Hanoi,October, date, 20 ......
To : Organizations, Individual
(V/v: Notification letter about infringement of intellectual property rights in VietNam)
NewVison Law Firm Co.,Ltd respectful sent greetings to your company!
After the exchange of information with representative of the company, we knew that the company have imported two products include natural mineral water and bottled drinking water in the Vietnamese market. Under the provisions of Vietnamese current law , the company business this item must satisfy the conditions for Food Hygiene and Safety; published the quality of goods according to technical regulations; using brand label in accordance with legal regulations, non-infringement of industrial property rights (brands, industrial designs, patents ..etc..) which have registered for protection exclusively in the territory in Vietnam of individuals, other businesses.
Below that we will give some important points related to infringement of intellectual property rights ("IPRs") that businesses need to consider while preparing their business plans in the Vietnam territory. The importance of the different points will depend on the circumstances and specific business activities of enterprises.
I. What is an IPRs infringements ?
Initially, we will give some information about What is an IPRs infringements ?
IPRs infringements shall be understood that a patents, trademarks, industrial designs...etc what has been protecting within the territory and the duration of protection, used by other persons without the authorization of the IPRs possessors for the purpose of the business and do not under the exceptions , shall be considered as infringement of IPRs. Other persons, shall be anyone except the IPRs possessors, including individuals and organizations in this country and abroad.
The behavior using these objects which intentionally or unintentionally aim at business (profits) without the permission of owner, power of attorney by the owner or to ratify a license contract, are infringement of IPRs. Moreover, these objects has been protecting within the territory and the duration of protection by NOIP.
In reality, If you want to identify the infringement of IPRs you must based on the specific objects. Eg :
Firstly, if the object should be examine is an invention, Either must to determine whether the invention that have identical or similar to the confuse with another invention which granted patent earlier or determine this invention satisfied the conditions in order to granting patent or not ? This condition also applies to industrial designs.
Secondly, if the objects to examine is trademark (brand), we must assess the infringing elements in both two respects included: a sign used made trademark and the goods/services bearing the trademark. Therefore, a trademark that is considered an infringement of IPRs, may be under one of the two below forms:
- Firstly: Trademarks are registered identical with other marks which has been protected earlier, for the same kind of goods/services.
- Secondly: The trademarks registered protection which similar to confused with other trademarks that has been protected earlier and these marks either must be affixed on identical G/S or two identical trademarks are affixed on the G/S related to each other. In reality, almost infringement of IPRs for brands primarily in form of similar to confuse, therefore it's difficult to identify infringement of IPRs aim at handling or lawsuit.
Because the business field of your company is import bottled water therefore, may encountered some bad cases follows as:
- Trademark has been registered for protection in the country of origin, but this trademark has not been registered for protection in Vietnam or an individual / organization has registered it in Vietnam with NOIP. Therefore, other enterprises using this mark of goods will be deemed to be infringements of IPRs in Vietnam (identical or similar to confuse);
- About industrial design (designed water bottle): An industrial designs may be protected in the country of origin. However, this not mean that it may be protected in the territory of Vietnam. Therefore, enterprises should considered early registration and searching this industrial design in Vietnam which have registered protection or not. Referencing this information, companies should authorized to to the legal service organizations in order to support searching information and giving advice for protection registration.
II. Some examples about infringement of IPRs.
Recently, VINCOM Jsc to take an action against Finance and Estate VINCON Jsc about infringement of IPRs to trademarks and trade names.
Currently, Chief Inspector of the MOST concluded and Decision No. 69 about administrative sanctions for VINCON Jsc.
Nintendo may be lawsuit Mr.Ha Dong Nguyen about infringement of IPRs with Flappy bird app. If they win, Mr Ha Dong Nguyen may be fined up to 6 billion USD for using image of Green pipe in their Mario games.
Royalties for the "green pipes" which are used Flappy Bird of Nintendo is priced to 6 billion USD.
III. Administrative sanctions in the field of IP.
Decree No. 99/2013 / ND-CP has regulations on the infringements, form of sanctions, fines, remedial measures; the procedures requires the handling of violations ; jurisdiction and procedures for resolving requires to handle violations; jurisdiction and execution of decisions to sanction administrative violations in the field of industrial property.
The maximum fine level for individuals is: 250 million VND. For the similar administrative violations, the fine level for organizations double than the level of the individual fines. The maximum fine level for organizations is: 500 million VND.
IV. Intellectual property representative service of NewVision law firm.
Intellectual property has been increasing valuable following as the infringement of intellectual property rights is increasing. This is also a issues need more interested with enterprises. Although these efforts but infringement of intellectual property rights of enterprises are increasing. The question is what to do now? You will calculate the costs and the benefits or bring lawsuit in court?
As a unit have more experience in the field of consulting activities, representative for enterprises to registered of protection for intellectual property rights (trademarks, industrial designs, patents, ....etc), NewVision law firm committed to giving you the service about representatives of industrial property; include:
4.1 Search services, assessing protective ability of trademarks, industrial designs, patents / utility model .....etc
4.2 NewVision law firm consulting for clients about some issues such as:
- Consulting, searching and assess protection registration ability of trademarks, industrial designs, patents ...etc.. conform to the provisions of the Intellectual Property Law ;
- Identify detailed the power of IP rights owners against infringement of IPRs by other owners;
- Consulting the procedures for establishing exclusive rights of the owners;
- According to the authorization of the clients aim at industrial property representative to conduct legal proceedings about the transfer of IPRs
- Consulting & Construct the contents official dispatch to answer feedback of the NOIP about the protective ability of the IP objects;
- Complaining about decision of refusal to grant a protection certification of the NOIP
4.3 Accomplishment the documents and procedures for IPRs registration.
- Accomplishment the document for trademark registration ;
- Representation for enterprise to filing application for trademark registration;
- Representative enterprises monitoring the process and the notification of NOIP;
- Receive results in the NOIP;
- Representative clients complaints decision of the NOIP;
- To extend the validity of a mark registration certification;
- Consultancy about using trademarks, industrial designs ...etc.. in the process of producing and business of enterprises.
4.4 Consulting and representative clients about enforcement of IPRs.
- Consideration and conclusions about the infringement of IPRs in national agencies competent for goods/services.;
- Consulting and request the infringer to stop violations;
- Complaining and coordinating with national agencies aim at handle violations about unfair competition related to Trademarks.
Best regard !
NEWVISION LAW FIRM, LTD.
Intellectual Property Department