with the name change procedure, the Business Registration Agency shall have the responsibility to notify the competent administrative violation handling authority and the subject of industrial property rights about the name change within five working days from the date the Business Registration Agency approves it.

4. Within three working days from the expiration of the name change procedure period as stipulated in Clause 2 of this Article, if the business with an infringing name does not proceed with the name change procedure, the Business Registration Agency shall have the responsibility to notify the competent administrative violation handling authority in the planning and investment sector, and simultaneously notify the competent authority to conduct inspections, examinations, and handle the matter according to the provisions of the intellectual property law.

Article 10. Procedure and process for changing the name of a business and removing infringing elements from the business name, and revoking the Enterprise Registration Certificate in cases where there is a decision to impose administrative penalties for industrial property violations.

1. In cases where the authorized person issues a decision to impose administrative penalties according to Point b, Clause 1, Article 8 of this Circular, the competent authority shall send the administrative penalty decision to the relevant parties and the Business Registration Agency for their knowledge. Within sixty days from the date the administrative penalty decision takes effect, the violating business shall be responsible for changing its name and removing infringing elements from its name according to Clause 2, Article 6 of this Circular.

2. If the violating business does not proceed with the name change procedure, within ten working days from the expiration of the enforcement period of the penalty decision as stipulated in Clause 1 of this Article, the competent authority shall notify the Business Registration Agency to coordinate in handling the matter.

Within five working days from the date of receipt of the notification from the competent authority, the Business Registration Agency shall issue a Notification requiring the business to report and explain according to Point c, Clause 1, Article 209 of the Enterprise Law.

3. Within ten working days from the expiration of the reporting and explaining period requested by the Business Registration Agency, if the violating business does not submit a report and explanation, the Business Registration Agency shall notify the competent administrative violation handling authority in the planning and investment sector to handle the matter administratively according to the law.

4. After six months from the expiration of the reporting and explaining period as stipulated in Clause 2 of this Article, if the business does not submit a report and explanation as required, the Business Registration Agency shall be responsible for revoking the Enterprise Registration Certificate according to the procedures and processes specified in Clause 4, Article 63 of Decree 78/2015/NĐ-CP.

Article 11. Responsibilities and Coordination in Handling Enterprise Names Infringing Industrial Property Rights

1. The subject holding industrial property rights shall be responsible for providing complete files and documents as prescribed and coordinating with competent authorities during the process of handling enterprise names infringing industrial property rights.

2. The Business Registration Office where the enterprise's main office is located shall be responsible for receiving and processing requests to change the enterprise name at the request of the subject holding industrial property rights; requesting the revocation of the Enterprise Registration Certificate at the request of the competent authority handling violations.

3. The Business Registration Office shall be responsible for coordinating and assigning personnel to participate in inspection and verification teams when there is a requirement to coordinate in handling cases involving enterprise names infringing industrial property rights; shall be responsible for requiring enterprises to report and explain in accordance with Point c Clause 1 Article 209 of the Enterprise Law upon receipt of notification from the competent authority handling violations.

4. The competent authority handling violations shall be responsible for coordinating with the Business Registration Office to review the reports and explanations of enterprises with infringing names to unify appropriate measures in accordance with current laws.

Chapter IV

IMPLEMENTING PROVISIONS

Article 12. Effective date and implementation

1. This Circular takes effect from May 20, 2016.

2. The Inspectorate of the Ministry of Science and Technology; the Department of Business Registration under the Ministry of Planning and Investment shall be responsible for monitoring the implementation of the provisions of this Circular during the process of coordinating in handling enterprise names infringing industrial property rights.