WHAT IS INDUSTRIAL PROPERTY RIGHTS?

Industrial property right is one of the subjects of intellectual property rights and is governed by the Law on Intellectual Property of Vietnam. So how to understand this kind of right?

WHAT IS INDUSTRIAL PROPERTY RIGHTS?

What is the industrial property?

The term "Industrial Property" is used to refer to the types of property rights to the results of human intellectual creative labor in the fields of industry, business and commerce.

What are industrial property rights?

According to the provisions of Clause 4, Article 4 of the Law on Intellectual Property, Industrial property rights means rights of an organization or individual to inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, trademarks, trade names and geographical indications which such organization or individual created or owns, and the right to prevent unfair competition.

In essence, industrial property rights, like other intellectual property rights, are rights to industrial property subject matters, not rights to products/carriers.

What is the industrial property information?

Industrial property information means information already published in documents of patents, utility solutions, designs of semi-conducting closed circuits, industrial designs, trademarks, and geographical indications. It is information related to the technical and legal status of industrial property rights’s subject matters.

Regarding technical status, for inventions, information about solutions contained in descriptions and illustrations; for an industrial design is information contained in the description and photograph or drawing of that design; for a trademark, it is information contained in the trademark template and the list of products and services bearing the mark.

Regarding the legal status of the protection title, information indicating whether the subject matters of the industrial property right has been granted a protection title, is still valid or has expired, or has been invalidated.

Compare between industrial property rights and copyrights

4.1. The similarity between industrial property rights and copyrights

Industrial property rights and copyright are both intellectual property rights protected by law in accordance with the Law on Intellectual Property.

4.2. The difference between industrial property rights and copyrights

SUBJECT MATTERS OF INDUSTRIAL PROPERTY RIGHTS INCLUDE

Subject matters of industrial property rights include

• Invention: means a technical solution in the form of a product or process which is intended to solve a problem by application of natural laws.
• Industrial design: means the outward appearance of a product embodied in three dimensional configuration, lines, colours or a combination of such elements.
• Design of semi-conducting closed circuits: means a three dimensional disposition of circuit elements and their interconnections in a semi-conducting closed circuit. Semiconductor integrated circuit means a product in its intermediate or final form in which the elements, at least one of which is an active element, and some or all of the interconnections, are integrally formed in or on a piece of semiconductor material and which is intended to perform an electronic function. Integrated circuit is synonymous with IC, chip and micro-electronic circuit.
• Trade secret: means information obtained from activities of financial or intellectual investment, which has not yet been disclosed and which is able to be used in business.
• Trademark: means any sign used to distinguish goods or services of different organizations or individuals.
• Trade name: means the designation of an organization or individual used in business activities in order to distinguish the business entity bearing such trade name from other business entities in the same business sector and area. Business area as stipulated in this clause means the geographical area in which a business entity has its partners, customers or reputation.
• Geographical indication: means the sign used to identify a product as originating from a specific region, locality, territory or country.
• The right to prevent unfair competition: means right will be established on the basis of competitive activities in business.

What is the industrial property representation?

Industrial property representatives shall comprise organizations providing industrial property representation services and individuals practicing industrial property representation within such organizations.

 Industrial property representation services shall comprise:

• Representing organizations or individuals before competent State bodes in the establishment and enforcement of industrial property rights;
• Providing consultancy on issues related to procedures for the establishment and enforcement of industrial property rights;
• Other services related to procedures for the establishment and enforcement of industrial property rights.

LAW ON INDUSTRIAL PROPERTY

International law on industrial property

• Stockholm Convention on the establishment of the World Intellectual Property Organization.
• Paris Convention for the protection of industrial property
• Patent Cooperation Treaty (PCT)
• Budapest Treaty on the international recognition of the deposit of microorganisms for the purpose of patent procedure.
• Strasbourg Agreement concerning the international patents classification.
• Madrid Agreement concerning international registration of trademarks.
• Protocol relating to the Madrid Agreement concerning the international registration of trademarks.
• Trademark Law Treaty.
• Nice Agreement concerning the international classification of goods and services for the purposes of the registration of trademarks.
• Vienna Agreement establishing an international classification of the figurative elements of trademarks.
• Washington Treaty on intellectual property in respect of integrated circuits.
• Lisbon Agreement for the protection of appellations of origin and their international registration.
• Hague Agreement concerning the international registration of industrial designs.
• Locarno Agreement establishing an international classification for industrial designs.
• Agreement on trade-related aspects of intellectual property rights (TRIPS Agreement).
• ASEAN framework agreement on intellectual property cooperation.
• ASEAN-Australia-New Zealand free trade area agreement (intellectual property section).
• Comprehensive and progressive agreement for trans-pacific partnership – CPTPP (intellectual property section).
• Vietnam - US bilateral trade agreement (intellectual property section).
• Vietnam – US agreement on scientific and technological cooperation (intellectual property section).
• Vietnam - Switzerland agreement on intellectual property protection and cooperation in the field of intellectual property.
• Vietnam - Japan economic partnership agreement (intellectual property section).
• Vietnam - Chile free trade agreement (intellectual property section).
• Vietnam - Korea free trade agreement (intellectual property section).
• Vietnam - Eurasian Economic Union free trade agreement (intellectual property section).

