Vietnam | Intellectual Property

A. Brief Introduction of IP Laws and Regulations

        The Law on Intellectual Property (the "Law on IP") came into effect on 1 June 2006 and its amendment thereto became effective on 1 January 2010. Intellectual property rights ('IPR') are territorial in nature and exist for set periods of time. Vietnam became a party to the Geneva Universal Copyright Convention (1952) in 2005, and to the Beme Convention (1886) in 2004, both of which provide for international protection of copyrights. Furthemore,Vietnam committed to full implementation of the TRIPS Agreement upon WTO accession (11 January 2007).

        With respect to industrial property rights, Vietnam is a party to the Paris Convention (since 8 March 1949); the Madrid Agreement (since 25 June 1989); the WIPO Convention (since 14 July 1967); and the Patent CooperationTreaty (since 10 March 1993).

        The National Office for Itelletual Property ("NOIP") applies a " first to fle"  principle to identily individuals or organizations to be granted protection titles. In the case of having two or more applications jointly satisfying all conditions for grant of a protection title and which jointly have the eariest priority or filing date, a protection title may only be granted for the object stated in a single application amongst such applications, in accordance with the agreement of all applications. In the event of absence of an agreement, the grant of a protection title shall be refused for the relevant objects stated in such applications.

a. Copyright

        Unike patents or trademarks, copyight arises automatically upon creation of an original work of auhorship.  Original works of authorship include:

        ·Witten works;

        ·Textbooks and teaching materials;

        ·Motion pictures;

        ·Compositions;

        ·Photographs;

        ·Architectural works;

        ·Sketches, dawngs, diagrams, and maps relaled to topography or scientific works;

        ·Computer programs and compilations of data: and 

        · Translated, adapted, rewritten, transformed, edited, annotated, selected, and anthological works.  

        A copyright owner enjoys various moral and economic (property) rights in relation to the work. Moral rights include the right to be acknowledged as the author of the work and the right to prevent amendment to, or distortion of, the work. Economic rights include the rights of commercial use in particular the exclusive right to reproduce, publish, and broadcast the copyrighted work.

        As copyrights arise automatically upon creation, they need not be registered to exist. However, registration of  an existing copyright with the Copyright Office of Vietnam may be helpful in evidencing ownership/authorship in the event of a dispute.

        Vietnam is a member of the Berne Convention for the Protection of Literary and Artistic Works. Therefore, the work of a foreign natonal will be automatically protected in Vietnam if he/she is a national of a country that is a  member of the Beme Convention, or his/her work has been first published in a Berne member country.

        Despite this, additional registration in Vietnam is recommended in practice. In order to register a work, an author or copynight owner must file an application for registration with the National Copyright Office in Hanoi.  The applicant must submit the form required by the Ministry of Culture, Sports, and Tourism, and provide documentation proving the authorship/ownership of the work, and pay a registration fee.

        Generally,  the moral rights of authors shall be protected for an indefinite term. Particularly, cinematographic  works, photographic works, stage works, applied art works, and anonymous works, shall have a term of protection  of 75 years from the date of first publication. If such works have not been published within 25 years from the date of formulation, the term of protection shall be 100 years calculated from the date of formulation. Other works shall  be protected for the whole life of the author and for 50 years after his/her death.

        The rate of royalties, remuneration, and other material benefits, and their method of payment, shall be as agreed by the relevant parties, but if agreement cannot be reached, these matters shall be implemented in accordance with government regulations, or court proceedings may be instituted in accordance with the law.

b. Related Rights

        Organizations and individuals eligible for protection of related rights include:

        ·Actors and actresses, singers, instrumentalists, dancers, and other persons who perform literary and artistic works;

        ·Organizations and individuals that use their time and make a financial investment in, or use their materialand technical facilities to give a performance. These shall be the owners of such performance unless otherwise agreed with the parties concemed; 

       ·Organizations and individuals that use their time and make a financial investment in, or use theirand technical facilities to produce audio and visual fixation;

      ·These shall be the owners of such audio and visual fixation unless otherwise agreed by the parties concerned;

        ·Broadcasting organizations shall be the owners of their broadcasts unless otherwise agreed with the parties concerned;

        ·Organizations and individuals that fix. for the first time, the sounds and images of performances or other sounds and images;and

       ·Organizations that initiate and carry out broadcasting.

        The related rights protection in Vietnam is granted in respect of live performances, audio recordings, visual  broadcasts, and  programs.

        The related rights to be protected also include moral rights and property rights with respect to the work. Ingeneral, the duration of protection of related rights is 50 years.

        Any individual or organization that directly or indirectly uses a published audio and visual fixation during  ness or commercial activities shall not be required to seek permission, but must pay royalties or remuneration  to the author, copyright holder, performer, or producer of the audio and visual fixation, and to the broadenorganization as from the date of use provided that they must neither affect the normal use of performances, audio  and visual fixation or broadcasts nor cause prejudice to the rights of performers, producers of audio and visualfixation or broadcasting organizations.  

