Although the issue of registration for protection of industrial property rights is not new, when bringing a trademark to foreign markets, domestic or foreign enterprises, without prior preparation, still fall into disputes over intellectual property rights.
The first story, a Vietnamese individual often searches for foreign products on e-commerce sites and finds a very useful product that is not available in Vietnam. This person ordered and after researching the product, he decided to establish a company, register for trademark and design protection for the product and proceed with production. Because it is a practical product, it is easy to enter Vietnamese stores and e-commerce sites.
As soon as the product was found to be similar to its own, the foreign company contacted and asked the Vietnamese company to stop this act of infringing on this trademark and industrial design. However, the Vietnamese company responded that it was its product because it was protected in Vietnam.
The second story, a foreign brand with a methodical product production process has been transferred the right to use patents and trademarks to a number of other countries. In Vietnam, this foreign company has also granted an exclusive use right (Exclusive License Agreement) to a Vietnamese company. The License Agreement clearly states the names of the foreign company and the Vietnamese company, however, in the signature section on the Vietnamese side, there is only a signature and no stamp. During the first three years of the License Agreement, the Vietnamese company pays the full usage fee to the foreign company. The Vietnamese company accordingly manufactured the product according to the transferred formula and sold the product in Vietnam.
However, more than a year later, the Vietnamese company did not pay the fee for using the mark, the foreign company repeatedly requested it, but the Vietnamese company refused to pay the fee without specifying the reason. The foreign company, after investigating, discovered that the Vietnamese company had registered its own trademark in Vietnam and was granted a trademark protection title in Vietnam, so they refused to pay the fee for using the mark.
Those are two of the stories encountered by some foreign companies regarding industrial property rights (IP) in Vietnam. And of course, the process of resolving IP rights disputes of foreign companies in Vietnam also encounters many difficulties.
Foreign trademarks entering the Vietnamese market must be registered for protection?
The Intellectual Property Law 2005, amended and supplemented in 2009, stipulates that a group of objects subject to industrial property rights includes (i) inventions, (ii) industrial designs, (iii) semi-integrated circuit layout designs indication, (iv) trademark, (v) geographical indication. This group is only protected for industrial property rights if such objects have filed a registration application with an industrial property authority and are granted a protection title.
At the same time, Vietnam is also a member of multilateral and bilateral agreements such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TrIPS Agreement), the Madrid Agreement on Trademark Registration in 1891, amended in 1979, the Protocol Relating to the Madrid Agreement of 1989 of the World Intellectual Property Organization (WIPO) and other bilateral agreements. Therefore, when foreign companies want to protect their industrial property rights in Vietnam, they have the right to apply for protection at Vietnam’s industrial property office or register an international mark under the Madrid system to claim protection in Vietnam. Vietnam under the provisions of the Agreements to which Vietnam is also a member. Particularly for well-known trademarks, IP rights are established on the basis of use, so registration is not required for this type of mark.
Thus, similar to Vietnamese trademarks going abroad, foreign brands that want to be protected in Vietnam must also submit a protection registration application to avoid being protected or infringed by others.
One point to note, the trademark registration procedure is carried out on the principle of first filing. In case there are many applications by many different people for registration of marks that are identical or confusingly similar to each other for identical or similar products or services, the protection title shall only be granted to the mark in the valid application has the earliest priority or filing date among the applications that meet the conditions to be granted a protection title. In case there are many registration applications that satisfy the same conditions for being granted a protection title and have the same priority or earliest filing date, the protection title will only be granted to the object of a single application in the same period. the number of such applications by agreement of all applicants; if no agreement is reached, the respective objects of those applications will be refused to grant protection titles.
Thus, a foreign mark may not be granted a protection title if the mark has been registered by a Vietnamese enterprise or another foreign enterprise in advance. For a well-known foreign mark, although registration procedures are not required, in order to be protected in Vietnam, if it is infringed, the owner of such mark must also prove the extent of widespread use. of the trademark.
Protecting IPRs from the perspective of Vietnamese law
If the owner believes that his/her IP rights have been infringed, he/she can apply self-protection rights such as (i) requesting the infringing organization or individual to stop the infringing act, apologize, public rectification, compensation for damage, (ii) request the competent state agency to handle the infringement and also have the right to complain to the state IP authority to request settlement, or (iii) ) initiate a lawsuit to court or arbitration to protect their rights and interests. Plaintiffs and defendants in IP rights infringement lawsuits have the right and obligation to prove according to the provisions of Article 91 of the Civil Procedure Code 2015 and Article 203 of the Intellectual Property Law 2005.
In addition, Vietnam has Decree No.99/2013/ND-CP dated August 29, 2013 on sanctioning of administrative violations in the field of industrial property, with regulations on behaviors, fine levels, and remedial measures. The result is intended to handle violations but not to the extent of criminal punishment.
In addition, the Penal Code 2015, amended and supplemented in 2017 of Vietnam also has provisions on the crime of infringing on industrial property rights, whereby a person intentionally infringes on industrial property rights with respect to trademarks or geographical indications. A protected legal entity in Vietnam that is subject to a counterfeit trademark or geographical indication with a commercial scale or gains illicit profits may be subject to a fine or imprisonment. Commercial legal entities may also be banned from doing business, from operating in certain areas or from raising capital for one to three years.
Obviously, the issue of registration for protection and handling of violations in the field of industrial property has been regulated by Vietnamese law. However, the route of complaint/suit is often time consuming and expensive, but it is unlikely to have the desired outcome if the evidence is not solid enough. Therefore, when there is a need to develop a brand name in the domestic as well as in the international market, the initiative in filing a protection application is a prerequisite legal solution to protect the rights and best interests of the owner, avoid falling into a passive position.
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