A glance at common intellectual property rights

and the conflict or overlapping amongst them

Email: vinh@bross.vn

Trademark or brand name

A trademark (aka "brand name" used in marketing language) is one of many forms (subject matters) of intellectual property rights protected by the Vietnamese IP Law. The device of biten apple, three-dimensional mark (bear-shaped gums by Haribo) and Google as below are the registered trademarks

The Vietnamese IP Law defines that a trademark is a sign used to distinguish goods or services on the same kind produced by different organizations and individuals. A mark protectable as a trademark must be visible in the form of letters, words, drawings, images, including three-dimension or a combination thereof embodied in one or more colors[1].

With the exception of a well-known trademark[2], Vietnam only recognizes the exclusive right to use a trademark (trademark) pertaining to a specifically designated goods or service in commerce in favor of an individual or organization only when their trademark has been granted and still valid in Vietnam.

Copyright

Copyright, usually identified by the C symbol in the circle ©, is the other form of protection of intellectual property rights. Copyright is not defined directly by the Vietnamese IP Law but only indirectly stated as the right of an organization or individual to a work that it has created or owned.

Directly understood, copyright is the exclusive right to make copies and control 12 types of scientific and artistic works of art such as writing, newspapers, cinema, architecture, software, applied art, etc.,. that are protected by the law for a certain period (usually 50 years after the author's death)

According to the Vietnamese IP law, 12 types of literary artistic scientific works are protected in Vietnam if they meet two conditions: (a) it is created and fixed in a certain material form (fixation), and (b) that work has originality meaning that the protectable work must be created directly by the author using his intellectual labor without copying it from other people's work.

As such, copyright is of exclusive rights, arising from the point of time when the work was created and expressed in a certain material form, regardless of content, quality, form, medium, language, published or unpublished, registered or unregistered. A certificate for registration of copyright, whether granted or pending, like the example below is not a required procedure for entitlement to copyright but only evidence of copyright ownership, helping the right holder to be released from proving that he or she is duly the copyright owner in case of dispute with a third party.

Exclusive rights associated with copyright include (a) moral rights attached to its author that are inalienable, non-transferable such as paternity, attribution, integrity; and (b) 6 types of economic rights, ie. the right of reproduction, distribution, communication, rental, making a derivative work and public performance plus “hermaphrodite’ right of publication[3].

Industrial Design

Industrial design (design), a form of protection of intellectual property rights, that may be patentable, is the outer appearance of a product expressed in shapes, lines, colors or combinations thereof. To qualify for protection, such outer appearance embodied in the applied-for design must simultaneously satisfy all three conditions: (a) worldwide novelty, (b) inventive step, and (c) industrial applicability[4].

Trade Name

A trade name, another subject matter of IP right that is independently protected, without dependence on registration, is the name of an organization or individual used in business activities to distinguish the business entity bearing that name from other business entities in the same field and business area. In other words, a trade name is a name or term used to identify and distinguish one business from another in the same field of business and geographical area of business[5].

Ex:  According to the first instance verdict no. 17/2019 / KDTM-ST of May 31, 2019 decided by the Hanoi people’s court, Asea Dong Tien Food Powder Joint Stock Company was forced to remove the "Dong Tien" (Đồng Tiền) element from its business name because of infringement upon the plaintiff’s trade name and trademark “Dong Tien Brand” (Hiệu Đồng Tiền)[6]

Patent for Invention, Patent for Utility Solution

Any technical solution belonging to one of three categories: substance, product or process that is capable of solving a specific technical problem by the application of natural laws, even filed in the form of an international patent application (PCT applications) or conventional patent applications, can be patentable for a 20-year term, if it meets three conditions: worldwide novelty, non-obviousness (inventive step), and industrial applicability. Where the inventive step has been not found in the applied-for invention, it can still be protected in the form of a patent for utility solution (equivalent to a utility model, mini patent available in other countries) with a 10-year term of protection[7].

When do the intellectual property rights overlap or conflict with one another?

Conflict or overlapping amongst intellectual property rights may occur during both establishing or enforcing intellectual property rights. Thereby, overlapping of IP rights is the objective phenomenon that comes out when one subject enjoys more than one form of protection granted in favor of the same subject matter. Meanwhile, conflict among IP rights that is objectively arisen is a legal conflict between A - the owner of IP right A1, and B - the owner of IP right B1 wherein A1 and B1 are either the same or similar subject matters and may be entitled to registration under the different form of protection.

If the above mentioned IP rights overlap with one another, that is, the same subject matter but the right holder is protected by many different laws, it will lead to make fail the particular target of each law. For example, Vietnam's industrial design legislation only allows a registered design to be protected for up to 15 years, after which it will be of public domain, but in practice it may continue to be protected in the form of trademark, copyright, making the term of protection of that subject matter becomes too long (more than 50 years after the author’s death for copyright holder) or may also become indefinite in case of trademark (every 10 years the stakeholder renews it). This is a very complex legal issue that is currently causing headaches for legal jurisprudence scholars worldwide.

At the same time, in view of the conflict alone, the legal complexity also arises because the holder of this IP right conflicts with the owner of other IP right. The existence of this phenomenon will surely lead to complex and prolonged legal disputes that can even invalidate the common goal of law as well as can make the IPR enforcement bodies confused.

In summary, the common types of conflict between forms of intellectual property protection may include:

(1) the conflict between a trade name (an enterprise name) and a trademark of Dong Tien as mentioned above;

(2) the conflict between industrial design and copyright in the "Misa bear" dispute[8];

(3) the conflict between trademark and geographical indication in the Tan Trieu pomelo dispute[9];

(4) the conflict between geographical indications and trademark, eg. the conflict between Buon Ma Thuot geographical indication used for coffee bean and the trademark Buon Ma Thuot coffee appropriated in China in 2011[10], or similarly Phu Quoc geographical indications for fish sauce conflicts with Phu Quoc trademarks registered by Viet Huong Company in the US, EU, Malaysia and China[11];

(5) the conflict between Duy Loi hammock industrial design and patent (utility solution) granted in the US;

(6) the conflict between copyright and trademark, for example, Marvel Comics Inc, the copyright owner of the X-Men blockbuster, accused ICP’s registration and use of X-MEN trademark of infringement of its copyright[12]

Should you have specific needs, please contact: vinh@bross.vn; cellphone 84-903 287 057, 84-4-3555 3466; Wechat: wxid_56evtn82p2vf22; Skype: vinh.bross.

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including enforcement, anti-counterfeiting,  litigation regarding trademark, trade name, industrial design, patent, copyright and domain name.