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A Glance at Common Intellectual Property Rights and The Conflict or Overlapping Amongst Them

15

JUL

2020

Trademark or brand name

A trademark (aka "brand name" used in marketing language) is one of many forms (subject matters) of intellectual property rights protected by the Vietnamese IP Law. The device of biten apple, three-dimensional mark (bear-shaped gums by Haribo) and Google as below are the registered trademarks

Vietnamese Registration No. 273466

The Vietnamese IP Law defines that a trademark is a sign used to distinguish goods or services on the same kind produced by different organizations and individuals. A mark protectable as a trademark must be visible in the form of letters, words, drawings, images, including three-dimension or a combination thereof embodied in one or more colors[1].

With the exception of a well-known trademark[2], Vietnam only recognizes the exclusive right to use a trademark (trademark) pertaining to a specifically designated goods or service in commerce in favor of an individual or organization only when their trademark has been granted and still valid in Vietnam.

For example: Haribo designated confectionery in class 30 was granted a trademark registration certificate no. 273533 represented by Bross & Partners

Copyright

Copyright, usually identified by the C symbol in the circle ©, is the other form of protection of intellectual property rights. Copyright is not defined directly by the Vietnamese IP Law but only indirectly stated as the right of an organization or individual to a work that it has created or owned.

Directly understood, copyright is the exclusive right to make copies and control 12 types of scientific and artistic works of art such as writing, newspapers, cinema, architecture, software, applied art, etc.,. that are protected by the law for a certain period (usually 50 years after the author's death)

According to the Vietnamese IP law, 12 types of literary artistic scientific works are protected in Vietnam if they meet two conditions: (a) it is created and fixed in a certain material form (fixation), and (b) that work has originality meaning that the protectable work must be created directly by the author using his intellectual labor without copying it from other people's work.

As such, copyright is of exclusive rights, arising from the point of time when the work was created and expressed in a certain material form, regardless of content, quality, form, medium, language, published or unpublished, registered or unregistered. A certificate for registration of copyright, whether granted or pending, like the example below is not a required procedure for entitlement to copyright but only evidence of copyright ownership, helping the right holder to be released from proving that he or she is duly the copyright owner in case of dispute with a third party.

Exclusive rights associated with copyright include (a) moral rights attached to its author that are inalienable, non-transferable such as paternity, attribution, integrity; and (b) 6 types of economic rights, ie. the right of reproduction, distribution, communication, rental, making a derivative work and public performance plus “hermaphrodite’ right of publication[3].

For example: An applied art work called as “the form of expression of Vincafé Café de Nam logo” is granted a copyright registration certificate no. 3497/2016 / QTG represented by Bross & Partners.


Industrial Design


Industrial design (design), a form of protection of intellectual property rights, that may be patentable, is the outer appearance of a product expressed in shapes, lines, colors or combinations thereof. To qualify for protection, such outer appearance embodied in the applied-for design must simultaneously satisfy all three conditions: (a) worldwide novelty, (b) inventive step, and (c) industrial applicability[4].

Ex: The "product packaging" and "bottle" designs are granted patent nos. 26232 and 18591 represented by Bross & Partners

Two-dimensional design

Three-dimensional design

Design patent no. 26232

Design patent No. 18591

Trade Name

A trade name, another subject matter of IP right that is independently protected, without dependence on registration, is the name of an organization or individual used in business activities to distinguish the business entity bearing that name from other business entities in the same field and business area. In other words, a trade name is a name or term used to identify and distinguish one business from another in the same field of business and geographical area of business[5].

Ex: According to the first instance verdict no. 17/2019 / KDTM-ST of May 31, 2019 decided by the Hanoi people’s court, Asea Dong Tien Food Powder Joint Stock Company was forced to remove the "Dong Tien" (Đồng Tiền) element from its business name because of infringement upon the plaintiff’s trade name and trademark “Dong Tien Brand” (Hiệu Đồng Tiền)[6]

Defendant's corporate name containing both the trademark and trade name of Plaintiff

Plaintiff’s registered trademark

http://bross.vn/image/dt4(1).png

A photo of crispy flour product

http://bross.vn/image/dt2.jpg

Registration no. 59681

Class 30: Fried shrimp flour

http://bross.vn/image/dt1.jpg

Registration no. 208482

Class 30: Flour used for food

Patent for Invention, Patent for Utility Solution

Any technical solution belonging to one of three categories: substance, product or process that is capable of solving a specific technical problem by the application of natural laws, even filed in the form of an international patent application (PCT applications) or conventional patent applications, can be patentable for a 20-year term, if it meets three conditions: worldwide novelty, non-obviousness (inventive step), and industrial applicability. Where the inventive step has been not found in the applied-for invention, it can still be protected in the form of a patent for utility solution (equivalent to a utility model, mini patent available in other countries) with a 10-year term of protection[7].

