Intellectual Property Rights

Managing and protecting intellectual property has become increasingly complex for global companies, which often have huge IP portfolios and operations in multiple jurisdictions with varied IP laws and levels of enforcement. Rapid technological advancements have enabled infringers to become more sophisticated, and the rise of intellectual property as a main driver of mergers and acquisitions has made developing strategies to protect these assets even more important.

With expertise in the luxury and fashion, fast moving consumer goods, technology, media and entertainment, manufacturing and healthcare industries, we advise clients on brand management, brand enforcement, copyright, IP litigation, trade secrets, IP transactions, IP advisory. Based on our long experience in the field, we approach IP management as a strategic issue and have developed the people, processes and technologies to serve our clients.

We always wish to bring about all-sided perspectives to have a good property management including:

Overall IP portfolio asset management

  • Brand protection strategies, brand enforcement, brand development search and clearance
  • Comparative advertising
  • Counseling on establishing, protecting, and capitalising on non-registrable IPR
  • Exploitation rights, regionally and globally
  • Anti-counterfeiting and other enforcement programs
  • Internet IPR disputes: domain names, cybersquatting, linking, framing, wall papering, mousetrapping, metatags and keyword programmes
  • IP audits
  • IP due diligence
  • Licensing, franchising and other transactional intellectual property
  • Registration strategies for trademarks, patents and designs
  • Search and investigation reports, developing global and filing strategies
  • Technical assistance and technology transfer agreements; trade practices and unfair competition law
  • Value added advice on valuation, technical assessment, licensing, royalty recovery, tax strategies

Entertainment & media

  • Endorsements and sponsorships
  • Management representation agreements
  • Merchandising and publishing licences

Music & theatre

  • Record distribution agreements
  • Talent engagements agreements
  • Tax and financing

Technology & telecommunications

  • Competition & regulatory
  • Information technology procurement & regulatory
  • Telecommunications infrastructure

Administrative enforcement in Vietnam

  • Work with competent  to provide solutions to IP enforcement
  • Manage unfair competition/passing off successes in different product areas and industries

Border enforcement in Vietnam

  • Use of import and export intelligence
  • Assist clients in recordal of rights with Customs in Vietnam
  • Liaise with Customs and alerts of counterfeits in Vietnam
  • Assist clients to confirm detained goods are counterfeits in Vietnam

Civil prosecutions in Vietnam

  • Assist in pre-trial investigations in Vietnam
  • Obtaining injunctions and interim measures to preserve assets from moving out of the jurisdictions
  • Advice on forum shopping
  • Coordinate with attorneys in different jurisdictions to pursue civil prosecutions and obtaining injunctions against infringers on a global scale
  • Thorough legal procedures and investigations to trace the sources of infringement worldwide

KEY CONTACT

Pham Thi Thoa

Senior Partner

RELATED ARTICLES

Registering trademark in southeast asia – some key points to take note (part 2)

4. Some key notes when registering trademark in Thailand (continue)

Categories of Trademark in Thailand: Apart from the certification mark and collective mark as other countries, the trademark act (no. 3) B.E 2559 of Thailand has separated the definition of mark used for product and service as follow:

  • Trade mark: is a mark symbolizing or involved with a product:
  • Service mark: is a mark symbolizing or involved with a service;

The trademark registration renewal: the same almost all other Asian countries, the registered trademark shall be protected for 10 years of the registration date. The protection can be renewed 10 years each time. The applicant wishing for the protection renewal shall submit the application to the registrar not less than 3 months prior to the expiration date or within 6 months of the expiration date. If the applicant fails to submit all additional documents within the specific period of time, it shall be deemed that the applicant dismisses the renewal application. 

5. Some key notes when registering trademark in Philippine

Entitled registration entities: Generally, in other countries, when receiving a registration application of the trademark, the IP Office only examines the protection abilities of such trademark within the registered and protected mark in the territory of the country. When there’s appeal/claim from other third party which proves that the registration is made with bad faith and have clear evidences to prove, the IP office will reject the registration or cancel the granted title. However, in Philippine, The Jurisprudence of February 1983 states in Unno Commercial enterprises VS. General Milling Corporation case that “The right to register trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same.”

From such legal basis, the IP office of Philippine can have the right to refuse the registration application of mark if they have basis to consider that the owner of the mark is different with the applicant, regardless such mark is registered to be protected in Philippine by the actual owners or not. 

