Tuesday, January 16, 2018

AN ANALYSIS ON THE INFRINGEMENT AND INTELLECTUAL PROPERTY DISPUTES IN VIETNAM

Since Vietnam became an official member of the World Trade Organization (WTO), intellectual property (IP) is often referred to as one of the three pillars of the WTO besides trade in goods and trade Services. Although Vietnam has committed to full implementation of the IPR provisions of this organization, but in fact, the state of IPR infringement are becoming increasingly alarming. Problems in the enforcement of IP rights is due to remedial measures is not strong enough of the current law.

The requirements of socio-economic development and integration trend, active anti-infringement of Intellectual Property rights are the ministries and special business interest. To improve the efficiency of this operation, the  Ministry of Science and Technology, Ministry of Culture and Information (now the Ministry of Culture, Sports and Tourism), Ministry of Agriculture and Rural Development, Ministry of Finance, Ministry of Trade (now the Ministry of Industry and Trade), Ministry of Public Security and the Ministry of Post and Telecommunications (now the Ministry of Information and Communication) have signed Action Plan of 168/CTHD/VHTT-KHCN-NNPTNT-TC -TM-CA cooperation to prevent, combat IPR infringement 2006-2010 (hereinafter referred to as Program 168).

Besides, the State has also issued a series of legal documents related to the field of intellectual property such as: Intellectual Property Law in 2005; Decree No. 103/2006/ND-CP detailing and guiding the implementation of some articles of the Law on Intellectual Property of industrial property; Decree No. 105/2006/ND-CP detailing and guiding a number of articles of the Law on Intellectual Property protection IPR and IPR management state; Decree No. 106/2006/ND-CP providing for sanctions for administrative violations of industrial property ...

In general, most of the provisions of the current law of Vietnam standards of IPR protection objects are consistent with the provisions of the Agreement on Trade-Related Aspects of Intellectual Property rights (TRIPS). Thus, Vietnam's IPR legal framework has similarities with the WTO member countries, however, the effectiveness of implementation, you still face many limitations.

On the basis of analyzing some problems in terms of theory, the irrationality of the provisions of Vietnamese law on IPR and awareness of the state agencies, the enterprise IPR Vietnam, the following article will try to point out the causes of the phenomenon of IPR infringements as well as predicted and the solutions to overcome the above limitations.

1. Provisions of the Law on Intellectual Property and the TRIPS Agreement on enforcement of Intellectual Property rights at the border

Article 216 of the Law on Intellectual Property of Vietnam's regulations on "Measures to control the export and import related to IPR. Accordingly, measures to control the export and import of IPR-related include: Suspension of customs clearance of goods suspected of infringing IPR.

Here, IP Law has been given to the competent customs huge, beyond the capacity of the agency. With the current level of IPR and limitations of equipment, customs Vietnam is unlikely to assess violations of patents, plant varieties, industrial designs ... If invited expert evaluation, the excess downtime clearance Intellectual Property Law. Thus, this provision would be very difficult to enforce. This partly explains the phenomenon of IPR infringing goods originating from overseas are flooding the Vietnamese market today.

However, Article 51 of the TRIPS Agreement provides: "The Parties shall issue, in a manner consistent with the following provisions, the procedure allows the right holder, if there are reasonable grounds to suspect that the importation of goods bearing counterfeit trademarks or copyright violations may occur, be filed to the competent authorities, administrative or judicial body, for suspension at the customs office to stop the goods in free circulation "... Thus, this Agreement shall control regulations and procedures for imported goods suspected of violating trademark and copyright (2 out of many objects are protected IPR). Provisions of the TRIPS enforcement has opened up the possibility of very high of IPR enforcement agency, because with limited capacity and inadequate equipment, IPR enforcement at the border can only control imports trademark and copyright violations.