Vietnamese law on industrial property:

• Constitution of 2013;
• Law on Intellectual Property 2005, amended and supplemented in 2009 and 2019.
• Decrees and Circulars detailing and guiding the implementation of Law on Intellectual Property.

LIMITATIONS ON INDUSTRIAL PROPERTY RIGHTS

According to the provisions of the Intellectual Property Law, industrial property rights may be restricted by the following factors:

Right of prior use of inventions and industrial designs

Where a person has, before the publication date of an application for registration of an invention or industrial design, used or prepared necessary conditions for use of an invention or industrial design identical with the protected invention or industrial design stated in such application for registration, but created independently (hereinafter referred to as the prior use right holder), then after a protection title is granted, such person shall be entitled to continue using such invention or industrial design within the scope and volume of use or use preparations without having to obtain permission or paying compensation to the owner of the protected invention or industrial design. The exercise of the right of prior users of inventions or industrial designs shall not be deemed an infringement of the right of the owner of the invention or industrial design.

Prior use right holders to inventions or industrial designs must not assign such right to others, except where such right is assigned together with the transfer of a business or production establishment which has used or has prepared to use the invention or industrial design. Prior use right holders must not expand the use scope and volume unless it is so permitted by the owner of the invention or industrial design.

Obligation to pay remuneration to authors of inventions, industrial designs and layout designs

Owners of inventions, industrial designs and layout designs shall be obliged to pay remuneration to the authors of such inventions, industrial designs and layout designs, unless otherwise agreed upon by the parties.

 The minimum level of remuneration payable by an owner to an author shall be regulated as follows:

• 10% of the profit gained by the owner from the use of the invention, industrial design or layout design;
• 15% of the total amount received by the owner in each payment for licensing of the invention, industrial design or layout design.

The obligation to pay remuneration to authors of inventions, industrial designs and layout designs shall exist throughout the term of protection of such invention, industrial design or layout design.

Obligation to use inventions and marks

Owners of inventions shall be obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defence and security, disease prevention, and treatment and nutrition of the people or to meet other social urgent needs. When the needs stipulated in this clause arise but an invention owner fails to perform such obligation, the competent State body may license such invention to others without permission from the invention owner.

Owners of trademarks shall be obliged to use such marks continuously. Where a trademark has not been used for five consecutive years or more, the ownership right to such mark shall be invalidated.

Obligation to authorize the use of principal inventions for the purpose of using dependent inventions

A dependent invention means an invention created based on another invention (hereinafter referred to as the principal invention) and may only be used on condition that the principal invention is also used.

Where the owner of a dependent invention can prove that his or her invention makes an important technical advance as compared with the principal invention and has great economic significance, he or she may request the owner of the principal invention to license such principal invention at a reasonably commercial price and conditions.

Where the owner of a principal invention fails to satisfy the request of the owner of a dependent invention without justifiable reason, the State body concerned may license such invention to the owner of the dependent invention without permission from the owner of the principal invention.

Licensing of inventions pursuant to decisions of competent State bodies

In the following cases, the right to use an invention may be licensed to another organization or individual pursuant to a decision of the competent State body without permission from the holder of the exclusive right to use such invention:

• Where the use of such invention is for public and non-commercial purposes or in service of national defence and security, disease prevention, and treatment and nutrition of people or other urgent needs of society;
• Where the holder of the exclusive right to use such invention fails to fulfil the obligations to use such invention upon the expiration of 04 years as from the date of filing the application for registration of the invention, or the expiration of 03 years as from the date of granting the invention patent;
• Where a person who wishes to use the invention fails to reach an agreement with the holder of the exclusive right to use such invention or on entry into an invention licence contract in spite of efforts made within a reasonable time for negotiating a satisfactory commercial price and conditions;
• Where the holder of the exclusive right to use such invention is deemed to have performed anti-competitive practices prohibited by the law on competition.

The holder of the exclusive right to use an invention may request termination of the use right when the grounds for licensing no longer exist and are unlikely to recur, provided that such termination shall not be prejudicial to the licensee of the invention.

REGISTER THE INDUSTRIAL PROPERTY RIGHTS

When shall the industrial property rights be established?

Industrial property rights shall be established as follows:

(a) Industrial property rights to an invention, industrial design, layout design, trademark shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or the recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member.

In the case of a well known trademark, industrial property rights shall be established on the basis of use and shall not be dependent on registration procedures;

In the case of a geographical indication, industrial property rights shall be established on the basis of a decision of the competent State body to grant a protection title in accordance with the registration procedures stipulated in this Law or an international treaty of which the Socialist Republic of Vietnam is a member.