However, in practice, the IP office of the Philippines still accepts the registration application in case the applicant can provide the IP office with a notarized letter of consent signed by the actual owner of the mark, which allow the applicant to register the mark in Philippines. Besides, a co-existence agreement is also an acceptable alternative, but in fact the Intellectual Property Office of Philippines (IPO) has not always accepted such document.  The reason for this is that the examiners sometimes see that there is still potential confusion on the part of the public or that the public will still be potentially misled, if the parties involved are not related and merely agree on co-existence.

Opposition duration: If the trademark is approved, it will be published in the Intellectual Property Office of the Philippines (IPOPHL) Gazette, and the public will be given 30 days to take action. If no opposition is received and verified by the Director of the Bureau of Legal Affairs, the Intellectual Property Office will now issue the Certificate of Registration.

Declaration of Actual Use: The IP Code of Philippines also requires the filing of a Declaration of Actual Use (DAU), together with proof of such use, must be filed with the IPOPHL according to the following schedule:

  • DAU filed within three (3) years from the filing date of the trademark application;
  • DAU filed within one (1) year from the fifth anniversary of the registration / within one (1) year from the fifth anniversary of the renewal of registration; and
  • DAU to be filed within one (1) year from the date of renewal of registration (*This additional requirement applies to all marks due for renewal on 1 January 2017 and onwards, regardless of the filing date of the request for renewal).

This is a mandatory requirement, if the Declaration of Actual Use is not submitted, the application shall be refused, or the mark shall be removed from the Register. 

But, if a registrant has valid reasons which prohibit him from using the mark, a Declaration of Non-Use may be filed instead of the DAUs. However, the non-use of a mark may only be excused in the following circumstances:

  • the registered owner is prevented from using it as a requirement imposed by another government agency,
  • an existing restraining order or injunction issued by a court, the IPO or other quasi-judicial bodies prevents the use or,
  • the mark is the subject of an opposition or cancellation case.

6. Registering trademark in Laos:

Entitled registrars: In Laos, the applicant can submit the registration application for trademark to any of these departments: The Science and Technology of Laos, the Intellectual Property Office; Trademark and Original Body.

Dossiers of the authorized representative: The power of attorney has to be notarized and translated into English (if it was written in a language other than Lao and English).

The renewal of the effectiveness of protection titles: The owner of the mark has to pay renewal fees within 12 months before the expiration date, they can also pay later within 06 months from the expiration date if they have justifiable reasons.

The time limit for third parties to oppose the registration of marks: within 60 days from the publishing date in the Official Gazette.

The cancellation of protection titles due to non-used reason: the same to Vietnam, if a trademark has been issued protection titles in Laos but it has not been used for 05 consecutive years, other people will have the right to request the cancellation of the certificate of the registered mark.

7. Registering trademark in Myanmar:

The cancellation of protection titles due to non-used reason: if a trademark has been registered and issued protection titles in Myanmar, but it has not been used for 03 consecutive years, other people will have the right to request the cancellation of the certificate of the registered mark.

The time limit for third parties to oppose the registration of marks: within 60 days from the publishing date in the Official Gazette.

8. Registering trademark in Vietnam:

The time limit for third parties to oppose the registration of marks: From the date the registration application is published in the Official Gazette of Industrial Property to the date of issuance of protection titles.

The trademark registration renewal: The applicant can renew the trademark registration multiple times, 10 years for each renewal. However, they have to pay renewal fees not less than 06 months before the expiration date, or they can pay within 06 months from the expiration date. If the applicant chooses the latter, they have to pay an additional 10% of the renewal fee for each delayed month.

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.

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Apolat Legal_Legal retainer service

Business activities of enterprises are always dependent on and regulated by relevant laws. For effective operation, enterprises need to well control legal risks arising from their operations. Large enterprises tend to build a legal team with good lawyers to help them apply for permits, provide legal advice and resolve labour disputes during their operation.

However, not all businesses have the financial resources to build their own legal department. For businesses that do not have their own legal team, legal retainer service of separate law firms will be the smart choice.

Understanding this issue, Apolat Legal offers businesses a comprehensive legal consulting service at a reasonable fee. Each business choosing the legal retainer service of Apolat Legal will be supported by a consistent team during the time of using service. By this way, Apolat Legal can clearly understand the clients and help the clients save time and avoid providing duplicated information. In addition, businesses only have to pay a fixed monthly fee to receive helpful advice from Apolat Legal for all day-to-day legal needs of business.