Ex: “A Process for producing sponge iron” was granted patent no. 16955 represented by Bross & Partners

When do the intellectual property rights overlap or conflict with one another?

Conflict or overlapping amongst intellectual property rights may occur during both establishing or enforcing intellectual property rights. Thereby, overlapping of IP rights is the objective phenomenon that comes out when one subject enjoys more than one form of protection granted in favor of the same subject matter. Meanwhile, conflict among IP rights that is objectively arisen is a legal conflict between A - the owner of IP right A1, and B - the owner of IP right B1 wherein A1 and B1 are either the same or similar subject matters and may be entitled to registration under the different form of protection.

If the above mentioned IP rights overlap with one another, that is, the same subject matter but the right holder is protected by many different laws, it will lead to make fail the particular target of each law. For example, Vietnam's industrial design legislation only allows a registered design to be protected for up to 15 years, after which it will be of public domain, but in practice it may continue to be protected in the form of trademark, copyright, making the term of protection of that subject matter becomes too long (more than 50 years after the author’s death for copyright holder) or may also become indefinite in case of trademark (every 10 years the stakeholder renews it). This is a very complex legal issue that is currently causing headaches for legal jurisprudence scholars worldwide.

At the same time, in view of the conflict alone, the legal complexity also arises because the holder of this IP right conflicts with the owner of other IP right. The existence of this phenomenon will surely lead to complex and prolonged legal disputes that can even invalidate the common goal of law as well as can make the IPR enforcement bodies confused.

In summary, the common types of conflict between forms of intellectual property protection may include:

(1) the conflict between a trade name (an enterprise name) and a trademark of Dong Tien as mentioned above;

(2) the conflict between industrial design and copyright in the "Misa bear" dispute[8];

(3) the conflict between trademark and geographical indication in the Tan Trieu pomelo dispute[9];

(4) the conflict between geographical indications and trademark, eg. the conflict between Buon Ma Thuot geographical indication used for coffee bean and the trademark Buon Ma Thuot coffee appropriated in China in 2011[10], or similarly Phu Quoc geographical indications for fish sauce conflicts with Phu Quoc trademarks registered by Viet Huong Company in the US, EU, Malaysia and China[11];

(5) the conflict between Duy Loi hammock industrial design and patent (utility solution) granted in the US;

(6) the conflict between copyright and trademark, for example, Marvel Comics Inc, the copyright owner of the X-Men blockbuster, accused ICP’s registration and use of X-MEN trademark of infringement of its copyright[12]

Conflict between trade name (business names)

containing the term “Dong Tien” (Đồng Tiền) with other’s protected trademark and trade name

http://bross.vn/image/dt4(1).png

http://bross.vn/image/dt2.jpg

Conflict between design and copyright of the “Misa bear” applied art work

Conflict between geographical indication and Tan Trieu (Tân Triều) trademark

Certificate of Registrtion of Geographical Indication No. 00031

Trademark Registration No. 77322

Conflict between trademark and copyright

http://bross.vn/image/5(3).png

Trademark Registrtion No. 63481

http://bross.vn/image/5(14).jpg

(Source: https://comicstore.marvel.com/Astonishing-X-Men-Marvel-Legacy-Primer-Pages/digital-comic/47212)

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.


[1] For more information about trademarks, readers can refer to a number of articles related to trademarks:

  1. Understanding the procedure and time limit for obtaining a trademark (brand name) in Vietnam in only 2 minutes”:

http://bross.vn/newsletter/ip-news-update/Understanding-the-procedure-and-time-limit--for-obtaining-a-trademark-brand-name-in-Vietnam-in-only-2-minutes-1632

  1. Protection of Certification Trademark in Vietnam and New Legal Requirements for Registering Certification Mark You Should Know”:

http://bross.vn/newsletter/ip-news-update/Protection-of-Certification-Trademark-in-Vietnam-and--New-Legal-Requirements-for-Registering-Certification-Mark-You-Should-Know

