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

Phone: +84918950066
Email: thoa.pham@apolatlegal.com

RELATED ARTICLES

[News] Apolat Legal_Year End Party 2020 & 5 years anniversary

From January 7th, 2021 to January 9th, 2021, Apolat Legal organized the company retreat for all members at Vung Tau City. This is the time for all to look back on the year over and enjoy the holiday after the hard-working days.

Especially, on January 7th, 2021, the 5th anniversary of the establishment of Apolat Legal (January 1st, 2016 to January 1st, 2021) was also held. The year 2020 is an important milestone marking the constantly evolving 5-year journey of Apolat Legal.

Over the years, Apolat Legal has supported domestic and foreign clients to address business issues and settle complex legal risks. We have been efforts to expand international cooperation, connected with the organization, associations, with the belief that the industry of legal services must always change to adapt to the wave of globalization and the digital economy.

Building a system with its headquarters in Ho Chi Minh City, Apolat Legal also expands its scope of operations in Hanoi.

The 5th anniversary of Apolat Legal and preparing for the 2nd 5-year plan, the year 2021, and the following years will mark further innovation and development.

Apolat Legal, with enthusiastic, responsible and aspiring people. Youthful, dynamic and friendly working environment; reasonable and attractive facilities, recruitment and treatment for talents… Apolat Legal aims to be in the top 20 leading law firms in Vietnam by 2025.

Finally, we would like to express our sincere thanks to the people who have contributed to Apolat Legal. Apolat Legal in the present, all thanks to the efforts, dedication of all of you. Apolat Legal is honored that you have been a part of our 5-year journey.

Some images at YEP night:

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[News] Apolat Legal-Time to travel

[TIME TO TRAVEL]

Apolat Legal would like to inform you that all Apolat Legal’s members will participate in our annual company retreat:

From Thursday, January 7th, 2021 to Saturday, January 9th, 2021.

We will back to work as usual from Monday, January 11th, 2021.

Please contact us before or after this time.

Best regards,
Apolat Legal.

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[Legal Updates] Letter of quick legal updates 202012

1. On December 18th, 2020, The Supreme People’s Court issued Official Dispatch No. 199/TANDTC-PC announces the results of online answers to some problems in bankruptcy settlement 

According to the Official Dispatch, the Supreme People’s Court has answered the issues that the courts need to pay attention when settling the bankruptcy procedure as follows: 

Firstly, the status of an insolvency enterprise or cooperative must fully satisfy the following conditions:

  • Have a specific, clear debt recognized, agreed upon by the parties or determined through a legally effective judgment or decision of a court, ruling of commercial arbitration, or determined in a decision of the competent authority, and the parties don’t have any dispute over this debt.
  • The debt is due for payment. Maturity debt means a debt with a clearly defined payment term, by which time the enterprise or cooperative must be obliged to repay the debt. This payment time limit is acknowledged, agreed upon by the parties or determined by a legally effective judgment or decision of a court, a judgment of a commercial arbitration or decision of a competent authority.
  • The enterprise or cooperative fails to fulfill the debt payment obligation within 3 months from the due date, because it has no assets to pay the debt or has assets but does not pay the debts.

Secondly, if the Court issues the decision to open the bankruptcy proceedings, the deposit of bankruptcy expenses paid by the applicant is not enough. The court can request the applicant to continue to submit the deposit. Suppose the applicant does not pay the supplement deposit of bankruptcy expense as requested, the Judge, at his discretion or according to the request of asset administrators, can decide on the sale of assets of the enterprise or cooperative after opening the bankruptcy procedure to ensure the payment of bankruptcy expense; the selling of assets is assigned to the asset administrators or the asset administration enterprises to ensure the bankruptcy expenses is paid in full.

Thirdly, in case the “Decision to open bankruptcy proceedings” is canceled by a superior court, the deposit of bankruptcy expense shall be refunded to the applicant, except for the case the applicant submits the dishonest bankruptcy claims.

2. The Ministry of Justice issued Circular No. 06/2020/TT-BTP dated December 17th, 2020, amending and supplementing a number of articles of Circular No. 08/2018/TT-BTP dated June 20th, 2018 guiding a number of issues on registration, providing information on security, contracts and information exchange on registered security, which comes into effects on January 01st, 2021 

According to the Circular, collateral registered at the Asset Trading Registration Center as required from February 1st, 2021, has the following changes:

Firstly, separating the registration of security and the registration of contract at the registration center. Accordingly, the registration of contract is intended to publicize information and it does not give effect to the contract.

Secondly, supplementing provisions on online registration in case of not requiring a code to use the datebase of security measures.