Legal retainer service of Apolat Legal includes but not limited to the followings works:

  • Answering, consulting on provisions, and policies of law and giving legal solutions for each specific matter according to the Client’s requirements in multiple practice areas such as investment, construction, real estate, bidding, enterprise administration, banking, security, insurance, commerce, labor, sales and other areas relating to the Client’s business operation (excluding financial and tax advice).
  • Examining, reviewing and confirming the legality of documentations which the Client have drafted or implemented in respect of business operation, giving legal advice for such documentations as required by the Client.
  • Supporting the Client in preparation of all documentation for contract negotiations or parleys (if requires).
  • Supporting the Client in drafting documentations relating to business transactions between the Client and any third party.
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  • In case any Client’s partner needs our legal support, then, as the Client’s request or that of such partner, we shall consider whether providing our legal services for such partner or not; and if we choose providing, we shall be committed to not causing any damage to the Client or any conflict of rights and legal interests between the Client and such partner.
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By professional services, thoroughness and experiences in various legal fields, Apolat Legal is the trusted partner of all businesses.

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The “first to file” principle in the protection of industrial property objects

In the global business environment and increasingly crowded markets, businesses often have to improve and apply new methods of production, sales and product marketing to maintain and enhance their competitiveness in the international market. In parallel with the innovation and creativity of business entities, a series of tools are created by the legal system of intellectual property rights (IP) to provide owners with the management options to protect their innovation, knowledge and creativity. IP rights motivate companies to differentiate their products from those of their competitors, as well as enjoy equal monopolies that reduce the risks and uncertainties involve in introducing new or improved products to the market. However, in reality, we still often encounter some cases of ideas accidentally being duplicated or confusing are both submitted to the registrar. However, with the rule of “first to file” (filing priority), the law only protects intellectual property rights for a single owner who is the first person to file a registration application. 

The rule of “first to file” in Vietnam’s intellectual property law

The first to file principle in Vietnam’s intellectual property law had been derived from the “priority principle” in the 1883 Paris Convention on the protection of industrial property rights, of which Vietnam is a member. This is one of the two filing principles being used by almost all countries on over the world when registering for protection of intellectual property objects: the “first to file” and the “first to use”. According to the first to file principle specified in Article 90 of the Intellectual Property Law, in case there are many different application owners filing identical or indistinguishable patents/ industrial designs or trademarks that are identical or similar for the same group of identical or similar products or services, the approved application for protection is the application with the priority date or the first filing date. In cases where many applications of different applicants are filed with the same subject and same priority date or first filing date, the protection title shall be granted only to one applicant among all applications. If the applicants cannot reach an agreement, all the applications of that subject will be denied protection.

In addition to the first to file, in the case of the applicant of the invention, the industrial design and trademark wish to extend the scope of protection to other countries. They can apply the principle of priority to enhance the protection ability of their IP assets. This principle will be applied when at least two applications are filed together to protect the same invention, industrial design, or trademark and the applicant has claimed the priority right and pay the fee to get the priority right. The priority principle is regulated in Article 4 of the Paris Convention on protecting industrial property and specified in Article 91 of the Law on Intellectual Property of Vietnam (specifically guided in Article 10 of Decree 103/2006 / ND-CP). However, the right to claim priority for the object in the first application in Vietnam or in countries that are members of the Paris Convention on industrial property, PCT Convention on invention protection only applies within a limited time, specifically (1) for an invention, the priority period is 12 months from the date of the first application, (2) for an industrial design and mark, period of Priority entitlement is 6 months from the first filing date.

The relationship between the first-to-file and priority rule

When considering the relationship between the first-to-file and the priority rule, some people usually consider that the priority rule is an exception of the first to file principle. However, in the author’s opinion, the first to file and the priority principle are two independent but complementary principles that assist the applicant to take advantage in protecting their intellectual property rights in another country. Namely, priority rule is the applicant ‘s right based on having the first valid application filed in a country being a member of a treaty that has a priority rule agreement. An application may file to protect the invention, industrial design or trademark in another Member State, and the subsequent application is deemed filed on the same day as the first application within a particular time. The priority date is the filing date of the first application, while the first filing rule determines the first application’s filing date. Therefore the priority rule is not an exception to the first-to-file rule.

