3 Key Issues When Suing and Litigating in the Civil Lawsuits

Regarding Intellectual Property Rights in Vietnamese Courts

Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

According to the IP Law 2022, holders of intellectual property rights (plaintiff) have the right to apply civil remedies by initiating a civil case requesting the court to force the alleged infringer (defendant) to cease infringement and compensation for damages. The standing to sue, conditions to initiate a lawsuit and evidence of infringement are three key issues when suing and litigating an intellectual property case before a court in Vietnam.

Standing to Sue

Civil remedies prescribed by law are independent legal measures for holders of intellectual property right to enforce, protect their intellectual property rights, or for aggrieved organizations and individuals due to infringement of intellectual property rights. This independent characteristic is understood that even if such infringement of intellectual property rights has been or is being dealt with by administrative or criminal measures, the right holder or aggrieved organization or individual still have standing to sue for infringement. Accordingly, individuals or organizations who have the right to bring an IP infringement to a court belong to one of three groups:

Group 1: Right holders as an owner of rights, an author, a co-author related to such intellectual property rights: an owner of industrial property rights; holder of plant variety protection certificate; copyright owner; authors, co-authors related to industrial property rights; authors and co-authors related to copyright and related rights; authors and co-authors related to plant varieties.

Group 2: Other individuals and organizations who were transferred, inherited intellectual property rights.

Group 3: Organizations and individuals are damaged by infringements of intellectual property rights. The entitlement to initiate lawsuits in favour of organizations and individuals in this group is usually carried out by agencies, state organizations, and social and professional organizations, for example, the Vietnam Consumer Protection Associations has the right to represent consumers, initiate a lawsuit to protect consumers' interests, or initiate a lawsuit in the public interest in accordance with the Law on consumer protection.

Kindly note that agencies and organizations under Group 3 also have the right to initiate lawsuits for the public benefit if they satisfy two conditions. (1) that agency or organization has duties and powers in performing the function of state management, social management in a certain field, and (2) the public interest, the State's benefits which shall be requested before by the court shall fall into the area in charge of such agency or organization.

Prerequisite for Bringing a Lawsuit against Another Party

For cases involving copyright and related rights, the law stipulates that copyright and related rights are created, established, and expressed in a certain material form, regardless of content, quality, form, mean, language, published or unpublished, registered, or unregistered. Therefore, it is not compulsory to present the certificate of registration of copyright, or related rights when filing a lawsuit. Instead, the conditions for taking legal action are deemed satisfied if the plaintiff provided the original or copy of the work, a fixation of the performance, a sound recording, video recording, broadcast, satellite signals coded programmes together with other documents proving the creation, publication and dissemination of the above creative products or works. Please keep in mind that the copyright, related rights subject to a lawsuit must be validly protected then to be in compliance with the conditions for commencing an action. However, attention should also be paid to moral rights (except for publication right that is protected for a particular period of time the same as other economic rights), they are protected perpetually, non-assignable and non-alienable.

Meanwhile, the term of protection of economic rights will vary depending on the type of work, fixations of the performances, phonograms, video recordings, broadcastings. For example, in the case of published works, the economic rights (property rights) of cinematographic works, photography, artworks, and anonymous works have a term of protection of seventy-five years from the date of publication counting from the first date of publication. Where those have not been published within twenty-five years after the fixation of the work, the term of protection is one hundred years from the date of publication, or from the point of time upon which are fixed in a tangible form of expression.

For groups of industrial property rights established on the basis of registration (including inventions, utility solutions, integrated circuit layout designs, industrial designs, trademarks, geographical indications), the industrial property rights exist only based on the availability of valid titles of protection granted by a competent authority, ie. these titles of protection are respectively called as patent for invention, patent for utility solution, patent for design, certificate of layout design, certificate of trademark registration, certificate of geographical indication registration. 

