Conditions on institution of a civil lawsuit over industrial property rights in Vietnam:
2.1. Industrial property rights have been established on the grounds specified in Clause 3, Article 6 of Vietnam IP Law and Article 6 of the Government’s Decree No. 103/2006/ND-CP of September 22, 2006, detailing and guiding the implementation of a number of articles of the 2005 Vietnam IP Law on industrial property (below referred to as Decree No. 103/2006/ND-CP for short).
It is necessary to clearly identify industrial property object(s) (invention, industrial design, layout design or mark) being the subject matter of the dispute in order to determine the grounds for the establishment of industrial property rights to such object(s) because grounds for the establishment of industrial property rights to an industrial property object are not the same in any circumstances and the registration procedure is required in some cases but not in other cases. For example, industrial property rights to a mark are established under a decision of the National Office of Intellectual Property (under the Ministry of Science and Technology) on the grant of a Protection Title under the registration procedure specified in the Intellectual Property Law and other relevant legal documents, or on the recognition of an international registration under a treaty to which the Socialist Republic of Vietnam is a contracting party. Particularly, industrial property rights to a well known mark can be established on the basis of the wide and practical use of that mark and the criteria specified in Article 75 of Vietnam IP Law without having to pass the registration procedure.
For a dispute over industrial property rights to an industrial property object and it is necessary to ascertain whether or not these industrial property rights have been lawfully established, the following grounds must be based on:
a) The protection title granted by the National Office of Intellectual Property (under the Ministry of Science and Technology) to the party filing the registration application for an invention, layout design, industrial design, mark (other than well known marks) or geographical indication. For internationally registered marks under the Madrid Agreement and the Madrid Protocol, decisions of state management agencies on recognition of these marks must be based on.
b) Protection conditions for industrial property objects being well known marks, trade names, business secrets or the right to suppression of unfair competition specified in Sections 4, 5 and 7, Chapter VII of the Intellectual Property Law.
2.2. The duration of protection of industrial property rights has not expired under the law on intellectual property.
a) a/ For industrial property rights which have been established for inventions, industrial designs, layout designs, marks and geographical indications, protection titles granted to each type of industrial property objects must be based on to determine the scope of protection, which is stated in these protection titles.
For example: The scope of protection of an invention should be determined based on the invention patent granted by the National Office of Intellectual Property (the Ministry of Science and Technology).
b) For industrial property rights established for trade names and business secrets, the scope of rights shall be determined under Clauses 2 and 3, Article 16 of Decree No. 103/2006/ND-CP.
c) The duration of protection of industrial property rights shall be determined according to the validity duration of protection titles specified in Article 93 of the Intellectual Property Law. In case of expiration of the validity duration or invalidation of a protection title for an industrial property object, industrial property rights to this object also terminate.
If the protection duration expires or an industrial property rights protection title expires or is invalidated, rights of the industrial property rights holder will no longer be protected by the State and the law. Courts shall therefore accept lawsuit petitions for handling only if the infringement is committed when the protection title is still valid or the industrial property object is still in the protection duration.
Question & Answer for Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of April 3, 2008, Guiding the Application of a Number of Legal Provisions to the Settlement of Disputes over intellectual Property Rights at People’s Courts
Question 1: Disputes over intellectual property rights which fall under the handling competence of people’s courts in Vietnam
- Which copyright disputes in Vietnam can be settled by the Vietnamese Courts?
- Which related right disputes in Vietnam can be settled by the Vietnamese Courts?
- Which industrial property right disputes in Vietnam can be settled by the Vietnamese Courts?
Question 2: Right to institute civil lawsuits on IPR in Vietnam
- Could you tell us who has right to institute civil lawsuits over copyright or related rights in Vietnam?
- Could you tell us who has right to institute civil lawsuits over industrial property rights in Vietnam?
Question 3: Conditions on institution of civil lawsuits over intellectual property rights in Vietnam
- Could you tell us conditions on institution of a civil lawsuit over copyright or related rights in Vietnam?
- Could you tell us conditions on institution of a civil lawsuit over industrial property rights in Vietnam?
Question 4: Application of law: IP Law of Vietnam or other Laws?
- What law shall be applied if there is a difference between Vietnam IP Law and other laws?
- Application of domestic legal documents in Vietnam
- Application of International Treaties
Question 6: Intellectual property assessment in Vietnam – Vietnam Intellectual property assessment
- How can the concerned parties in a civil proceedings request Intellectual property assessment in Vietnam?
Question 7: Claims for compensations for damage upon infringing Intellectual Property Rights in Vietnam
- If we file a civil lawsuit in Vietnam concerning IPR infringement, how can we request the Vietnamese Court to award a compensatory damage?
- How can the Vietnamese Courts determine the losses in business opportunities in an IPR related lawsuit?
Question 8: Bases for determination of compensations to be paid for damage caused by infringements of IPRs in Vietnam
- How can the Vietnamese courts determine the compensable damages caused by IPR infringement in Vietnam?
- How can the Vietnamese Court determine the spiritual damage that the infringer must indemnify the IPR holder in an IPR related lawsuit?
Question 9: Provisional urgent measures in Vietnam
- Who has rights to request provisional urgent measures (injunctive relief) under civil measure in Vietnam?
- What injunctive relief (provisional urgent measures) can be applied under civil measure in Vietnam?
- Whether the requester of provisional urgent measure in Vietnam has to deposit a security?
Question 10: The right and burden of proof of involved parties in a civil proceedings in Vietnam
Question 11: Court rulings on application of civil remedies in Vietnam (Article 202 of Vietnam Intellectual Property Law)
Question 12: Coordination in settling IPR disputes