A brief comparison of the handling trademark infringement and unfair competition in the field of industrial property

1. Concept & Scope

a) Trademark infringement:

- Trademark infringement is the act of using a sign identical or similar to a protected trademark for goods/services identical or similar to the list of goods/services registered with that trademark without the permission of the trademark owner. More broadly, with famous trademarks, the use of the above-mentioned sign for goods/services that are not identical, not similar or unrelated to the goods and services in the list of goods and services bearing the famous trademark, if it is likely to cause confusion about the origin of the goods or create a false impression about the relationship between the user of that sign and the owner of the famous trademark, is also considered an act of trademark infringement (Article 129, IP Law).

- Scope: Requires a registered trademark certificate.

- Example: Selling shoes under “NIKEE” confusingly similar to “NIKE”.

b) Unfair competition:

- In a broad sense, unfair competition is defined as “an enterprise’s behavior that is contrary to the principles of good faith, honesty, business norms and standards, which cause or may cause damage to the legitimate rights and interests of other enterprises” (Article 3.6 of the Competition Law 2018). Some common behaviors that can be mentioned are dumping, using false information about products to eliminate or reduce the reputation of competitors.

In the field of industrial property, “unfair competition” has a narrower connotation, defined in Article 130 of the IP Law. Accordingly, unfair competition includes the following behaviors:

+ Using commercial indications that cause confusion about: (i) business entities, business activities, commercial origins of goods and services, (ii) origin, production method, features, quality, quantity... conditions for providing goods and services;

+ Using a trademark protected in a country that is a member of an international treaty that prohibits the representative or agent of the trademark owner from using that trademark without the consent of the trademark owner and without a legitimate reason;

+ Possessing or using a domain name that is identical or confusingly similar to another person's protected trademark, trade name, or geographical indication that one does not have the right to use with bad intentions, taking advantage of the prestige and reputation of the corresponding trademark, trade name, or geographical indication to gain illegal profits.

The above mentioned commercial indications are understood as signs and information to guide the trade of goods and services, including trademarks, trade names, business symbols, business slogans, geographical indications, packaging designs of goods, and product labels.

- Scope: No registration required; only need to prove confusing or dishonest acts.

- Example: Coffee shop “Starboks” using logo and design similar to Starbucks.

2. Authorities & Procedures

a) Trademark Infringement:

- Administrative authorities: Inspectorate of Ministry of Science and Technology, Market Surveillance, Customs.

- Courts: Handle civil/commercial disputes.

- Expertise: IP expert conclusion usually required.

b) Unfair competition

- Administrative authorities: Inspectorate of Ministry of Science and Technology, , Market Surveillance.

- Courts: Handle civil disputes.

- Expertise: Not mandatory; evidence of confusing or dishonest acts is sufficient.

3. Remedies

a) Trademark infringement:

- Administrative: Fines; confiscation and destruction of evidence and means of infringement; suspension of business; forced removal of infringing elements on goods and means of business; forced return of illegal profits gained from committing the infringement.

- Civil: Forced cessation of infringement; public apology and correction; forced performance of civil obligations; compensation for damages; destruction or forced distribution or use for non-commercial purposes of goods, raw materials, materials and means used primarily for the production and trading of goods infringing intellectual property rights

- Criminal: If If criminal liability is established.

b) Unfair competition:

- Administrative: Fines, suspension of business activities of infringing goods and services; forced removal and destruction of infringing elements; forced change of business name, removal of infringing elements in business name; forced change of domain name information or return of domain name; forced return of illegal profits obtained from committing the infringing act.

- Civil: Forced termination of infringing acts; public apology, correction; forced performance of civil obligations; compensation for damages; destruction or forced distribution or use for non-commercial purposes of goods, raw materials, materials and means used primarily for production and trading of goods infringing intellectual property rights

- No separate criminal sanctions.

4. Comparision Table

5. Some International Case Laws

5.1. United States

a) Two Pesos, Inc. v. Taco Cabana, Inc. (1992):

The defendant, the owner of a chain of Mexican restaurants, sued the plaintiff, a similar chain of restaurants, for infringement of trade dress under Section 43(a) of the Trademark Act of 1946 (Lanham Act), which provides that "any person... using any false description or representation in relation to any goods or services... shall be liable to... any person... injured by [such] use." The US Supreme Court recognized that trade dress is protected as a trademark without having to acquire secondary meaning if it is inherently distinctive.

b) Qualitex Co. v. Jacobson Products Co. (1995):

Court held that a single color can be protected as a trademark if it serves as a source identifier.

5.2. European Union

a) Adidas v. Fitnessworld (2003, CJEU):

Adidas is the owner of the famous three-stripe trademark. Fitnessworld sells fitness clothing, some of which bears the double-stripe pattern. Adidas sued Fitnessworld for trademark infringement in the Netherlands, alleging that its use of the double-stripe pattern would cause confusion and that such use exploited Adidas' famous three-stripe mark, thereby undermining its exclusivity. The CJEU recognized that Adidas had the right to prohibit confusingly similar or otherwise discreditable uses of the stripe.

b) L’Oréal v. Bellure (2009, CJEU):

Comparative advertising imitating L’Oréal fragrances deemed unfair competition by exploiting brand reputation.

5.3. Japan

Shiseido Case (Tokyo High Court, 1999):

Court ruled that use of packaging similar to Shiseido constituted unfair competition under Japan’s UCPA, even without trademark registration.

5.4. Comparison with Vietnam

Vietnam relies mainly on IP Law and Competition Law, but lacks rich case law compared to the US, EU, and Japan.

6. International Comparative Table