Thirdly, amending, supplementing, and abolishing provisions on property which must be registered the security transaction, including:

  • Supplementing objects of property rights with respect to objects of copyright, industrial property rights, rights to plant varieties; Property rights arising from results of scientific research, technological development, technology transfer or other property rights of monetary value in the fields of science, technology, and information technology; the right to exploit natural resources.
  • Cancellation of “Property rights arising from shipbuilding leases; the right to compensate for damage arising from the contract of purchase and sale of aircraft or seagoing ships; the right to enjoy insurance under the insurance contract for aircraft and ships”.
  • Supplementing property rights arising from a contract include the right to collect debt, the right to demand payment, the right to enjoy the benefits formed from the contract, the right to exploit, manage the project, the right to compensate for damage under the contract. or other property rights of monetary value arising from the contract (except for land use rights, ownership of property on land, ownership or other rights which must be registered with respect to aircraft or seagoing ships according to regulations. regulations of the law on aviation and maritime).

The Circular No. 06/2020 / TT-BTP takes effect from February 01st, 2021.

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[Legal Updates] The new regulation on the age of retirement and the health care for female employee

1. The new regulation on the age of retirement and the health care for female employee 

The Government promulgated two Decrees guiding the implementation of some contents of the Labor Code 2019, specifically the Decree No. 135/2020/ND-CP dated November 18th, 2020 regulating the retirement ages and the Decree No. 145/2020/ND-CP dated December 14th, 2020 defining and providing guidance on the implementation of many contents of the Labor Code on working conditions and industrial relations.

1.1 The Decree No. 135/2020/ND-CP dated November 18th, 2020 regulates the retirement ages

1.1.1 The age of retirement     

According to the Decree No. 135/2020//ND-CP, from January 01st, 2021, employee working in normal working conditions shall retire from work at the age of 60 and 03 months for male and 55 and 04 months for female. In the following years, the age of retirement of each year shall be increased by 03 months for male until they reach at the age of 62 in 2028 and by 04 months for female until they are 60 years old in 2035. Therefore, comparing with the current regulation, the age of retirement for male shall increase from 60 to 62 by 2028 and from 55 to 60 by 2035 for female. 

1.1.2 Retirement before or after reaching the specified age of retirement 

Depending on the circumstances, the employees can retire earlier or later than the age of retirement regulated. Specifically, the employees doing heavy lifting or working in hazardous environments can retire sooner, while working in highly-skilled jobs or the private sector can retire later. Generally, the maximum extension will be five years.

1.2 The Decree No. 145/2020/ND-CP dated December 14th, 2020 defines and provides guidance on the implementation of several contents of the Labor Code on working conditions and labour relations, details as follows:     

In this Decree, the key points on health care for female employees are the regulations about the break of female employees during menstruation and female employees during the period of nursing a child under 12 months, specifically:

The female employee is entitled during her menstruation to a 30-minute break every day and during the period of nursing a child under 12 months is entitled to a break of 60 minutes every day which shall be included in the number of working hours and shall still receive the same wages as stated in her labour contract. In case a female employee does not want to take a break and employer allows her to work, a female employee is entitled to receive an additional salary for the work performed in the break, in addition to the salary pursuant to her labour contract. 

Besides, the Decree No. 145/2020/ND-CP has the new provision on requiring employers who have more than 1000 female employees must install lactation and storing breastmilk rooms in the workplace. 

The Decree No. 145/2020/ND-CP will take effect from February 1st, 2020. 

2. The Government promulgated the new project on supporting to reduce the electricity price, electricity bills (the second time) for customers using electricity 

The above project is approved when the Government promulgated Resolution No. 180/NQ-CP on the new project on supporting to reduce the electricity price, electricity bills (the second time) for customers using electricity on December 17th, 2020 based on proposal of the Industry and Trade Ministry. Specifically, according to the report of the Industry and Trade Ministry sent to the Prime Minister of the Socialist Republic of Viet Nam to propose the project on supporting to reduce the electricity price, electricity cost (the second time): 

  • The retail price of domestic electricity from level 1 to level 4 shall be reduced by 20%; 
  • To decrease electricity price from the retail level applied to business by retail price applied to the manufacturing industry for the customer that is tourist accommodation establishments or customer having warehouse during circulation; 
  • Establishments use for isolating, centralized medical examination for patients with suspected infection, already infected with COVID-19 shall receive a 100% reduction in electricity bill; 
  • Medical establishments used for examination, testing and treating the suspected and infected patients with COVID-19 are entitled to a 20% discount on their electricity bill; and 
  • Customers shall be assisted to reduce electricity price, electricity bills for 03 months with invoices in October, November, December 2020. 

The Government assigned the Ministry of Industry and Trade to cooperate with the Ministry of Finance and related agency for implementing, ensuring strictness, right subject, and not allowing the policy to be abused for bad purposes.

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FAQs

Trademark

Trademark is defined as any sign used to distinguish goods or services of different organizations or individuals.

