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Which Disputes, Infringements of Intellectual Property Rights are Actionable at the Vietnamese Court System?
(Ngày đăng: 2020-06-04)

Which Disputes, Infringements of Intellectual Property Rights

are Actionable at the Vietnamese Court System?

 

Email: vinh@bross.vn

 

Introduction

 

Although the courts throughout the country when adjudicating intellectual property lawsuits commonly quote in their decisions or rulings as “dispute of intellectual property rights”, disputes of intellectual property rights or handling acts of infringement of intellectual property rights, in nature, are brought to the courts are extremely complicated and diverse because IP rights are not only a property right but a bundle of many different types of property rights established based on the different rules prescribed by law, allowing the right holder to proprietarily use and exploit different protected IP subject matters such as invention, industrial design, trademark (brand name), geographical indication, new plant varieties, copyrights, related rights (neighboring rights), etc.

 

In principle, all cases related to intellectual property rights must be accepted and adjudicated by courts because Vietnam's civil procedure law stipulates that a court must not refuse to accept any civil case even if there is no applicable law[1].

 

Despite the above, identifying intellectual property disputes is an important first step to not only help the right holder to shape the nature of the case, collect relevant evidence and prove legal grounds to protecting legitimate rights and interests that are infringed upon but also helping the court to understand the subject of the dispute and relevant laws so that it can be properly applied to settle the case.

 

In that spirit, the current legislation[2] divides disputes and infringements of intellectual property rights into 4 groups of disputes:

(a)        Authorship and copyright disputes may be of pure characteristics relating to moral rights[3] and/or of pure characteristics relating to economic rights[4];

(b)        Disputes of related rights (neighboring rights);

(c)        Disputes over industrial property rights[5]; and

(d)       Disputes of rights over plant varieties

 

Authorship and Copyright Disputes May be of Pure Characteristics Relating to Moral Rights and/or of Pure Characteristics 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;

  1. 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.

 

Disputes over Related Rights (Neighbouring 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 ;

(dd)     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;

(e)        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

 

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;

(dd)     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;

(e)        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 compensation 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 unti 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;

(k)        Disputes arising from acts of infringing upon the rights of inventors or industrial designs; layout design;

(l)         Disputes over remuneration for inventors, industrial designs, layout designs;

(m)       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;

(n)        Disputes over inheritance, inheritance of industrial property rights, property rights of inventors and industrial designs; layout design;

(o)        Disputes arising from unfair competition acts related to industrial property

 

Disputes over 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 to protected plant varieties

 

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] Section 4(2) Civil Proceeding Code of 2015 provides for that the court must not refuse to resolve a civil case because there is no law in place.

[2] See Joint Circular No. 02/2008 / TTLT-TANDTC-VKSNDTC-BVHTT & DL-BKH & CN-BTP amongst the Supreme People's Court, Supreme People's Procuracy, Ministry of Culture, Sports and Tourism, Ministry of Science and Technology, and Ministry of Justice on April 3, 2008 guiding the application of a number of legal provisions in the settlement of intellectual property rights disputes in people's courts

[3] For a type of dispute over who is author and co-author, you can see the summary of first instance judgment no. 35/2019/DS-ST of the People's Court of District 1 Ho Chi Minh City on February 18, 2019 in the article “TAKE A LOOK AT THE FIRST INSTANCE VERDICT OF COPYRIGHT DISPUTE “THAN DONG DAT VIET” BEST-SELLING COMIC SERIES RECENTLY DECIDED BY A COURT IN VIETNAM” tại link: http://bross.vn/newsletter/ip-news-update/Take-a-Look-at-the-First-Instance-Verdict-of-Copyright-Dispute--%E2%80%9CThan-Dong-Dat-Viet%E2%80%9D-Bestselling-Comic-Series-Recently-Decided-by-a-Court-in-Vietnam-1489

[4] To understand the practice of hearing decided by the Vietnamese courts, you may view both first-instance judgment and appellate decision ruled by two levels of court regarding the key issue of fair use or copyright infringement in our comment article: The third classic intellectual property dispute in Vietnam viewed from a rarely occurred copyright dispute regarding fair use defense decided by the Vietnamese courts”: http://bross.vn/newsletter/ip-news-update/The-third-classic-intellectual-property-dispute-in-Vietnam-viewed-from-a-rarely--occurred-copyright-dispute-regarding-fair-use-defense-decided-by-the-Vietnamese-courts

[5] You can refer to the classic case in Vietnam around the dispute over both famous trademark and copyright in our article: X-Men vs. X-Men: The Second Classic Intellectual Property Rights Dispute in Vietnam”: http://bross.vn/newsletter/ip-news-update/XMen-vs-XMen:-The-Second-Classic-Intellectual-Property-Rights-Dispute-in-Vietnam

 

 

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