Background
Operational Services GmbH (O.S. GmbH), a German company that manufactures lighting equipment is the owner of the OSRAM trade marks used for lighting apparatus in Vietnam. The company found that a person, N.D.T., in Vietnam registered two domain names, ‘osram.com.vn’ and ‘osram.vn’, as active websites, promoting and selling products bearing the OSRAM mark.
Action taken
O.S GmbH filed a request to the Vietnam Intellectual Property Research Institute (VIPRI) to obtain a trade mark infringement assessment. The VIPRI found in favour of O.S GmbH. In addition, O.S GmbH proceeded with documenting the evidence of infringement through a bailiff’s office.
After that, O.S GmbH brought a lawsuit against N.D.T. (the defendant) before the court in Hanoi. The company requested that:
- Two domain names (osram.com.vn and osram.vn
- The defendant pay material damage of VND 500 million (approximately EUR 19 400) due to property loss, decrease in income and profit, and loss of business opportunities;
- The defendant pay VND 200 million (approximately 7 760) to cover the legal fees incurred;
- The defendant make a public apology in the local newspaper.
Result
The court concluded that:
The two domain names were to be revoked, and priority for registration of such domain names given to O.S GmbH.
The defendant was to pay O.S GmbH an amount of VND 203 960 000 (Approximately EUR 7 914), mainly to redress the legal fees incurred;
- The defendant was to pay VND 10 198 000 (Approximately EUR 396) to cover the court’s fees.
- The defendant was to make a public apology in the local newspaper;
O.S GmbH’s request of VND 500 million (approximately EUR 19 400) as material damage due to alleged property loss, decrease in income and profit, and loss of business opportunities caused by the IPR infringement was not acceptable.
Lessons learned
- Domain name infringement is not uncommon in Vietnam. As domain names can be registered on a first-come, first-served basis, some individuals intentionally register ‘.vn’ domain names comprised of a popular or well-known mark of another party in order to benefit from such marks.
- If a company detect any .vn domain names that violate their IPR in Vietnam, they should seek advice from a local lawyer familiar with Vietnamese laws and practices – one with expertise on the topic – so that they can be provided with a suitable, effective strategy for solving the infringement.
(Article link: https://www.ip-coster.com/News/a-trademark-based-domain-name-dispute-heard-by-court-in-vietnam-waht-should-foreign-businesses-know/330)