1. Application of domestic legal documents in Vietnam
1.1. In case of inconsistency between Vietnam IP Law’s provisions on IP and relevant provisions of other laws, the Intellectual Property Law’s provisions prevail.
Before deciding on the application of Vietnam IP Law’s provisions or other legal documents in Vietnam, it is necessary to review separately legal documents containing provisions on IP (including the 2005 Civil Code), and compare the IP provisions of these legal documents with relevant provisions of Vietnam IP Law in order to identify inconsistencies between them.
Example 1: Clause 3, Article 738 of the 2005 Civil Code specifies economic rights under copyright, including:
a) Reproduction of works;
b) Authorized making of derivative works;
c) Distribution or import of original works and copies thereof;
d) Communication of works to the public;
e) Lease of original computer programs or copies thereof.
Clause 1, Article 20 of Vietnam IP Law provides for six economic rights. Compared to Clause 1, Article 20 of Vietnam IP Law, Clause 3, Article 738 of the 2005 Civil Code provides differently for the right to display works to the public or lease original cinematographic works or copies thereof. Therefore, the provisions of Point b or f, Clause 1, Article 20 of Vietnam IP Law should be applied to the settlement of disputes over these rights.
Example 2: Vietnam Customs Law stipulates the temporary postponement of customs procedures for imports or exports requiring the protection of IPR in Articles 57, 58 and 59. Meanwhile, Vietnam IP Law stipulates the control of imports and exports related to IP in Articles 216 thru 219. As a result, if Vietnam IP Law’s provisions on control of imports and exports related to IP are affirmed to be different from relevant provisions of the Customs Law, the provisions of Vietnam IP Law prevail.
1.2. For civil matters related to IP which are not governed by Vietnam IP Law, the relevant provisions of the Vietnam 2005 Civil Code will apply.
Upon application of law to the settlement of disputes over IPR, the provisions of Vietnam IP Law and the 2005 Civil Code (Part Six on IPR and Technology Transfer, from Article 736 to Article 753) must be based on to ascertain whether or not the subject matters of those disputes are specified in Vietnam IP Law or the 2005 Civil Code. If there are grounds to affirm that these subject matters are not specified in Vietnam IP Law but are specified in the 2005 Civil Code, the relevant provisions of the 2005 Civil Code will apply.
For example: Under Article 40 of Vietnam IP Law, organizations and individuals that inherit the copyright according to the provisions of law on inheritance will be holders of the rights specified in Article 20 and Clause 3, Article 19 of the Law. Because Vietnam IP Law does not specifically stipulate the inheritance of copyright, the provisions of the 2005 Civil Code’s Part Four on Inheritance must be applied to the settlement of disputes over copyright inheritance.
2. Application of International Treaties
If a treaty to which the Socialist Republic of Vietnam is a contracting party contains provisions different from those of the Intellectual Property Law, provisions of that treaty prevail.
2.1. A treaty to which the Socialist Republic of Vietnam has signed or acceded means a written agreement concluded or acceded to in the name of the State or the Government of the Socialist Republic of Vietnam with one or more than one nation, international organization or other entities of international law, irrespective of its title: treaty, convention, agreement, pact, accord, protocol, memorandum of understanding, diplomatic note or a document otherwise titled (Clause 1, Article 2 of the Law on Conclusion, Accession and Implementation of Treaties).
2.2. Treaties include:
a/ Multilateral treaties
– The 1971 Berne Convention for the Protection of Literary and Artistic Works.
– The 1883 Paris Convention for the Protection of Industrial Property (revised in 1979).
– The 1891 Madrid Agreement Concerning the International Registration of Marks and the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
b/ Bilateral treaties
– The 2001 Vietnam-US Bilateral Trade Agreement.
– The 2000 Vietnam-Switzerland Agreement for the Protection of Intellectual Property Rights.
c/ Multilateral or bilateral treaties might be those established exclusively for the protection of intellectual property or those concerning different domains, including protection of intellectual property.
– The 1971 Berne Convention is a multilateral treaty established exclusively for the protection of literary and artistic works.
– The Vietnam-US Bilateral Trade Agreement is a treaty concerning different domains, including provisions on intellectual property protection (Chapter I: Trade in Goods, Chapter II: Intellectual Property Rights, and Chapter III: Trade in Services).
2.3. Conditions on application of International Treaties in Vietnam
a) Treaties on IP to which the Socialist Republic of Vietnam is a contracting party are in force when acts or events being subject matters of disputes occur.
b) Provisions of these treaties on IP are different from those of Vietnam’s legal documents on the same matter.
For example: Regarding the copyright protection duration, there is an inconsistency between Article 27 of Vietnam IP Law and Clause 4, Article 4 of the Vietnam-US Bilateral Trade Agreement. In this case, the provisions of the Vietnam-US Bilateral Trade Agreement must be applied to settling copyright disputes between Vietnamese and US organizations and individuals.
c) In case a Vietnamese legal document contains provisions similar to those of a treaty on the same matter, Vietnamese legal provisions will apply.
d) In case an IP-related matter is not governed by Vietnamese law, relevant provisions of a treaty concerning this matter will apply.
e) In case of a dispute over IPR involving individuals or organizations of a foreign country which, together with the Socialist Republic of Vietnam, is a contracting party of treaties, the treaty with the latest date of entry into force will apply, unless otherwise jointly provided for or agreed by this country and the Socialist Republic of Vietnam.
Clause 3, Article 1, Chapter II (Intellectual Property Rights) of the Vietnam-US Trade Agreement stipulates:
“To provide adequate and effective protection and enforcement of intellectual property rights, each Party shall, at a minimum, give effect to this Chapter and the substantive economic provisions of:
A. the Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their Phonograms, 1971;
B. the Berne Convention for the Protection of Literary and Artistic Works, 1971;
C. the Paris Convention for the Protection of Industrial Property, 1967;
E. the Convention Relating to the Distribution of Program-Carrying Signals Transmitted by Satellite (1974).”
Therefore, relevant provisions of both the Vietnam-US Trade Agreement and the Berne Convention must be applied to settling copyright disputes involving US individuals and organizations.
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