“As information technology 4.0 develops, the impact of the epidemic on online businesses market is being noticed by investors as it gives more investment opportunities to develop their business even during the difficult times caused by the epidemic. E-commerce offers a lot of opportunities for businesses to grow and expand their business. However, many businesses, especially new businesses founded by small investors, are ignoring measures to protect high-value assets associated with their business like domain names and trademarks. In this article, we provide crucial information to investors on how to protect domain names and trademarks as per Vietnamese laws after establishing an e-commerce business in Vietnam.”
Domain name is understood as a name used to identify a server’s internet address usually containing a bunch of characters separated by “.”. The domain name is shown in the following forms:
In other words, a domain name can become the identity of your online business and your website to sell, showcase and introduce products or services to customers.
Pursuant to Vietnamese law, only after registering the domain name complying to the relevant the laws and regulations, the owner of domain name (“Owner”) can use domain name “.vn”, and complain, denounce and file for a lawsuit when the registration and use of such “.vn” domain name is interfered with or violated in accordance with the provisions of law. The owner can also participate in and coordinate at the request of competent state agencies to combat the abuse of domains and violation of domain laws. Therefore, in order to protect the domain name, enterprises should carry out procedures listed below for registration and protection in accordance with the laws at the time of establishing start-up and beginning an e-commerce business:
A trademark is a sign used to distinguish goods and services of different organizations, individuals, and businesses. The use of trademarks plays an important role in helping consumers in choosing goods and services with good quality and origin quickly and conveniently. Pursuant to Vietnamese law, industrial property rights of the owner’s trademark are only established after the owner files the application and obtains a protection certificate from the ‘Intellectual Property Office of Vietnam’.
The time to carry out the procedures for protection of trademarks in Vietnam can take from 2 to 3 years. Therefore, start-up businesses should register for trademark protection to establish ownership rights over the trademark as soon as possible.
The definitions of trademark and the domain name are completely independent of each other and domain name is not subject to protection under Intellectual Property Law like trademarks. However, domain names and trademarks are closely related to the rights and interests of the business as they help consumers quickly search for trusted products and services through online search engines.
In fact, the domain name of a business is often selected and used based on the trademark and trade name of the business itself. Therefore, registration and use of domain names in accordance with the law helps businesses protect their trademarks and tradename on the internet.
Conversely, from the early stages of start-up, if an e-commerce business does not register for its domain name and trademark protection, the enterprise may face risks such as disputes over domain names and trademarks of goods and services, loss of domain name due to non-registration as prescribed, pre-registration by other competitors, or the use of confusing or similar domain names, trade names or trademarks by other enterprises for profiteering purposes.
Pursuant to Article 130 of the Law on Intellectual Property, the registration or appropriation of domain names coincides with protection of trademarks and trade names for the purpose of seizing domain names, and acts like taking advantage of or damaging the reputation of any trademark, tradename, or corresponding geographical indication are considered a strong non-cold competitive behavior. Therefore, when such violations occur, enterprises can request competent state agencies to take civil and administrative measures only when such domain name or trademark has registered protection in accordance with the relevant laws.
However, in order to best protect trademarks and domain names from the start-up stage on the internet environment, businesses should consider the following options:
– Selecting a domain name that suits the trademark and trade name of the enterprise for conducting e-commerce business activities. This prevents other entities from registering or using similar or misleading domain names or trademarks.
– Carrying out procedures for registration or notification and maintenance of domain names in accordance with the law.
– Carrying out procedures at the Intellectual Property Office of Vietnam for registering to establish rights over trademarks of enterprises at the earliest.
– Considering widespread public use of trademarks and trade names on the website of the enterprise before obtaining protection over such objects by law.
In summary, registration of trademarks and domain names in e-commerce business plays an important role for businesses, especially when the reputation, trust and quality of goods and services of such enterprises have acquired a certain position in the consumer market. Therefore, at the early stages of establishment, e-commerce businesses should register their intellectual property objects in an appropriate manner before using such objects in their business.
The article is based on applicable law at the time noted as above and may no longer be appropriate at the time the reader approaches this article as the applicable law has changed and the specific case that the reader wishes to apply. Therefore, the article is only for reference.