Joint Circular No. 05/2016/TTLT-BKHCN-BKHDT dated April 05, 2016 of the Ministry of Science and Technology and the Ministry of Planning and Investment on detailing and guiding measures against corporate names that infringe industrial property rights

JOINT CIRCULAR

Detailing and guiding the handling of enterprise names infringing upon industrial property rights[1]

Pursuant to the Government’s Decree No. 99/2013/ND-CP of August 29, 2013, on the administrative sanctioning of industrial property infringements (below referred to as Decree No. 99/2013/ND-CP);

Pursuant to the Government’s Decree No. 78/2015/ND-CP of September 14, 2015, prescribing enterprise registration (below referred to as Decree No. 78/2015/ND-CP);

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

Pursuant to the Government’s Decree No. 116/2008/ND-CP of November 14, 2008, defining 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 promulgates the Joint Circular detailing and guiding the handling of enterprise names infringing upon industrial property rights.

Chapter I

GENERAL PROVISIONS

Article 1. Scope of regulation

This Circular details and guides grounds for identifying enterprise names that infringe upon industrial property rights and consequence remedies; the order and procedures for changing enterprise names and removing infringing elements from enterprise names and revoking enterprise registration certificates with regard to enterprise names infringing upon industrial property rights.

Article 2. Subjects of application

1. Enterprises established in accordance with the Law on Enterprises and having their registered names infringing upon industrial property rights.

2. Holders of industrial property rights to protected marks, trade names or geographical indications (below referred to as industrial property rights holders).

3. Agencies competent to handle industrial property infringements; persons competent to administratively sanction industrial property infringements.

4. Business registration offices of provincial-level Planning and Investment Departments (below referred to as business registration offices).

5. Other related organizations and individuals as defined by law.

Article 3. Competence to handle infringements and change enterprise names and revoke enterprise registration certificates

1. Agencies competent to handle and persons competent to administratively sanction infringements and conclude or decide on enterprise names infringing upon industrial property rights are those with sanctioning competence defined in Chapter III of Decree No. 99/2013/ND-CP.

2. Agencies competent to change enterprise names and revoke enterprise registration certificates are business registration offices of localities where enterprises with infringing names are headquartered.

Chapter II

GROUNDS FOR IDENTIFYING ENTERPRISE NAMES INFRINGING UPON INDUSTRIAL PROPERTY RIGHTS AND CONSEQUENCE REMEDIES

Article 4. Grounds for identifying enterprise names infringing upon industrial property rights

Grounds for identifying enterprise names infringing upon industrial property rights are those prescribed by the law on intellectual property and concluded or decided by agencies competent to handle or persons competent to administratively sanction industrial property infringements.

Article 5. Written conclusions on enterprise names infringing upon industrial property rights

Written conclusions of competent agencies on enterprise names infringing upon industrial property rights prescribed at Point a, Clause 4, Article 19 of Decree No. 78/2015/ND-CP include:

1. Inspection or examination conclusions of agencies competent to handle industrial property infringements mentioned in Clause 1, Article 3 of this Circular.

2. Decisions of persons with sanctioning competence on administrative sanctioning of infringements which compel the change of, and removal of infringing elements from, enterprise names as a consequence remedy.

Article 6. Remedy of compelling the change of, and removal of infringing elements from, enterprise names

1. The remedy of compelling the change of, and removal of infringing elements from, an enterprise name may only be applied when the infringing enterprise fails to terminate using its infringing name on its goods, means of business or service provision, signboards and transaction documents, or fails to register the change of its infringing name as notified by the business registration office or agreed upon by the parties.

2. In case a decision on administrative sanctioning of an infringement compels the change of, or removal of infringing elements from, its name, the infringing enterprise shall take one or all of the following remedies:

a/ Registering the change of its name;

b/ Notifying in writing the change of its business line to the business registration office;

c/ Other remedies prescribed by law.

3. The registration of change of enterprise names and notification of change of business lines prescribed in Clause 2 of this Article must comply with the law on enterprises.

Article 7. Remedy of revoking enterprise registration certificates

The remedy of revoking enterprise registration certificates shall be applied to infringing enterprises that fail to change, or remove infringing elements from, their names under competent persons’ decisions on administrative sanctioning of infringements, and to infringing enterprises that fail to send explanation reports under Point c, Clause 1, Article 209 of the Law on Enterprises to business registration offices within 6 months after the deadline for sending such reports or after receiving a written request for reporting.       

Chapter III

ORDER AND PROCEDURES FOR HANDLING ENTERPRISE NAMES INFRINGING UPON INDUSTRIAL PROPERTY RIGHTS

Article 8. Order and procedures for handling enterprise name-related infringements

1. When receiving a written request for handling of an enterprise name-related infringement, an agency competent to handle infringements may ask the party requested to be handled to provide information, documents and evidence for explanation under Point c, Clause 2, Article 25 of Decree No. 99/2013/ND-CP, or inspect, examine, verify and collect evidence. Concluding the infringement handling, the above agency shall issue:

a/ A written conclusion on the use of the enterprise name infringing upon industrial property rights, which assesses and concludes that the enterprise name contains an element(s) infringing upon the rights to a protected mark, geographical indication or trade name, and that the use of such enterprise name on goods, means of business or service provision, signboards and transaction documents in related business fields constitutes an industrial property infringement; or,

b/ A decision on administrative sanctioning of infringement which compels the change of, or removal of the infringing element from, the enterprise name.