        There are also cases where organizations and individuals may exercise the related rights without any  permissions of or payments to performers, producers of audio and visual fixation or to broadcasting organizations,including:

       ·Making one copy of a work for personal scientific research purpose;

       ·Making one copy of a work for teaching purposes, except for performances, audio and visual fixation or  podcasts which have been published for teaching purposes,;

      ·Reasonable quoting from a work in order to provide information;

      ·Making of provisional copies of a work by a broadcasting organization for broadcasting purposes when suchorganization has the broadcasting right; and

      ·The law requires that they must neither affect the normal use of performances, audio and visual fixation or  broadcasts nor cause prejudice to the rights of performers, producers of audio and visual fixation or broadcasting  organizations.

      Both copyright and related rights are administered by the Copyright Office of Vietnam.

B. Patent Application

        A patent is a right granted to an inventor in respect of inventions, both products and processes, that arainvolve an inventive step, and are capable of industrial application might be the object of the protection (an  invention patent).

        An application for patent registration has to be filed with the NOIP, Invention patents are protected for 20 yearsfrom the filing date, Utility solution patent registrations last for 10 years from the filing date.

        An invention patent grants the owner, for a certain period of time, the exclusive right of the invention patersand at the same time prevents others from making commercial use of the invention. In addition to such invention  patent, Vietnam also provides"utility solution patents, which provide a similar type of protection but are subject toless stringent patentability requirements.

        The following are not patentable in Vietnam:

       ·Scientific discoveries or theories, and mathematical methods:

       ·Schemes, plans, rules, and methods for performing mental acts, training domestic animals, playing gamesand doing business;

       ·Solutions of aesthetical characteristics only;

       ·Plant varieties and animal breeds;

       ·Processes of plant or animal production that are principally of a biological nature other than microbiological ones; and

       ·Human and animal disease prevention, and diagnostic and treatment methods.

C. Trademark Registration

        A trademark is a sign in the form of an image, a name, a word, letters, figures, or a combination of these  elements to distinguish the goods or services of one company from those of others. Trademarks registration are  registered in relation to particular goods or services.

        A trademark registration has to be filed with the NOIP. A trademark protection title is protected for 10 years  from the filing date and may be renewed for many consecutive terms, each of 10 years. Foreigners are entitled (and  recommended) to register their trademarks in Vietnam, even if they have registered them internationally already  Foreigners must file applications for trademark registration through a local IP agent.  

        The Intemational Classification of Goods and Services, which has been adopted in Vietnam, sets out 45  asses of goods and services. Multi-class applications are accepted in Vietnam. Trademarks ca  online on the homepage of the NOIP. The English search option is also available: however, the English system  does not work well as compared to the Vietnamese version.

        Trademarks are protected for 10 years from the date of receipt of the application, and may be indefintely  renewed. Well-known marks (trademarks that are used continuously for prestigious products or services so that they are widely known) are protected indefinitely.

        Trademarks are excluded from registration where they are:

        ·Indistinctive;

       ·Comprised of simple shapes and geometric figures, numerals, letters, or scripts of uncommon languages  unless widely used and recognized as a trademark; and  

       ·Signs or symbols, pictures, or common names in any language that have been widely and regularly  designate the goods or services in question;

       ·Identical or confusingly similar to a registered mark, a famous mark, or a mark that is the subject of a prior  application:

       ·Likely to mislead, cause confusion, or deceive consumers as to the origin, properties;

       ·Utilities,quality, value, or other characteristics of the goods or services;

       ·Identical to, or not substantially different from, a registered industrial design;

       ·dentical to, or confusingly similar to, a state flag or emblem; 

       · Identical to, or contusinoly similar to, real names, aliases, pseudonyms, or images of leaders, national heroes, or famous personalities of Vietnam or foreign countries;

       ·Indicating time, quantity, quality, and characteristic of goods or service Describing the logal status and business field of business entities: or Indications of the geographical origin of the goods or services;

       ·Describing the legal status and business field of business entities; or

       ·Indications of the geographical origin of the goods or services.

D. Measures for IP Protection

a. Administrative Protection

        Administrative action is generally the most promising way of enforcement. The main competent authonties  to conduct administrative enforcement are the Economic Police. the Investigating Police Agency, the Market  Surveillance Agency, the Inspectorate of Science and Technology, the Inspectorate of Culture, Sports, and  Tourism, and the People s Committees at provincial and district levels.

         Any individual or organization committing an act of infringement of IPR shall be compelled to terminate such  ct and be subject to one of the principal penalties.

       ·A caution; or

       ·A monetary fine.

        In addition, depending on the nature and the seriousness of the infringement, the individual or organization  may also be subject to additional penalties of:

       ·Confiscation of IP counterfeit goods, raw materials, and materials and facilities used mainly for production or  trading of such IP counterfeit goods; and

       ·Suspension of business activities for a fixed period in the sector in which the infringement was committed.

