Infringements of Intellectual Property Rights
and Disputes of Intellectual Property Rights Litigable at the Vietnamese Courts
Attorney Le Quang Vinh – Bross & Partners
The Vietnamese civil proceeding laws does not distinguish intellectual property rights (IPR) disputes from IPR infringements when initiating civil. The courts often quote in their judgements as "intellectual property rights disputes" to determine the disputed legal relationship as being relevant to an IPR. In practice, "intellectual property rights disputes" are very diverse and complicated because IPRs are protectable for different rights subject matters that are established on the different grounds with different legal criteria, so many courts are quite confused in resolving the case while litigants are bewildered in their offensive or defensive pleadings. Identifying and classifying the types of IP disputes introduced by Bross & Partners below can help you better prepare during IP litigation in the Vietnamese court system.
Identification of Types of Intellectual Property Rights
When hearing IP-related civil lawsuits, courts across the country commonly quote their judgments as “intellectual property rights disputes” regardless of whether the case may arise from, or involved in infringement, or dispute of intellectual property rights. Similarly, such general reference is also found in civil cases that may involve other cases that have been administratively sanctioned in the field of industrial property rights, plant varieties, authors’ rights (copyright)/related rights (neighboring right); or even from a criminal case related to the crime of manufacturing/trading in counterfeit goods, offence of infringing upon industrial property rights, count of infringing upon copyright/related rights. Thus, in view of the nature of intellectual property rights disputes, or dealing with IP infringements by civil measure before a court, are very diversified and complex.
The reason here is that intellectual property rights are not a single right but a collection of different types of priviledged rights protected by the laws, and those are established, changed, or terminated on the ground of different rules applicable for different forms of legal protection. For instance, exclusive rights to exploit inventions (ie. a patented invention) granted in favor of organizations, individuals whose technical creations were considered as novelty in the world, inventive step, industrial applicability; exclusive right to use a trademark (ie. a registered trademark) is granted to organizations, individuals whose use/intent-to-use are to indicate commercial badge of goods, services, and which were determined to have distinctive character.
Failure to identify, or incorrect identification of a sued subject, or confusion of disputed issue in intellectual property cases will inevitably lead to the court finding it difficult to accept the case, or the accepted lawsuits may be delayed for settlement, trial process is prolonged, or litigants do not obtain the desired outcomes when using civil remedies in protecting their intellectual property rights or defending against abuse of intellectual property rights.
4 Groups of IP Disputes Actionable at Courts
The Vietnamese civil procedure law of 2015 does not distinguish intellectual property rights disputes from infringement of intellectual property rights when initiating civil lawsuits or commercial business cases. In general, all acts of infringement or disputes of intellectual property rights are collectively grouped into the group of intellectual property rights disputes. Accordingly, the current law divides disputes and infringements of intellectual property rights into four groups of disputes: (1) copyright disputes of a pure nature relating to moral rights and/or purely concerning economic rights; (2) related rights disputes (neighboring rights); (3) industrial property rights disputes; and (4) dispute over plant variety rights.
Group 1: Copyright Disputes (of a pure nature relating to moral rights and/or purely concerning economic rights)
a. Disputes between individuals over determining who is the author and co-author.
b. Disputes over the right to name the work (other writings such as the right to claim authorship of a work, the right of attribution, the right of paternity have the same legal meaning), the right to publish (the publication right), the right to protect the integrity of the work (the right of integrity), including preventing others from modifying, mutilation, or misrepresenting a work which is harmful to honor and author's reputation
c. Disputes related to infringements of moral rights of authors or co-authors.
d. Disputes between the author and the copyright owner in relation to a derivative work
e. Disputes over ownership of copyright between an author and an organization or individual who invests funding for an author or co-author of a work created under a labour contract or under a commission contract.
f. Disputes between copyright owners and users of published works without asking for permission, paying royalties or remuneration for the reason that use affects the normal exploitation of the works, causing harms to authorship and copyright owners.
g. Disputes between copyright owners and users of published works without asking for permission but having to pay royalties (permitted-but-paid) or remuneration for reasons of users having not yet paid royalties, remuneration, those users affect the normal exploitation of works, prejudice the rights of authors and copyright owners.
h. Disputes over contracts of assignment of copyright, copyright license agreement, disputes over service contract relating to copyright, related rights.
i. Disputes arising from copyright infringement under Article 28 of the Intellectual Property Law include acts of illegal acts such as appropriation, copying, distribution, sale, impersonation, publication, communication of the works to the public, disabling technical measures made by copyright owners, etc.
j. Disputes over inheritance, inheritance of property rights prescribed in Article 20 and moral rights as provided in Clause 3, Article 19 of the Intellectual Property Law.
k. Other disputes over copyright
Group 2: Disputes over Neighboring Rights
a. Disputes between the investor and the performer over moral rights and economic rights over the performance; disputes between performers and users using economic rights with respect to performances on remuneration.