(b) Industrial property rights to a trade name shall be established on the basis of lawful use thereof;

(c) Industrial property rights to a trade secret shall be established on the basis of lawful acquirement of the trade secret and maintaining confidentiality thereof;

(d) The right to prevent unfair competition shall be established on the basis of competitive activities in business.

The State administrative body for industrial property rights

According to the provisions of Clause 2, Article 11 of the Intellectual Property Law, the Government shall perform the unified state management of intellectual property, in which the Ministry of Science and Technology is responsible to the Government for performing the state management of intellectual property rights.

Dossier to prepare

An industrial property registration application includes the following documents:

• Registration form according to the form;
• Documents, specimens and information showing the industrial property subject matter registered for protection according to regulations corresponding to each industrial property subject matter;
• Power of attorney, if the application is filed through a representative;
• Documents proving the right to register, if the applicant receives that right of another person;
• Documents proving priority right, if there is a claim for priority right;
• Proof of payment of fees.

Industrial property fees

The current collection, collection, payment, management and use of industrial property fees and charges comply with Circular No. 263/2016/TT-BTC dated 14/11/2016 of the Ministry of Finance and Information and Circular No. 31/2020/TT-BTC dated 04/05/2020 of the Ministry of Finance amending and supplementing a number of articles of Circular No. 263/2016/TT-BTC.

TERM OF PROTECTION OF INDUSTRIAL PROPERTY RIGHTS

The term of protection of industrial property rights is specified in Article 93 of the Intellectual Property Law, specifically as follows:

1. Invention Patent is valid from the date of grant and lasts until the end of 20 years from the date of filing.

2. The utility solution patent is valid from the date of grant and lasts until the end of 10 years from the filing date.

3. An industrial design patent is valid from the date of grant and lasts until the end of 5 years from the date of filing the application, renewable for 2 consecutive times, each time for 5 years.

4. A certificate of registered design of semi-conducting closed circuits shall be valid from the grant date until the earliest date among the following:

• The end of 10 years after the filing date;
• The end of 10 years after the date the layout design was first commercially exploited anywhere in the world by a persons with the registration right or his or her licensee;
• The end of 15 years after the date of creation of the layout design.

5. A certificate of registered mark shall be valid from the grant date until the end of 10 years after the filing date and may be renewed for many consecutive terms, each of 10 years.

6. A certificate of registered geographical indication shall have indefinite validity starting from the grant date.

WHAT ARE THE CONSEQUENCES OF INFRINGEMENT OF INDUSTRIAL PROPERTY RIGHTS?

Grounds for determining infringement:

Acts of infringing upon industrial property rights are acts specified in Articles 126, Article 127, Article 129 and Article 130 of the Intellectual Property Law. These acts are considered acts of infringement of industrial property rights when the following grounds are fully satisfied:

• Subjects considered are within the scope of objects being protected by industrial property rights.
• There is infringing elements in the subject under consideration. 
• The person who commits the act being considered is not an industrial property right holder and is not a person permitted by law or a competent authority in accordance with law. 
• The act under consideration occurred in Vietnam. The act under consideration is also considered to have occurred in Vietnam if it occurs on the internet but is aimed at consumers or users in Vietnam.

Competent State body handling industrial property rights infringement

According to the provisions of Article 200 of the Intellectual Property Law, Competent State body handling industrial property rights infringement include:

• Inspectors, Public Security, Market Management, Customs and People's Committees at all levels have the authority to apply measures to handle administrative violations.
• Courts apply civil and criminal measures to handle infringements.
• Customs authorities apply measures to control imported and exported goods related to industrial property under their jurisdiction.

Measures to handle the infringement of industrial property rights

There are 4 measures to handle the infringement of industrial property rights in Vietnam, including:

• Owners of industrial property rights shall take measures to protect their rights by themselves, including: Applying technological measures to prevent acts of infringing upon industrial property rights; requesting organizations and individuals that commit acts of infringing upon industrial property rights to stop the infringing acts, apologize, make public corrections, and compensate for damage.
• Civil measures shall be applied to handle infringing acts at the request of industrial property rights holders or of organizations or individuals suffering damage caused by acts of infringement, even if such acts is being handled by administrative or criminal measures. Procedures for requesting the application of civil measures, competence, order and procedures for application of civil measures shall comply with the provisions of the civil procedure law.
• Administrative measures shall be applied to handle infringing acts in one of the cases specified in Article 211 of the Intellectual Property Law, at the request of industrial property rights holders, of organizations or individuals suffering damage caused by acts of infringement, of organizations or individuals detect infringing acts or proactively detect by competent authorities. The form, level of fine, competence and procedures for sanctioning infringing acts and remedial measures shall comply with the provisions of the Intellectual Property Law and the law on sanctioning of administrative violations in the field of property industry.
• Criminal measures shall be applied to handle infringing acts in cases such acts contain all elements constituting a crime according to the provisions of the Criminal Code. Competence, order and procedures for applying criminal measures comply with the law on criminal procedures.

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