Industrial property objects are entitled to the first to file and priority principle

There are two methods to be granted rights on intellectual property objects: (1) automatic (through creating works or using without registration), which is applicable to copyrights, rights to well-known trademarks, trade names, business secrets; (2) the method for generating the right to grant protection titles such as inventions, industrial designs, trademarks (except well-known trademarks); design and layout of semiconductor integrated circuits and geographical indication. However, the first to file principle and the priority principle only apply to inventions, industrial designs and trademarks according to Articles 90 and 91 of the Law on Intellectual Property. Accordingly, Vietnamese laws do not prescribe the first to file and the priority principle for geographical indications and layout design of semiconductor integrated circuits. This provision is quite appropriate to the Paris convention and practical situation, because the right to register geographical indications belongs to the State. Organizations and individuals to produce products bearing geographical indications, collective organizations representing such organizations or individuals or the local administrative state management agency where the geographical indication exercises the right of registration when having the State’s permission and the State is the owner of the geographical indication (Article 88 Intellectual Property Law). Disputes in the registration of geographical indications are very unlikely. For the layout design of semiconductor integrated circuits, reality shows very few cases of identical subjects filing together for this object.

Through the analysis above, we can see that the first – to – file principle is the basic and most important principle in the legal system to protect the nation’s industrial property. This rule does not allow delays in applying if the applicant wishes to be granted a protection title. From which, “First to file” is also considered a powerful tool to promote the protection of the IP assets. The first to file principle also helps to raise the awareness of the right holders of industrial property objects to protect their rights better.

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.

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A guide to intellectual property in Vietnam

1. Treaties and reciprocal agreements

So far (Until now), Vietnam is a member of the following international agreements in the area of intellectual property laws:

  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) and its relevant implementing regulations;
  • the Paris Convention for the Protection of Industrial Property;
  • the Berne Convention;
  • the Madrid Agreement concerning the International Registration of Marks;
  • the Madrid the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations;
  • the Patent Cooperation Treaty;
  • the International Convention for the Protection of New Varieties of Plants;
  • Hague Agreement Concerning the International Registration of Industrial Designs.

2. Main national legislations governing IP matters 

Listed hereunder are the major legal instruments for protection and enforcement of intellectual property rights in the country (Vietnam):

  • Civil Code 2015 passed by the National Assembly in November 2015 and effective from 1 January 2017 and its implementing regulations;
  • Civil Procedure Code 2015 passed by the National Assembly in November 2015 and effective from 1 July 2016, providing processes and procedures for the settlement of civil affairs and enforcement of civil judgments and its implementing regulations;
  • Criminal Code 2015 of the National Assembly, enacted in November 2015, amended and supplemented in 2017, and effective from 1 January 2018 and its implementing regulations;
  • Criminal Procedure Code 2015 of the National Assembly, enacted in November 2015 and effective from 1 January 2018 providing processes and procedures for institution of legal proceedings, investigation, prosecution, and enforcement of criminal judgments and its implementing regulations;
  • Intellectual Property Law 2005 passed by the National Assembly on 29 November 2005 and came into force on 1 July 2006, and then amended and supplemented pursuant to Law No. 36/2009/QH12 of 19 June 2009 and Law No. 42/2019/QH14 (Vietnam IP Law) and its implementing regulations;
  • Competition Law 2018 of the National Assembly, enacted in June 2018 and effective from 1 July 2019 and its implementing regulations;
  • The Customs Law 2014 of the National Assembly, enacted in June 2014 and effective as of 1 January 2015 and its implementing regulations;
  • Law on Information Technology No. 67/2006/QH11 passed by the National Assembly on 29 July 2006 and came into force on 1 January 2007 and its implementing regulations;
  • Cinematography Law passed by the National Assembly on 29 June 2006 and came into force on 1 January 2007, and then amended in 2009 and its implementing regulations;
  • Law on Handling Administrative Violations No. 15/2012/QH13 of the National Assembly, ratified on 20 June 2012 and entered into force on 1 July 2013 and its implementing regulations;

3. What are intellectual property rights under Vietnamese IP laws? 

Intellectual property (IP) is a term referring to a brand, invention, design or other kind of creation, which a person or business has legal rights over. Almost all businesses own some form of IP, which could be a business asset. Common types of IP includes:

  • Copyright;
  • Patents;
  • Industrial designs;
  • Trademarks

4. Copyright 

Copyright means the right of an organisation or individual to works which such organisation or individual created or owns. The subject matter of copyright consists of literary, artistic and scientific works. The subject matter of copyright-related rights consists of performances, audio and visual fixation, broadcasts and satellite signals carrying coded programmes.

Registration of copyright is advisable and can be made with the National Copyright Office, which is a subsidiary organisation of the Ministry of Culture, Sport and Tourism.