It is worth noting that that some certain types of industrial property rights must be renewed or maintained by the laws, for example, annual annuity against patent for invention or patent for utility model must be paid starting from the time of issuance until the expiry of term of protection of 20 years or 10 years respectively from the date of application. A patent for design must be renewed twice every 5 years from the end of the first 5-year validity period from the filing date. Certificate of registration of geographical indication is valid indefinitely. For trademark, a certificate of trademark registration or international trademark registration is valid for 10 years from the date of filing of application or date of international registration and they can be extended unlimitedly, each time for 10 years.

For other industrial property rights without requirement of registration, namely trade name (business name), trade secret, anti-unfair competition right, and well-known trademark (famous trademark), plaintiff shall successfully substantiate that such rights are currently subsisted based on the evidences of compliance with their corresponding conditions for protection by the laws, for instance, for business name, industrial property rights merely exist based on the lawful use of such trade names; with regard to business secrets, based on the lawfully obtaining business secrets and the holder exercising the confidentiality of such business secrets; with regard to the rights to combat unfair competition on the basis of business competition activities; and for well-known marks, a great deal of evidences and documents showing 8 criteria for evaluating well-known marks under Article 75 of the IP Law.

For the rights over a plant variety established on the basis of registration, particularly based on the title of protection of plant variety issued by the Plant Variety Protection Office of Plant Department under the Ministry of Agriculture and Rural Development. The title of protection of plant variety is valid from the date of issuance to the end of twenty-five years for woody plants and vines; or till the end of twenty-years for other plant varieties, provided that the maintenance fee shall be paid in a period of 3 months after the date of issue applicable for the first validity year and paid on the first month of each following validity year.

Evidence of Infringement

It is considered an infringement of intellectual property rights only when 4 factors are simultaneously found: (1) A subject under consideration is within the scope of the protected IP rights; (2) there are infringing elements in the subject under consideration; (3) Suspected infringer is neither the right holder nor the person authorized by the right holder to use that IP rights; and (4) such infringement occurred in the territory of Vietnam. 

Factor 2 - having infringement elements in the subject under consideration - is often crucial when initiating civil lawsuits. Below are guidelines for identifying infringing elements for certain types of intellectual property rights including patents, trademarks, copyrights, and plant varieties.

For inventions, based on the comparison of protection scope of a granted patent with the suspected subject, it is possible to determine whether or not there is an element of infringement in one of three forms: (1) the product or part of a product is identical or equivalent to the product or part (part) of the product is protected by an invention; (2) process identical or equivalent to that of an invention protection domain; (3) product or part (part) of a product manufactured by a process identical to or equivalent to a process covered by patent protection.

For trademarks (except for well-known trademarks), signs suspected of infringing upon trademark rights of others are only considered to have contained infringing elements only when satisfying two conditions: (1) signs suspected to be identical or confusingly similar to the trademark being protected, and (2) goods or services suspected of infringing must be identical with or similar to those bearing registered trademark.

For copyright (authors’ rights), by comparing the suspected subject with the protected subject, an infringing element can be found if it belongs to one of five forms: (1) unauthorized reproduction of the work; (2) a derivative work is illegally transformed; (3) works with forged name, signature of author, impersonation or appropriation of copyright; (4) the part of the work is illegally extracted, copied or assembled; (5) products with an illegally disabled technical device.

For a plant variety, an infringing element may be found if it falls into one of four forms after comparing a suspected infringement with a plant variety protection title, a description of the plant variety protected by the protection grant agency: (1) using propagating materials of a protected plant variety to commit acts specified in Article 186(1) of the IP Law without permission of the owner of a plant variety protection certificate; (2) use of propagating materials of plant varieties specified in Article 187 of the Intellectual Property Law; (3) adopting a name of a plant variety of the same species or species close to the species of the protected variety which is identical or confusingly similar to the name of the protected plant variety; (4) the form (1) or (2) mentioned above may also apply to harvested materials if the holder of title of protection does not have reasonable conditions to exercise his rights to the propagating material of that same.

Bross & Partners, an intellectual property company ranked Tier 1 in 3 consecutive years (2020-2022) by Legal 500 Asia Pacific, has practical experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.

Please contact: Vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.