On the other hand, the provisions of Vietnamese law on IPR also exceeds the requirements of the TRIPS Agreement for the Member States of the WTO. Article 51 of the TRIPS Agreement does not require export control of goods infringing IPRs, by IPR infringing goods in the country of origin but not IPR infringements in the market of the importing country. If such rules may cause huge economic losses for Vietnamese exporters. In addition, IPR enforcement agencies will have to face unfair competition phenomenon may occur in the future. For example, for the garment export industry, there may be a certain subject intentionally carry out legal acts are considered as follows:

- Step 1: statistical monitoring and trademarks are not protected in Vietnam on the shipment of a garment export business;

- Step 2: registration of the trademark in Vietnam;

- Step 3: send notifications to export garment business requirements stops producing branded infringement of industrial property rights and find ways to making it easy for businesses;

- Step 4: if the business does not make the request in step 3, will submit an application to the authorities for suspension clearance for export shipments of the said business.

To overcome the above loopholes management, should develop regulations of IPR laws to conform with WTO rules and quickly remove unfavorable regulations for Vietnamese businesses in the integration process (ie remove the control of exports of IPR infringing elements). This proposal may seem extreme, but does not violate the principles of the WTO as full compliance with the provisions of the TRIPS Agreement as analyzed.

2. The competent authorities managed the subject of Intellectual Property rights

Currently, in our country remains conflicting regulations on the agencies competent to manage two objects of industrial property rights, trademarks and trade names. The establishment of industrial property rights of two very different subjects: industrial property rights for the brand is established on the basis of certificates registered label hieudo the IP level, and industrial property rights trade names are established on the basis of fair use trade names.

In fact, the Ministry of Science and Technology (through the Department of Intellectual Property) management of state trademark and geographical indications, the Ministry of Planning and Investment Management business trade name registration business Enterprise Law; Ministry of Finance manages the trade name of the business activities in the field of insurance; management of the State Securities Commission trade name of the business activities in the field of securities ... LIP allocation for the Ministry of Science and Technology, Ministry of Culture, Sports and Tourism, Ministry of Agriculture and Rural Development and implementation of state management of IP, while the other is responsible for "coordinating" with on in the field. However, there has never been a text of regulations on coordination mechanisms.

The relationship between trademarks, geographical indications and trade names:

- Intellectual Property Article 74.2.k Law provisions in the case of the brand is considered capable of distinguishing "sign identical or similar to a trade name is being used by others, if the use signs which may mislead consumers about the origin of goods or services. "

- Article 78.3 of the Law on Intellectual Property provides one of the conditions for determining the distinctiveness of the trade name is "identical or confusingly similar to marks of others or a protected geographical indication households prior to the protected trade name ".

In fact, when the dispute between the parties is the subject of brand protection and rights holders of trademarks has been licensed, the competent authorities shall apply procedures to solve and which agency will have the authority and responsibility of handling, the Ministry of Science and Technology and the Ministry of Planning and Investment?

System registered trademark and geographical indication by the National Intellectual Property Management are held very tightly, unable to identical or very few cases similar to the level of confusion in the whole country. But the trade name by too many managers on the same or similar to the level of confusion between the trade names, trade names identical or similar to a trademark confusingly and only Geographical is entirely possible. In fact pretty much happened IPR disputes for different objects that error is not from business but from the state management agencies.

Therefore, in the future, if the system state management agencies still keep the current IP, this situation will certainly have a tendency to increase by more and more new businesses are formed, that according to the law, every business should have one trade name; moreover, each enterprise can have more than one brand for goods and services.

To remedy this situation, the immediate solution is to have a mechanism of coordination among state management agencies trademarks, geographical indications and trade names, first of all between the two ministries, the Ministry of Science and Technology (State administration of trademarks, geographical indications) and the Ministry of Planning and Investment (state managed trade name).

Currently, relatively modern information network of the Department of Intellectual Property has published comprehensive and timely information about the legal status of industrial property objects, therefore, any subject can be exploited for free information this. Proposed solution are: the Ministry of Planning and Investment to the competent authority in the issuance of business registration to lookup information on the legal status of industrial property objects (mainly are trademarks and geographical indications) to avoid trade name identical or similar to, confusingly similar to trademarks and geographical indications.

In the long run, it is necessary to study only a single agency model management may agree on the subject of IP rights, although the implementation of this solution will be more complex.

