Domain Name – Settlement of Intellectual Property Rights Infringement
In this day and age, the traditional business models i.e. any business activities being carried on at physical stores, offices etc., no longer keep the upper hand as they tend to be changed with the effect and support of electronic technologies. Moreover, people now have less time to spend for going to brick-and-mortar stores to buy stuffs, instead, they are gravitating towards online shopping, which is called “electronic commerce” (e-commerce), because of its preeminent convenience.
Based on the Ministry of Industry and Trade (MIT)’s report on Vietnam electronic business index in 2021, the average growth percentage of e-commerce in the period from 2016 to 2019 is 30% and keep its momentum to the year 2020 to remain at over 30% still, reaching to the sale of US$15 billion. Under this report, forty-two percent (42%) of the enterprises surveyed in 2019 and 2020 used websites for their business operation and goods advertisement. Website is often considered as an important and stable channel in developing brand value and is easily controlled in the online environment.
In order to run an e-commerce website, the owner of an e-commerce website (the “Owner”) is required to register a domain name in Vietnam for such website through an official domain name registration agent.
The domain of our law firm was registered legally and our logo was also registered and protected under the laws of Vietnam
If the expected domain name applying for registration does not violate the statutory principles for naming a domain name or was not already registered by other individual or organization, the Owner can register and own a domain name with the suffix “.vn”. However, the registered domain name may infringe other individuals or organizations’ intellectual property rights (the “IP rights”) that are protected by the Law on Intellectual Property (the “IP Law”). Thus, the Ministry of Information and Communication (MIC) and the Ministry of Science and Technology (MST) jointly issued Joint-Circular No. 14/2016/TTLT–BTTT–BKHCN providing guidelines for procedures for change or withdrawal of the domain infringing the IP Law.
Based on the proportion and level of IP rights infringement, the competent authorities shall decide to apply an administrative penalization and applicable remedy for the occurred damages, e.g. change of the domain information or return of the domain by the infringer or withdrawal of domain by the competent authorities in accordance with the laws on intellectual property, technology and information, telecommunications. In general principles, a domain name is subject to administrative penalization decisions and relevant remedies if (i) it is coincided with or similar to the one protected under the IP Law and the contents published on the website accompanied to the domain name breaching the IP Law; (ii) it itself breaches the IP Law.
This is the first time both MIC and MST have established a settlement measure to govern the domain names that infringe the IP rights according to the statutory procedures for change of domain information or return of domain or withdrawal of domain as mentioned above. In case you have a strong legal basis proving that your IP Rights (e.g. trademark, trade name or geographical indication) have been infringed, you are entitled to request the competent authorities of Vietnam to protect your interests by applying administrative measures as stipulated in the Joint-Circular No. 14/2016/TTLT–BTTT–BKHCN.
Finally, it is advised that your potential domain name should be verified carefully before initiating the registration process in order to avoid any infringement of others’ IP rights and your potential trademarks should also be registered and protected as soon as possible. In case you have any queries or problems regarding infringed IP rights of domain name, trademark registration as well as infringement settlement, please do not hesitate to contact us.
It is noted that this article does not constitute a professional legal advice and only constitutes a public information on a general matter. Feel free to contact us for further detailed information for any specific case.
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