The content of provision of act of unfair competition in IP Law can be regarded as additional mode to protect well-known trademark.
Article 130 reads as follows: “Acts of unfair competition:
1. The following acts shall be deemed to be acts of unfair competition:
a) Using commercial indications to cause confusion as to business entities, business activities or commercial origin of goods or services;
b) Using commercial indications to cause confusion as to the origin, production method, utilities, quality, quantity or other characteristics of goods or services; or as to the conditions for provision of goods or services;
c) Using marks protected in a country which is a contracting party to a treaty of which the Socialist Republic of Vietnam is a member and under which representatives or agents of owners of such marks are prohibited from using such marks, if users are representatives or agents of the mark owners and such use is neither consented to by the mark owners nor justified;
d) Registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected trade names or marks of others, or geographical indications without having the right to use, for the purpose of possessing such domain name, benefiting from or prejudicing the reputation and popularity of the respective mark, trade name or geographical indication.
2. Commercial indications stipulated in clause 1 of this article mean signs and information serving as guidelines to trading of goods or services including marks, trade names, business symbols, business slogans, geographical indications, designs of packages and/or labels of goods.
3. Acts of using commercial indications stipulated in clause 1 of this article include acts of affixing such commercial indications on goods, goods packages, means of service provision, business transaction documents or advertising means; and selling, advertising for sale, stocking for sale and importing goods affixed with such commercial indications.”
This article protects all kind of trademarks including well-known trademark. Traditionally, the trademark provision uses “registration” as a procedural means of granting the trademark owner a fixed “monopoly right” to a trademark, and protecting his/her private interests. Unfair competition provision, in contrast, does not protect in the same way as does the trademark provision but rather, by directly prohibiting acts of unfair competition. This encompasses the protection of well known indications (“indications” includes trademarks), which are one of many targets of unfair competition.
In order to be recognized as an act of unfair competition, it is required that the use of commercial indications cause the confusion or the registration or possession of the right to use or the use of domain names are aimed to take unfair advantage or reputation and popularity of the respective trademark.
It should be noted that most of the cases listed in this article required confusion. This means it does not cover the typical case of dilution in which although there is no existence of confusion but the illegal use of suspected commercial indications would make the well-known trademark lose its capacity to signify a source.
The nature of the legal acts of unfair competition is any act contrary to the standards of honesty and a healthy trade relationship, causing damage mainly to business as competitors on relevant market. Therefore, in unfair competition cases, the key thing is to prove the competition between the parties. This is different from those applies under trademark provisions which requires the infringement of trademark right regardless the existence of competition.
Generally, unfair competition provision is invoked as “life-buoy” in case of unregistered trademarks which is infringed. However, under the IP Law, regarding well known trademark, industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures, thus, trademark provision is sufficient to protect well-known trademark.
In practice, up to now, it is very rare the case that the unfair competition provision is used to solve the infringement. Only in the case which the trademark owner failed to rely on the trademark provision to protect his/her right, the unfair competition would be invoked.