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Standing, Conditions and Evidences in Support of Commencing an Action against an Infringment of Intellectual Property Rights before Vietnamese courts
(Ngày đăng: 2020-06-16)

Standing, Conditions and Evidences in Support of Commencing an Action

against an Infringment of Intellectual Property Rights before Vietnamese courts

 

Email: vinh@bross.vn

 

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[1].

 

Who Can Sue for IP Infringement?

 

Individuals or organizations have the right to bring an infringement of institute intellectual property rights to a court if they belong to one of 3 groups:

 

(a) 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;

(b) Group 2: Other individuals and organizations who were transferred, inherited intellectual property rights;

(c) 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.

 

In general, agencies and organizations (other than Group 1 and Group 2) also have the right to initiate lawsuits for the public benefit if they satisfy two conditions. (i) that agency or organization has duties and powers in performing the function of state management, social management in a certain field, and (ii) 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[2].

 

Conditions for Starting a Legal Case

 

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, media, 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 action are considered to be complied with 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[3].

 

Please bear 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 the 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[4].

 

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[5].

 

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 remaining industrial property rights, namely trade name (business name), trade secret, anti-unfair competition right, and well-known trademark (famous trademark) without requirement of registration, 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 Intellectual Property Law[6].

 

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[7].

 

Evidences related to intellectual property right case

 

General principles for determining act of infringement of intellectual property rights is not specified in the Intellectual Property Law but merely provided in Decree 105/2006 / ND-CP as revised under Decree 119/2010 / ND- CP ("Decree 105 as revised”). According to the Decree 105 as revised, it is considered as an infringement of intellectual property rights only when the act simultaneously satisfies four factors:

 

a. The subject under consideration is within the scope of the protected IP rights

b. There are infringing elements in the subject under consideration

c. The violating individual or organization is not the right holder or the person authorized by the right holder to use that IP rights.

d. The act of infringement occurred in the territory of Vietnam[8]

 

The second factor - having infringing elements in the subject under consideration - often plays the most important role when the right holder needs to handle the infringement by means of initiating civil lawsuits. Below are guidelines for identifying infringing elements for certain types of intellectual property rights including patents, trademarks, copyrights and plant varieties[9].

 

For inventions, based on the comparison of the protection scope of the 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:

(a) 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;

(b) Process identical or equivalent to that of an invention protection domain;

(c) 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[10]), signs suspected of infringing upon trademark rights of others are only considered to have contained infringing elements only when satisfying two conditions: (a) signs suspected to be identical or confusingly similar to the trademark being protected, and (b) goods or services suspected of infringing must be identical with or similar to those bearing registered trademark[11].

 

For copyright[12], by comparing the suspected subject with the protected subject, an infringing element can be found if it belongs to one of 5 forms:

 

(a) Unauthorized reproduction of the work;

(b) A derivative work is illegally created;

(c) Works with forged name, signature of author, impersonation or appropriation of copyright;

(d) The part of the work is illegally extracted, copied or assembled;

(e) 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

 

(a) Using propagating materials of a protected plant variety to commit acts specified in Clause 1, Article 186 of the Intellectual Property Law without permission of the owner of a plant variety protection certificate;

(b) Use of propagating materials of plant varieties specified in Article 187 of the Intellectual Property Law;

(c) Using 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;

(d) The form (a) or (b) 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 have had experience in criminal litigation and civil litigation in cases involving intellectual property rights as well as experience in handling infringements of intellectual property rights by administrative measures. 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.

 



[1] See Clause 6, Article 4 of the Intellectual Property Law and Clause 1, Article 4 of Decree 105/2006 / ND-CP of September 22, 2006 as amended and supplemented under Decree 119/2010 / ND-CP of December 30, 2010 ( "Decree 105/2006 as amended")

[2] See Clauses 3 and 4 of Article 187 of the 2015 Civil Procedure Code and Point 2.1 of Resolution No. 02/2006 / NQ-HDTP of the Council of Judges of the Supreme People's Court of May 12, 2006

[3] See Clause 1, Article 6 of the Intellectual Property Law and Point a, Clause 3, Article 24 of Decree 105/2006

[4] See Clauses 1, 2 & 4, Article 19, Clause 1, Article 27, and Clause 2, Article 45 of the Intellectual Property Law

[5] See Articles 27 and 34 of the Intellectual Property Law

[6] See Clauses 3 and 4 of Article 6 of the Intellectual Property Law, Points 1, 2 and Points b, c and d, Clause 3, Article 24 of Decree 105/2006 as revised

[7] See Clause 4, Articles 6, 169 of the Intellectual Property Law and Circular No. 207/2016 / TT-BTC of November 9, 2016 of the Minister of Finance stipulating the rates, mode of collection, payment, management and use of fees, fees in the field of cultivation and forestry trees

[8] See Article 5 of Decree 105 as revised

[9] See Articles 7, 8, 11 & 14 of Decree 105 amended

[10] Well-known trademark is a complex legal issue, so we do not mention it in the above article. Interested readers can learn more about the famous trademark in Vietnam by looking at the Framework Proposal for Well-known Mark Protection at the link: http://bross.vn/newsletter/ip-news-update/FRAMEWORK-PROPOSAL--FOR-WELLKNOWN-MARK-PROTECTION

[11] To learn more about how to identify trademark infringement, please see the article “WHAT TEST OR STANDARD IS USED BY VIETNAM TO DETERMINE A TRADEMARK INFRINGEMENT?”: http://bross.vn/newsletter/ip-news-update/WHAT-TEST-OR-STANDARD-IS-USED-BY-VIETNAM-TO-DETERMINE-A-TRADEMARK-INFRINGEMENT-1390

[12] See more legal rules on identifying infringing elements for copyright in the article "How to determine copyright infringement under the Vietnamese laws" at the link: https://www.mondaq.com/copyright/893122/how-to-determine-copyright-infringement-under-the-vietnamese-laws

 

 

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