The following signs shall be ineligible for protection as marks:

  1. Signs identical with or confusingly similar to national flags or national emblems.
  2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
  3. Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
  4. Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
  5. Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

First to file principle” is applied to cope with cases in which there are more than one protection registration application for the same or similar subject matter of industrial property rights. This principle is prescribed particularly at Article 90 of Law on Intellectual Property to protect the rights and interests of the earlier applicant with the same subject matter of industrial property rights. To be more detailed: 

  1. In case many applications are filed for registration of the same patents or similar patents, or for registration of industrial designs identical with or insignificantly different from another, the protection title may only be granted to the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of protection title.
  2. In case there are many applications filed by different persons for registration of identical or confusingly similar marks for identical or similar products or services, or in case there are many applications filed by the same person for registration of identical marks for identical products or services, the protection title may only be granted for the mark in the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title.
  3. In case there are many registration applications specified in Clauses 1 and 2 of this Article and satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, the protection title may only be granted for the object of a single application out of these applications under an agreement of all applicants. Without such agreement, all relevant objects of these applications will be refused for the grant of a protection title.

A certificate of registered mark shall be valid from the grant date until the end of ten (10) years after the filing date and may be renewed for many consecutive terms, each of ten (10) years.

The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

 (a) Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;

 (b) Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (c) Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (d) Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well-known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owner

The validity of a protection title shall be terminated in the following cases:

  • The owner fails to pay the stipulated validity maintenance or extension fee;
  • The owner declares relinquishment of the industrial property rights;
  • The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;
  • The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
  • The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;
  • The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;

A protection title shall be entirely invalidated in the following cases:

(a) The applicant for registration has neither had nor been assigned the right to register the invention, industrial design, layout design or mark;

(b) The industrial property object failed to satisfy the protection conditions at the time the protection title was granted.

A protection title shall be partly invalidated as to the part which failed to satisfy the protection conditions.

In accordance with the Law on Intellectual Property, trademarks are classified into four groups:

Collective trademark means a mark used to distinguish goods or services of members from those of non-members of an organization which is the owner of such mark.

Certification trademark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods or services bearing the mark.

Integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated.

Well-known mark means a mark widely known by consumers throughout the Vietnamese territory.

A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of Article 74 Law on Intellectual Property.

 

In accordance with Law on Intellectual Property, the entities having the right to register marks include:

– Organizations and individuals shall have the right to register marks to be used for goods such organizations or individuals produce or for services such organizations or individuals provide.

– Any organizations or individuals lawfully engaged in commercial activities shall have the right to register a mark for a product which the latter puts onto the market but which was manufactured by others, provided that the manufacturer does not use such mark for a product and does not object to such registration.

– Lawfully established collective organizations shall have the right to register collective marks to be used by the members of the collective organization pursuant to the regulations of the collective organization on use of collective marks. For signs indicating geographical origins of goods or services, an organization with the right to register means a local collective organization of [other] organizations or individuals engaged in production or trading in the relevant locality.

– Organizations with the function of controlling and certifying quality, properties, origin or other relevant criteria of goods or services shall have the right to register certification marks, provided that such organizations are not engaged in production or trading of such goods or services.

– Two or more organizations or individuals shall have the right to jointly register a mark in order to become its co-owners on the following conditions:

 (a) Such mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners;

 (b) The use of such mark does not cause confusion to consumers as to the origin of goods or services.

The processing of mark registration in Vietnam shall be conducted within the timelines mentioned below:

  • Formal examination: An application for registration of industrial property shall have its form examined within one (01) month from the filing date. The purpose of this stage is to examine compliance with regulations related to the form of the registration application then evaluate whether this application is valid or not.
  • Publication of application: An application for the mark registration shall be published within two (02) months as from the date such application is accepted as being valid. Subsequently, these applications shall be published in the Official Gazette of Industrial Property.
  • Substantive examination: nine (09) months from the date of publication of the application with the purpose of evaluating of the eligibility for grant of protection titles for subject matter stated in such applications under protection conditions and for determination of the respective scope of protection.

In accordance with Clause 1 Article 123 Law on Intellectual Property, rights of owners of marks includes:

  • To use or authorize others to use industrial property objects according to the provisions of Law on Intellectual Property.

Use of a mark means the performance of the following acts:

(a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;

(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

(c) Importing goods or services bearing the protected mark. 

  • To prevent others from using industrial property objects according to the provisions of Article 125 of this Law;
  • To dispose of industrial property objects according to the provisions of Chapter X of this Law.

An intellectual property right holder shall have the right to apply the following measures to protect the intellectual property rights of such holder:

 (a) To apply technological measures to prevent acts of infringement of its intellectual property rights;

 (b) To request any organization or individual who commits an act of infringement of the intellectual property rights of the holder to terminate such act, make a public apology or rectification, and pay damages;

 (c) To request the competent State body to deal with acts of infringement of its intellectual property rights in accordance with the provisions of this Law and other relevant laws;

 (d) To initiate a lawsuit at a court or a claim at an arbitration centre to protect the legitimate rights and interests of the holder.