Case Study 23: A court case concerning well-known trademark “X-Men” between Marvel Characters Inc. and the Vietnamese applicant

A recent court case has attracted significant public attention in Vietnam: Marvel Characters Inc., USA v. the National Office of Intellectual Property over registration of the trademark “X-MEN & device” in the name of ICP, a Vietnamese company. Although it’s no surprise that the NOIP won against Marvel, this case may still be considered as important in the development of the IP protection system in Vietnam and showed the need for improving professional capabilities of Vietnamese judges in this new and specialized legal field....

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Guidance on Franchise Registration in Vietnam

Conditions applicable to franchisors   A business entity may grant a franchise when the business entity satisfies all of conditions as stipulated by Vietnamese laws, particularly: (i) business system to be franchised has been operating for at least 01 year[1], (ii) business entity has registered the franchising activity with the competent body in accrdance with Vietnamese laws, and (iii) goods and services are eligible for franchising. It is further noted that, an enterprise may only conduct business in goods and services on the list of goods and services in which business is restricted or subject to conditions after such business entity has been...

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News in Circular No. 16/2016/TT-BKHCN News in Circular No. 16/2016/TT-BKHCN of June 30, 2016

Circular No. 16/2016/TT-BKHCN amending and supplementing a number of articles of Circular No. 01/2007/TT-BKHCN dated February 14, 2007, guiding the implementation of Decree No. 103/2006/ND-CP dated September 22, 2006 of the Government detailing and guiding the implementation of some of the articles of the Intellectual Property Law on Industrial Property, which was amended and supplemented by Circular No. 13/2010/TT-BKHCN of 30 July 2010, Circular No. 18/2011/TT-BKHCN dated July 22, 2011 and Circular No. 05/2013/TT-BKHCN dated February 20, 2013 consists of 3 Articles containing 49 points providing amendment and supplement of some provisions creating favorable conditions for the applicants in relation...

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Copyright infringement assessment

For copyright infringement matters in Vietnam, the copyright owners may obtain assessment through Expertise Center of Copyright, Related Rights(“ECCR”) which was established in 2016, under Ministry of Culture, Sports and Tourism. We note, however, that as the ECCR has just come into operation, the ECCR’s officials always require to check all documents to be assessed before accepting to receive them for assessment purpose. Under the laws, the following documents are required for copyright infringement assessment: a) The written request for the assessment, including: - The name and address of the individual or organization that requests the assessment; - The ID number or the number of...

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Preventing trade name infringement in Vietnam

Trade name is one category of intellectual property rights, which is codified and recognized under Vietnam Intellectual Property Law 2005, revised in 2009 (“Vietnam IP Law”). Per Article 3.2 of Vietnam IP Law, objects of industrial property rights include inventions, industrial designs, layout-designs of semi-conductor integrated circuits, business secrets, trademarks, trade names and geographical indications. A trade name is often a name for a company. Thus, one of the most critical steps in setting up a new business is finding a name for the company. In this sense, under Article 4.21 of Vietnam IP Law, Trade name is a designation...

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Statistics on IP assessment cases during 2009-2018 in Vietnam

Number of IP assessment cases in Vietnam Year Assessment subjects Total Invention Industrial Design Trademark Geographical Indication 9-12.2009 26 (3) 59 (5) 107 (14) - 192 (22) 2010 24 (2) 52 (6) 258 (19) - 334 (27) 2011 11 (1) 81 (3) 305 (40) - 397 (44) 2012 2 (0) 83 (5) 376 (45) - 461 (50) 2013 22 (0) 46 (2) 388 (51) - 456 (53) 2014 11 (1) 84 (5) 477 (54) 1 573 (60) 2015 13 (0) 99 (9) 600 (59) 1 (1) 713 (69) 2016 21 (1) 117 (18) 565 (56) - 703 (75) 2017 30 (3) 147 (22) 632 (99) 1 (1) 810 (125) 2018 28 (2) 111 (3) 670 (90) - 809 (95) Tổng 188 (13) 879 (78) 4.378 (527) 3 (2) 5.448 (620)  Source: Vietnam Intellectual Property Research Institute, 2018. Remark: The number placed within the bracket is the number of IP assessment cases called by the competent enforcement authorities Number of IP assessment cases called by Vietnamese enforcement authorities No. Enforcement authorities Assessment subjects Total Invention Industrial Design Trademark Geographical Indication 1 Court 5 0 1 - 6 2 People’s Committee - - - - - 3 Customs - - 41 - 41 4 Inspectorate/Department of Science & Technology 5 4 35 1 45 5 Market...

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Providing expert opinions / expert witness in support of IPR enforcement in Vietnam

Statistics on expert opinions / expert witness provided by the IP Office of Vietnam in support of IPR enforcement in the period of 01/6/2006 to 31/12/2016   (number of expert opinions / expert witness) Year Invention Utility Solution Trademark Industrial Design Unfair competition Geographical Indication Total 2006 20 0 84 60 0 0 164 2007 1 0 53 92 0 2 148 2008 5 0 84 244 5 0 338 2009 7 0 82 99 0 0 188 2010 3 1 89 90 0 0 183 2011 1 0 105 45 0 0 151 2012 3 0 82 27 0 0 112 2013 2 1 115 8 0 0 126 2014 6 2 101 4 0 0 113 2015 5 1 158 10 0 0 174 2016 4 2 146 9 0 0 161 Total 57 7 1.099 688 5 2 1.858 Source: The IP Office of Vietnam Readmore:  Statistics on industrial property establishement activities in Vietnam Statistics on IP assessment cases during 2009-2018 in Vietnam Statistics on IPR infringment cases handled in Vietnam    ...

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Statistics on IPR infringment cases handled in Vietnam

Numbers of IPR infringement cases handled by administrative enforcement authorities in Vietnam during 2012-2015 Enforcement body 2012 2013 2014 2012-2015 Inspectorates of Science & Technology   69 cases (38 cases handled by Inspectorate of Ministry of Science & Technology) 142 cases 113 cases (64 cases handled by  Inspectorate of Ministry of Science & Technology) 473 cases Market Management Agencies* 9.556 cases (counterfeit, poor quality goods, IPR infringement goods) 13.037 cases (counterfeit, poor quality goods, IPR infringement goods) 17.396 cases (counterfeit, poor quality goods, IPR infringement goods) 22.441 (counterfeit, IPR infringement goods) Customs authorities 101 cases (the whole customs authorities) No report 24 cases (handled by Department of Investigation and Anti-smuggling) No report Source: Inspectorate of Ministry of Science & Technology  Number of IPR...

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