2. The order and procedures for changing enterprise names and business lines and revoking enterprise registration certificates must comply with the law on enterprises.

Article 9. Order and procedures for changing enterprise names, removing infringing elements from enterprise names in case there are written conclusions on enterprise names infringing upon industrial property rights

1. In case an agency competent to handle infringements issues a written conclusion on the use of an enterprise name infringing upon industrial property rights under Point a, Clause 1, Article 8 of this Circular, it shall send such written conclusion to the industrial property rights holder and infringing enterprise and allow them to negotiate and reach agreement within 30 days from the date of issuance of such written conclusion.

2. In case the parties can reach agreement within the above time limit and propose a solution compliant with the law on intellectual property and not affecting rights and interests of a third party, consumers and the society under Clause 2, Article 27 of Decree No. 99/2013/ND-CP, the agency competent to handle the infringement shall issue a notice recognizing such agreement and stop the handling of the case.

In case the parties cannot reach agreement within the above time limit, the industrial property rights holder may send a notice to the business registration office requesting the latter to request in writing the enterprise with the infringing name to change such name. This notice shall be enclosed with all documents and files specified in Clause 4, Article 19 of Decree No. 78/2015/ND-CP.

Within 10 working days after receiving complete and valid documents, the business registration office shall issue a notice requesting the enterprise with the infringing name to change its name and carry out the name changing procedure within 2 months from the date of issuance of the notice.

3. If the enterprise with the infringing name carries out the name changing procedure within 2 months from the date of issuance of the notice, the business registration office shall notify it to the agency competent to handle the infringement and industrial property rights holder within 5 working days after it approves the change.

4. If the enterprise with the infringing name fails to carry out the name changing procedure, within 3 working days after the expiration of the time limit for carrying out the procedure for changing infringing names under Clause 2 of this Article, the business registration office shall notify such to the agency competent to handle administrative violations in the field of planning and investment and concurrently to the agency competent to handle the infringement so that they can inspect, examine, and handle the infringement in accordance with the law on intellectual property.

Article 10. Order and procedures for changing enterprise names, removing infringing elements from enterprise names and revoking enterprise registration certificates in case there are decisions on administrative sanctioning of industrial property infringements

1. In case a competent person issues a decision on administrative sanctioning of an infringement under Point b, Clause 1, Article 8 of this Circular, the agency competent to handle the infringement shall send such decision to the involved parties and business registration office. Within 60 days after the sanctioning decision takes effect, the infringing enterprise shall change, and remove the infringing element from, its name under Clause 2, Article 6 of this Circular.

2. If the infringing enterprise fails to carry out the procedure for changing, and removing the infringing element from, its name, within 10 working days after the expiration of the time limit for execution of the sanctioning decision prescribed in Clause 1 of this Article, the agency competent to handle the infringement shall notify such to the business registration office for coordinated handling.

Within 5 working days after receiving a notice from the agency competent to handle the infringement, the business registration office shall request in writing the infringing enterprise to make an explanatory report under Point c, Clause 1, Article 209 of the Law on Enterprises.

3. Within 10 working days after the expiration of the time limit for making an explanatory report at the request of the business registration office, if the infringing enterprise fails to make such a report, the business registration office shall notify such to the agency competent to handle administrative violations in the field of planning and investment for administratively handling the infringing enterprise in accordance with law.

4. Within 6 months after the expiration of the time limit for making explanatory reports prescribed in Clause 2 of this Article, if the infringing enterprise fails to make such a report as requested, the business registration office shall revoke the enterprise registration certificate according to the order and procedures prescribed in Clause 4, Article 63 of Decree No. 78/2015/ND-CP.

Article 11. Responsibilities in the coordinated handling of enterprise names infringing upon industrial property rights

1. Industrial property rights holders shall provide adequate files and documents as prescribed and coordinate with competent agencies in the handling of enterprise names infringing upon industrial property rights.

2. Business registration offices of localities where enterprises are headquartered shall receive and execute requests of industrial property rights holders for change of infringing enterprise names, and requests of agencies competent to handle infringements for revocation of enterprise registration certificates.

3. Business registration offices shall coordinate with, and appoint their officers to join, inspection and examination teams upon receiving requests for handling of enterprise names infringing upon industrial property rights; and request infringing enterprises to make explanatory reports under Point c, Clause 1, Article 209 of the Law on Enterprises upon receiving notices of the agencies competent to handle infringements.

4. Agencies competent to handle infringements shall coordinate with business registration offices in considering explanatory reports of enterprises with infringing names in order to reach agreement on handling measures in accordance with the current law.

Chapter IV

IMPLEMENTATION PROVISIONS

Article 12. Effect and organization of implementation

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

2. The Inspectorate of the Ministry of Science and Technology and the Business Registration Management Department of the Ministry of Planning and Investment shall inspect the implementation of this Circular in the course of handling enterprise names infringing upon industrial property rights.-

[1] Công Báo Nos 301-302 (27/4/2016)