3. Trade names and trademarks are two different objects of Intellectual Property rights

Analysis of the following example: On 24/05/1995, the Prime Minister issued Decision No. 311/TTg on the establishment of Regional Food Corporation Namco international transaction name is VIETNAM SOUTHERN FOOD CORPORATION, hereinafter referred to as VINAFOOD II. The same day, Prime Government Decision No. 312/TTg also on the establishment of the Corporation I VINAFOOD II as a trademark for printing on packaging their products. Food South Bacco international transaction name is VIETNAM NORTHERN FOOD CORPORATION, abbreviated VINAFOOD I.

It should be noted that, VINAFOOD-I VINAFOOD II in the above decision of the Prime Minister is just a trade name, but for a long time after that, the two corporations are using VINAFOOD

7 years later (6/28/2002), the Southern Food Corporation to apply for registration of trademark protection VINAFOOD II for groups of 29 and 30 and has been NOIP National Register of trademarks in on 20/06/2003.

On 06/12/2006, Northern Food Corporation

New applicants for registration of trademark protection VINAFOOD I. However, have suggested that VINAFOOD I was "similar to the level of confusion" with VINAFOOD II. Therefore, on 17.09.2007, the Northern Food Corporation to apply for protection for brands VNF1 and to this point, Northern Food Corporation has not been granted certificate of registration Trademark VINAFOOD I and trademark VNF1.

Can see, VINAFOOD I name a strong commercial and foreign consumers know to, if become brand will more favorable to business. However, the Northern Food Corporation has its own strategy to focus on building for trademark VNF1. Especially, although VNF1 not be considered "National Register" on the label but was considered a "single country" on the label Northern Food Corporation has applied the Protocol relating to the Madrid Agreement Concerning the International Registration of trademarks hoade registered protected trademarks VNF1 in the Member States of the Protocol. This is a right strategy of a large enterprise in the integration process. In fact, in just a short time, the domestic consumers and foreign partners are familiar and confident when using the product and services branded VNF1.

The world was no less the case now take its trade name brands such as: SONY, TOSHIBA, HONDA ... However, many businesses do not take its trade name brands such case is UNILEVER, the Group currently owns over 1,600 brands: LIPTON, OMO, P / S. .. but never get UNILEVER brand products.

Thus, in the process of international economic integration, will be a lot of Vietnamese enterprises encounter cases like this, not only financially costly but also affect the process of carving out a niche in the domestic market outside.

Solution, should not transplant trademarks and brands into one, by right of the Paris Convention for the Protection of Industrial Property has defined them as different objects of industrial property rights. It is suggested that, should take is always a trade name brands for less expensive, but the Madrid Agreement Concerning the International Registration of trademarks based on the "National Register" on labels and related Protocol relating to the Madrid Agreement Concerning the International Registration of trademarks is based on "national applications" trademark ([1]).

Therefore, enterprises want to register trademark protection abroad, must first register trademark protection in Vietnam (including use cases under his own trade name brand), then registration of trademarks abroad in two ways:

- Option 1: under the provisions of the Paris Convention for the Protection of Industrial Property in the country is not a member of the Madrid Agreement Concerning the International Registration of trademarks and the Protocol relating to the Madrid Agreement Concerning the post international registration of trademarks (pretty much the number of these countries, including large countries such as: USA, UK, Australia, Canada, Japan ...), trademark registration procedure is done at the industrial property offices of the country ([2]).

- Option 2: according to the Madrid Agreement Concerning the International Registration of trademarks and the Protocol relating to the Madrid Agreement Concerning the International Registration of trademarks in the member states (there are about 50 countries participating in the Madrid Agreement), now only need to submit 01 applications only in French for the agency is the International Bureau of the World Intellectual Property Organization (WIPO) through the Department of Intellectual Property of Vietnam to sign Registration of trademark protection in multiple countries.

4. Brands and labels are completely different terms

In many studies, the authors sometimes confuse these two terms, even called a "label", when in fact the only "brand" is the subject of IPR.