[2] The exclusive right associated with a well-known trademark can be established without necessarily being registered. Where readers are keen on the topic of famous trademark, please see “a Framework Proposal for the Protection of Well-known Trademark in Vietnam”: http://bross.vn/newsletter/ip-news-update/FRAMEWORK-PROPOSAL--FOR-WELLKNOWN-MARK-PROTECTION

[3] See moreWhat exclusive rights is the holder of copyright entitled to literary artistic and scientific works under the Vietnamese laws?”: http://bross.vn/newsletter/ip-news-update/What-exclusive-rights-is-the-holder-of-copyright-entitled-to--literary-artistic-and-scientific-works-under-the-Vietnamese-laws

[4] Regarding the laws and practices applicable for design in Vietnam, see more:

  1. Guide for application for patent for industrial design in Vietnam”: http://bross.vn/ip-practices/guidance/Guide-for-Application-for-Patent-for-Industrial-Design-in-Vietnam-1043
  2. How to Repond to the NOIP’s Office Action against an applied-for Design in Vietnam due to Lack of Novelty?”: http://bross.vn/newsletter/ip-news-update/How-to-Repond-to-the-NOIP%E2%80%99s-Office-Action-against--an-appliedfor-Design-in-Vietnam-due-to-Lack-of-Novelty

[5] Article 76 of the Vietnamese IP Law. General conditions for trade names to be eligible for protection.

A trade name shall be protected when it is capable of distinguishing the business entity bearing it from

other business entities operating in the same business sector and locality

[6] The details of the lawsuit Bross & Partners victoriously represented the plaintiff can be found at our article “the Hanoi People’s Court to force removal of defendant’s business name containing plaintiff’s 20-year-old trademark and trade name “Brand Dong Tien”: http://bross.vn/newsletter/ip-news-update/The-Hanoi-People8217;s-Court-forced-removal-of-defendant%E2%80%99s-business-name-containing-plaintiff%E2%80%99s-20yearold-trademark-and-trade-name-%E2%80%9CBrand-Dong-Tien%E2%80%9D

[7] View more “Understanding Intellectual Property Law of Vietnam in just 10 minutes”: http://bross.vn/newsletter/ip-news-update/Understanding-Intellectual-Property-Law-of-Vietnam-in-just-10-Minutes

[8] Summary of the case: In 2004, there was a dispute in Vietnam, commonly known as the "Misa bear dispute". According to information from the press, Truong Son Company who holds the patented design of an massage cream box containing the word SUNGAZ issued in 2003 sued Quang Minh Company for using massage cream box in violation of its exclusive rights. Quang Minh counterclaimed that he was granted a copyright registration certificate by the Copyright Office of Vietnam (COV) for the applied art work, ie. form of expression shown on the Misa bear massage cream box. Because both of the industrial design patent and the copyright registration certificate were legally issued, the market management agency cannot handle the case.

[9] The trademark Tan Trieu (Tân Triều) designated for fresh fruits including pomelo (grapefruit) in class 31, and which has been used since 2006, was applied for registration by Tan Trieu Private Enterprise and granted a registration no. 97289. Dong Nai province’s Department of Science and Technology developed a project “building geographical indication for grapefruit Tan Trieu” in 2009. During the negotiation, Que Huong was asked to relinquish its trademark exclusivity but failed. Dong Nai province’s Department of Science and Technology petitioned to cancel registration no. 97289 and the National Office of Intellectual Property of Vietnam (NOIP) accepted and released a decision on cancellation of this trademark, likely reasoning based mainly on a documents reportedly issued by the People's Committee of Dong Nai Province of December 23, 2005, saying that Dong Nai People's Committee did not approve the use and registration of the term Tan Trieu (Tân Triều) as a trademark in favor of Que Huong.

[11] View moreOpposition against trademark Phu Quoc failed in China, famous geographical indication Phu Quoc was fell into the hands of a Hong Kong Company: http://bross.vn/newsletter/ip-news-update/Opposition-against-Trademark-Phu-Quoc-Failed-in-China-Famous-Geographical-Indication-Phu-Quoc-was-fell-into-the-hands-of-a-Hong-Kong-Company-1247

[12] See our comments in the 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

About the Firm

Bross & Partners
Address 21st Floor, Charm Vit Tower, 117 Tran Duy Hung Str., Cau Giay, Hanoi, Vietnam.
Tel 84-24-3555 3466
Fax 84-24-3555 3499
Email vinh@bross.vn
Link www.bross.vn

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