Vietnam is a signatory to the Berne Convention on copyright. This sets the minimum protection at 50 years from publication for cinematographic works, photographic works, dramatic works, works of applied art and anonymous works, and at 50 years after the death of the author for other works.

Computer programs are included within copyright legislation in Vietnam where ‘computer programs as such’ can not be patented.

5. Patents, utility solutions 

A patent is defined as a technical solution in the form of a product or process, which is intended to solve a problem by the application of natural laws. Certain subject matters are not patentable, including scientific discoveries, theories, mathematic methods, aesthetic solutions, animal varieties and methods of human/animal disease prevention, diagnosis and treatment, and so on.

Vietnam’s patent law operates under the ‘first to file’ principle –  if two people applied for a patent on an identical invention, the first one to file the application would be awarded the patent.

A patent is eligible for protection in the form of the grant of an invention patent when it satisfies the following conditions:

  • It is novel.
  • It is of an inventive nature.
  • It is susceptible of industrial application.

Unlike many other jurisdictions, Vietnam distinguishes between patents (sometimes called ‘invention patents’) and utility solution patents (known elsewhere as ‘utility models’ or ‘minor patents’). Rules for utility solution patents are similar to those for invention patents, but the item is not required to demonstrate an ‘inventive step’. Accordingly, a technical solution or product will be protected in the form of the grant of a utility solution when it satisfies the following conditions:

  • It is novel.
  • It is susceptible of industrial application.

Invention patents give protection for a maximum of 20 years, while utility solution patents are valid for ten years.

6. Industrial designs 

An industrial design means the outward appearance of a product embodied in three-dimensional configuration, lines, colours or a combination of such elements.

An industrial design will be eligible for protection when it satisfies the following conditions:

  • It is novel.
  • It is of a creative nature.
  • It is susceptible of industrial application.

The law gives protection for industrial designs for a maximum of five years, renewable for two consecutive periods of five years. 

7. Trademarks 

The trademark system operates in a similar way to countries, protecting symbols, colours and other visual devices used to identify a business’ products or services, now including three-dimensional objects. It can be in the form of letters, words, pictures, figures, three-dimensional figures or a combination thereof, and in one or more colours. Trademarks include service, certification and collective marks.

A trademark will be refused registration if it is:

  • Indistinctive (such as simple geometric symbols).
  • Identical or confusingly similar to a state flag or emblem.
  • A symbol that merely indicates matters of time, quantity, quality, or characteristics of the goods or services (that is, a descriptive mark).
  • Deceptive to consumers.
  • A generic symbol or emblem.
  • Confusingly similar to a registered mark or the subject of a prior application, a mark considered famous, widely used and recognised, or registered to a protected geographic location, or a registered industrial design.
  • Contrary to the interests of society, public order or humanitarian principles.

A trademark is valid for ten years after which it may be renewed indefinitely for further ten-year periods.

8. Unfair competition 

Under IP laws, 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 Procedures for handling unfair competition relating to IP is governed mainly by Vietnam’s Competition Law of 2018.

9. Enforcing IP rights in Vietnam 

There are three levels at which rights may be enforced in Vietnam:

  • Administrative action: There are various authorities with special responsibilities and functions. Sanctions may include warnings, fines, the seizure or destruction of the counterfeit goods, business license suspension and re-exportation of infringed imported or transit goods out of Vietnam. Administrative actions are both cost-effective and time-efficient. This is the most common solution for right-owners to handle IP infringement. However, it is only a good way to deal with small-scale infringers. To larger-scale infringers, it will be good option when the IP right holders want to immediately stop ongoing IPR infringement rather than compensation.
  • Civil litigation: Although the number of IP dispute is relatively rare, it is increasing in recent years. Preliminary injunctions and compensation for damages are available through the civil courts. Damages are often calculated based on the amount of lost sales or the infringer’s profits. However, when the actual amount of damages owed can not be determined, the maximum amount the court can award in damages is VND 500 million (approximately EUR 18,000).
  • Criminal prosecution: The government authorities and rights owners can bring prosecutions. Penalties can involve fines, imprisonment and even the death penalty in serious, organised or business-related cases. However, due to lack of guidance and the inconsistency in the legal system, criminal action is not usually feasible in practice. The cost of criminal prosecution is borne by the authorities, and a favourable ruling could be a valuable deterrent to potential future infringers. It usually takes twelve (12) months for a criminal trial proceeding and another twelve (12) months for an appeal proceeding to be completed.

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.

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