Take for example the case of Tia Sang Battery Joint Stock Company, the website of the Department of Science and Technology of Hai Phong has conveyed a research paper on Hai Phong newspaper as follows: "This is the first encounter case should the original company that violates the law but mild due label registration "NATSIONAL" in Vietnam. However, the Decree No. 89/2006/ND-CP dated 30/9/2006 of the Government on trademarks, Section 3, Article 5 provides: "export products for foreign organizations and individuals enter Vietnamese goods labeling requirements under the contract of sale and shall at the request of the organization, individual export contract shall comply with the required conditions are not falsifying the nature of the goods, does not violate Vietnamese laws and import laws of the country "([3]).

Here, there was confusion about the form: NATSIONAL is "brand" and not "label"; moreover, Decree 89/2006/ND-CP on the "labels" not provisions on "trademarks". "Brand" is a written or printed, drawings, copies of letters, drawings, photographs glued, printed, sewn, molded, touch, carved directly on goods, merchandise packaging of goods or other material mounted on commercial goods packaging of goods ([4]). Therefore, NATSIONAL not labels that is a trademark protected under the laws of the Kingdom of Cambodia.

Here you can see, not only businesses confused the very basic concepts of the field of IPR that even the state management agencies sometimes have a misunderstanding.

In the long run, this confusion can cause damage to the producers of goods when the check state management agencies. Law does not require any type of goods circulated on the market must but it defined branded goods to the quantity, date of manufacture, expiry date, user manual, maintenance instructions ... are the components of labeling.

Therefore, enterprises should especially be noted that all types of goods in circulation on the commodity market must be labeled according to the provisions of Decree No. 89/2006/ND-CP. For goods and services can be exported to foreign countries must be branded (the laws of many countries regulations have branded goods circulated on the market). Brand must be protected in Vietnam, then be registered for protection in national market for goods and services.

5. Territorial effect of trade names and trademarks

Not long ago, many people are not surprised about the change service marks of the Vietnam Bank for Industry and Trade. Founded in 1988, Industrial and Commercial Bank of Vietnam is one of the largest state-owned commercial banks in Vietnam and is ranked as one of the 23 special business in Vietnam. In 20 years, the Industrial and Commercial Bank of Vietnam has achieved many great achievements in all aspects of operation and contributed to effective implementation of national monetary policy to promote economic and social development Assembly. By 2008, the network of Industrial and Commercial Bank of Vietnam has been widely distributed in 56 provinces and cities nationwide, agency relationships with over 800 banks in 80 countries, territories world.

However, few know that, in the past 20 years, the Industrial and Commercial Bank of Vietnam has taken his Incombank trade name service mark that is not registered with the Intellectual Property Department to the National Register of brand ICB goods, in contrast to many other banks.

Meanwhile, on 01.14.1993 (5 years after the Vietnam Bank for Industry and Trade set up), NOIP for Jewelry Company of the Bank of Industry and Trade Ho Chi Minh City (HCMC) is based located at 165-169 Ham Nghi Street, District 1, Ho Chi Minh City property rights for the brand ICB ICB. Thus, since 1993, the Vietnam Bank for Industry and Trade lose trademarked ICB. ICB trademark protection has expired from the date of 02/11/2002, due Jewelry Company under the Industrial and Commercial Bank HCMC extended protection. Under the provisions of the Law on Intellectual Property, 5 years, ie from the date of 03/11/2007, the Vietnam Bank for Industry and Trade and other entities have the right to registered trademark protection ICB.

In the process of international economic integration, the Vietnam Bank for Industry and Trade to reach out to foreign markets, then to know the world has many bank Incombank branded as in Russia, China, South Korea. .. As a rule, any national brand by the degree of protection is valid only in the territory of that country, as a result, the Vietnam Bank for Industry and Trade can not be named ICB to work abroad, should have registration and NOIP trademark registration certificate Vietinbank on 18/07/2007.

In the process of integration into the international economy, there will be many cases as the said brand ICB. Therefore, the business is the owner of the brand does not have distinct components ([5]), if you want to export goods or services abroad need early registration of the mark in the national market. In the case of rejection, can choose two ways:

- Option 1: not used brands rejected in the foreign to the domestic market, to choose a brand with a high distinction to register at the same time in the country and abroad (as in the case of the Bank of Industry Trade of Vietnam selected brands Vietinbank).