        In case there is a risk that infringement acts may cause serious damages to consumers or the public; or  there is a risk that infringing articles may be dispersed or destroyed by infringers; or to ensure the enactment of  administrative sanctions, IPR holders may request competent state enforcement authorities other than the Court  to apply administrative preventive measures. These administrative preventive measures are quite similar to  injunction/provisional measures applied by the Court.

b. Customs Intervention  

        Customs intervention at Vietnam's borders can include provisional suspension of customs procedures for  imported or exported goods suspected of infringing IPR. The duration of suspension shall be 10 working days from  the date the applicant for such suspension receives a notice from the customs authority about the suspension  decision. The duration of suspension may be extended, but shall not exceed 20 working days in total, where  legitimate reasons and another security are provided by the rights holder.

        For requesting the competent Customs Office to apply border measures, the applicant shall  :

       ·Prove that the applicant is the IPR holder;

       ·Provide full information to determine/discover the import-export articles allegedly infringing IPR;  

       ·Submit an application for requesting application of border measures and pay official fees prescribed by law; and

       ·Compensate for damages caused by applying border measures. To secure the payment, IPR holders shall  be requested to(i) pay a deposit amounting to 20 percent of the value of the articles being subject of the request  at least VND 20 million (equivalent to USD 1,000)if it is impossible to determine the value of the articles beingsubject of the request or (ii) provide a bank guarantee.

         In case of detecting the infringement of IPR, the following remedies may be applicable: 

       ·Administrative remedies are generally applicable to the counterfeiting goods detected at the borders; and  

       ·Compulsory re-exportation is applicable to the counterfeiting goods where such goods are eliminated from the infringement.

c. Civil Enforcement  

        There are two distinctive limitation periods in cases related to IPR. with respect to disputes on civil  d is two years from the date when the disputes or infringement too  place, without prior administrative action. With respect to disputes in order to identify the owner of IPR, there is no  limitation period ( e, the plaintiff may submit a petition to the relevant civil court at any time to commence a civil  court proceeding). The court must notify all parties of the filing and contents of a petition. The parties then have 15  ect of the petition and enclose supporting documents.

        The burden of proof is on the plaintiff, while the court may cary out investigation to col ct widen o  hearing will be scheduled within three to four months (o  scheduling may be delayed, and it can take up to one year before the first hearing takes place. In such first hearing. condilationis a compulsony procoss.

        In the context of cil action, a prelin  minary injunction can be a useful instrumentof enforcementoflPr.in  orim  partula when here is ik that the nfinger wll dstoy evidence, or iroparable damage is being Causedvby the infringement. 

        A request for a preliminany injunction can only be madeupon. or after, the filing of apettotnitalia  chil Court caso. the request for a pelmian njuncton is made in due form (with evidence, jstfable reasonsfor grant of a pelimin inunctionand, frequired,abond) hejudgeustisueadecisionwithin4Bhoursd  subission of the request I he decides not to grant the peliminian niuictinhemustoteplalnffinwritin  within the above timeframe, gving reasons for his decision. The party sekingthe njunctionisliableforandamage caused by a wronglully granted injunction.

        Addionally the paintf may request the court to apply njunctinprorisional measures that include:

        ·Seizing;

       ·Enumerating;

       ·Sealing; forbidding of changing the status quo, ban of moving; and

       ·Forbidding the transfer of the ownership of rights.

        On the other hand, other injunction measures stipulated by the Code on Cil Procedure also may be appiedby the court at request of the plaintif when necessary and for the purpose of avoiding the dispersaloftheintfinging products by the defendantifinger. in particular, one or a combination of the ollowing formsof njunctionmeasures may bo taken:

        ·Blockading of accounts or assets; and

        ·Forbidding the defendantinfringer from conducting a certain action or forcing the defendantinfringertoconducta certain action.

        To request the application of the provisional moasures, an IPR holder shall be requested to 0 pay a depostto the bank where the Court is located or provide a bank guarantoo with an amount equivalent to the damagescaused by the provisional measures.

d. Criminal Enforcement

        From the dateof 1 July 2016 when the new Criminal Code takes ffect, any individual or organzation whocommits an act of infringement of IPR involving a criminal element shall be criminally prosecuted in accordancewith the Criminal Code.

        One of the ollowing criminal penalbes may be imposed on an individual IPR infringer:

       ·Monetary fine (the maximumisof VND1illion; equivalent to USD 50,000);

       ·Non-detained ro education for up to three years; or

       ·Imprisonment for a period of six months to three years.

        Besides his, the ndhidual IPR nfringer may be subiected to the flowing dditional sanctions:

       ·Monetary fne (the maximumis of VND 200 mllini equivalent 10 USD 10,000);

       ·Prohibition from holding an ffcfal position or conducting a business within a Certain perid of one to five years.

        One of the following ciminl pnaltes maybe mposed 0 an rganizatioal IPR infringer: 

       ·Monetay fne (the maximumis of VND 5 blioni equivalentol  USD 250,000); and 

       ·Suspension o operation for a perio  Somon  dof six months to two years.  

       Besides this, the organizational  IPR infringer may be subjected to the following  additional sanctions:  

       ·Monetary fine (the maximum is of VND 500 million; equivalent to USD 25,000); and  

       ·Pohibition fiom operating in a number of specific businesses or capital mobilization within a certain period  of one to three years.