b. Disputes between the producers of phonograms, video recordings and the person exercising the rights of the producers of phonograms, video recordings about material benefits when the phonograms, video recordings of producers are distributed to the public.
c. Disputes between broadcasting organizations and users of rights of broadcasting organizations regarding material interests when their broadcasts are recorded and distributed to the public.
d. Disputes between performers, producers of phonograms, video recordings, broadcast organizations and related rights users without asking for permission, paying royalties or remuneration for reasons of use Using to affect the normal exploitation of performances, sound recordings, video records, broadcasts and prejudice the rights of performers, producers of phonograms, video records and broadcasting organizations.
e. Disputes between authors, copyright owners, performers, producers of phonograms, video recordings or broadcasting organizations with users of related rights are not subject to permission but must pay royalties, remuneration, for the reason that users do not have to pay royalties, remuneration, or affect the exploitation of normal performances, sound recordings, video recordings, broadcasts, harm the rights of performers, producers of phonograms, video recordings and broadcasting organizations.
f. Disputes over related rights to performances, sound recordings, video records or broadcasts (disputes over who is the owner of the performance, phonogram, video recording or that broadcasting programme).
g. Disputes arising from an infringement of related rights.
h. Disputes over inheritance and inheritance of related rights
i. Other disputes over related rights
Group 3: Disputes over Industrial Property Rights
a. Disputes over the right to register inventions, industrial designs, layout designs (design of semi-conducting closed circuits), trademarks and geographical indications.
b. Disputes over the priority right with respect to applications for invention, industrial designs or trademarks.
c. Dispute over author right of inventions, industrial designs and layout designs;
d. Disputes over moral rights, economic rights of inventors, creators of industrial designs and layout designs
e. Disputes over provisional rights to inventions, industrial designs and layout designs between the persons having entitlement to file applications for registration of inventions, industrial designs or layout designs with the persons who are using those subjects, or disputes with respect to compensation between the owner of a protection title and the person who used the invention, industrial design or layout design.
f. Disputes over the right of prior use an invention, an industrial design between the owner of an invention, an industrial design and a prior user of such invention, industrial design relating to the assignment of such right to other person, expanding the scope and volume of use without permission of the owner of industrial property objects.
g. Disputes over damage between patentee for inventions or industrial designs; holder of certificate of layout design with users of patent, industrial designs; layout designs in the period from the date of publication of the application for grant of the title of protection in the Industrial Property Official Gazette until the date of granting the title of protection.
h. Disputes over the rights of owners of industrial property objects (including disputes over the rights of co-owners).
i. Disputes arising from infringements of industrial property rights such as patent rights, utility solutions, industrial designs, integrated circuit layout designs, business secrets, trademarks, trade names, geographical indications and right to anti unfair competition including domain names under Articles 126, 127, 129 and 130 of the Intellectual Property Law.
j. Disputes arising from acts of infringing upon the rights of inventors or industrial designs; layout design.
k. Disputes over remuneration for inventors, industrial designs, layout designs
l. Disputes over contracts for assignment of industrial property rights; contract for licensing of industrial property objects or disputes over contracts for industrial property representation service
m. Disputes over inheritance, inheritance of industrial property rights, property rights of inventors and industrial designs; layout design
n. Disputes arising from unfair competition acts related to industrial property rights.
o. Other disputes over industrial property rights
Group 4: Disputes over Rights to Protected Plant Varieties
a. Disputes over rights of registration, right of priority and author right over plant varieties.
b. Disputes over a provisional right with a person who is using a plant variety arose from the date of the publication of the title of protection of the plant variety until the date of grant of the title of protection of the plant variety in accordance with Article 189 of the Intellectual Property Law
c. Disputes over acts that fall within the scope of limitations on rights of a certificate of protection of plant variety under Article 190 of the Intellectual Property Law, including: (i) use of a plant variety for the personal and non-commercial purposes; (ii) use the plant variety for testing purposes; (iii) use plant varieties to create other plant varieties; (iv) individual business households use products harvested from the plant variety to propagate themselves and plant the following crop on their own land.
d. Disputes relating to the obligation to pay remuneration to a plant breeder.
e. Disputes concerning the obligations of the author to assist the protection certificate holder in maintaining propagating materials (reproductive materials) of the protected plant variety.
f. Disputes relating to a contract for licensing of a protected plant variety between the holder of plant variety protection certificate and the licensee, or a dispute between co-owners of the plant variety as registered relating to the performance of contracts on licensing of protected plant varieties.
g. Disputes relating to a contract for the transfer of ownership of a protected plant variety between the holder of protection certificate or co-owners of a protected plant variety and the assignee, including a dispute over the ownership of a protected plant variety are derived from the state budget.
h. Disputes arising from infringements of rights over protected plant varieties.
i. Other disputes relating to the rights over protected plant varieties.
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.