- Option 2: still used brands rejected in the foreign to the domestic market, to choose a brand with a high distinction to register at the same time in the country and abroad. Thus, in this case, business users and 2 marks: 1 mark for domestic and one brand for both domestic and foreign.

6. Conflict in the provisions of the Law on Intellectual Property and Competition Law

Before the promulgation of the Law on Intellectual Property in 2005, the protection against unfair competition is an object that is protected under the provisions of Decree No. 54/2000/ND-CP, but 3 of the IP Law does not mention this object that defined in other terms.

Article 130.1.c LIP provides for acts of unfair competition: "Using the mark protected in a country is a member of treaties have banned the representative or agent of the owner trademark use trademark which the Socialist Republic of Vietnam is a member, if the user is the representative or agent of the owner of the brand and use it without the consent of the owner trademark owner with no good reason. "

Acts of unfair competition related to the domain name specified at Point d, Clause 1, Article 130.1.d. Intellectual Property Law: "Registration, occupying the right to use or use of the domain name is identical or confusingly similar to a trademark, trade name shall be protected by others or geographical indication that you do not have permission to use purposes seized the domain name, domain name abuse or damaging the prestige and reputation of the trademarks, trade names, geographical indications, respectively. "

211.3. Intellectual Property Law: "Organizations and individuals that commit acts of unfair competition IPR shall be administratively sanctioned according to the law on competition."

On the other hand, Article 39 of the Competition Law provides for acts of unfair competition related to IPR behavior: "Only misleading and infringing trade secrets."

Currently, in Decree 120/2005/NĐ-CP (issued on 30.9.2005 before the promulgation of the Law on Intellectual Property) only 30 specified level of sanction imposed for only misleading and 31 stipulated penalties for infringement of trade secrets. Thus, there is no provision for dealing with behavior defined in 130.1.c. and 130.1.d LIP.

As mentioned above, because there are so many managers so far there is no written legal provisions on competence and responsibilities of state management agencies in the resolution of disputes between domain name to the trademark, trade names and geographical indications.

May / 2003, the Minister of Post and Telecommunications (now the Ministry of Information and Communication) have Decision 92/2003/QD-BBCVT on resource management and use of the Internet, which provides for the registration of Register domain name "Organizations and individuals who register in advance at the previous level". This can be considered as a breakthrough compared to previous regulations, but there are still many limitations due to conflict with the provisions of the Intellectual Property.

In fact, many domain name disputes have arisen, which is common between a brand owner with the seized domain names identical or similar to the level of confusion with the mark, but still Center Internet Registration of Vietnam (the dispute between domain name and trademark Trung Nguyen, Vietcombank, Tiger, etc.).

In the near future, such disputes will also place more severe, not only among domestic actors, but also between foreign entities and domestic subjects. The cause of this condition, in addition to the limitations of the law of Vietnam due to the inadequacies of international law, that the TRIPS Agreement does not contain provisions that adjust the domain name on the Internet. This is the most confusing of the WTO the powerful development practices of e-commerce. Thus, the WTO difficult to implement the goals as set out Article 7 of the TRIPS Agreement: "The protection and enforcement of IPRs should contribute to improving the transfer and dissemination of technology, to contribute the overall benefit of creators and users of technological knowledge, social benefit and economic benefit, and create a balance between rights and obligations. "

To overcome the limitations of this provision of the WTO is impossible because Vietnam is just one of many member countries of the WTO. However, there should be a joint circular of the Ministry of Science and Technology and the Ministry of Planning and Investment, the Ministry of Information and Communication in the regulation mechanism of coordination to avoid domain name is identical to a trademark geographical indications and trade names owned by others. This provision should also note that due to the uniqueness of the domain name, while brands can not only because there may be duplicate labels for different goods or services. To do this, requires serious intellectual labor of many experts. 

Google translation for reference purpose only.

 

 


IP rights in Vietnam

  • 1
  • 2
  • 3
  • 4
  • 5
  • 6
  • 7
  • 8
  • 9
  • 10

Top Headlines

  • 1
  • 2
  • 3
  • 4
  • 5
  • 6
  • 7
  • 8
  • 9
  • 10
  • 11
  • 12

Login Form