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Industrial Design Or Copyright Protection, Which You May Be Unaware Of?

Vietnamese

Background

In a recent court decision, a High People’s Court affirmed the decision made by a lower-level court, in INTERLEGO AG v. Tianjin COKO Toy Co., Ltd. regarding copyright infringement of the Lego bricks. In its landmark decision, the high court confirmed industrial designs’ dual protection under patent and copyright law as works of applied art.

INTERLEGO AG, a Swiss company, is a subsidiary of the Lego Company, a Danish toy behemoth best known for its interlocking brick toys. Lego toys were first imported to this country in 1992. INTERLEGO discovered that  Tianjin COKO Toy Co., Ltd, was using interlocking bricks that were very similar to Lego bricks in a range of children’s play sets. INTERLEGO filed a lawsuit against COKO for copyright infringement based on evidence obtained from a large department store in a city of this country.

The trial court confirmed that as a signatory to the Bern Convention for the Protection of Literary and Artistic Works, the country was obligated to protect works of literature and art created by convention signatory states. Additionally, this country’s Regulation on Implementing International Copyright Convention provides for the protection of foreign works of applied art in its country for a period of 25 years from the date the works were created within the members of the Bern Convention.

The trial court determined that 50 of the plaintiff’s 53 Lego bricks qualified as works of applied arts. According to the court, industrial designs must meet the following requirements in order to qualify as works of applied art:

(i) applicability in practice;

(ii) artistic quality;

(iii) uniqueness; and

(iv) reproducibility.

The trial court determined that 33 of the 50 Lego bricks were infringed, based on the fact that COKO’s products were substantially similar to Lego’s. However, the remaining 17 pieces of the Lego bricks were not infringed because the COKO’s and the Lego’s bore little resemblance. Additionally, the 17 pieces are ineligible for copyright protection due to the low level of originality and the parties’ conflicting interests. The court ordered COKO to cease manufacturing and selling the infringing products, publish an apology in a local newspaper, and pay INTERLEGO approximately $6,000 in damages.

COKO and INTERLEGO objected to the trial court’s decision and filed an appeal with the appellate court. COKO contended that the Lego bricks were not works of applied arts and thus could not be protected under this country’s copyright law. Industrial designs, in practice, should be protected by patent law. There is no evidence in this country’s judicial history that industrial designs can enjoy “dual protection” under the copyright and patent laws. INTERLEGO had filed for patents on the Lego bricks. As a result, they are not protected by copyright law. INTERLEGO argued that the three Lego bricks that were not recognized as works of applied art by the trial court were qualified and thus should be protected. INTERLEGO contended that the trial court erred in concluding that the 17 Lego bricks were not infringed on the grounds that their level of originality is insufficient to warrant copyright protection in light of the “balance of interests.”

The High People’s Court, the appellate court, upheld the trial court’s decision. Concerning the issue of “dual protection,” the High People’s Court concludes that there is no evidence that this country’s law prohibits providing dual protection for foreigners’ works of applied art under both the copyright and patent laws. Although patent applications have been filed for the Lego bricks, they are entitled to concurrent and continuous copyright protection.

Key takeaways

A design can be protected under either/both regimes, i.e. copyright regime and design regime as long as it meets requirements of protection thereof. An IPR holder always wishes to obtain the widest scope of protection for their design to fight against any infringement.

Vietnam’s intellectual property law does not preclude a design from being protected under both industrial design and copyright. Thus, in addition to registering an industrial design with the Vietnam Intellectual Property Office (“IP Vietnam”), you should consider registering your design as an applied-art work with the Vietnam Copyright Office (“COV”). You can find out more about the advantages of registering a work in Vietnam’s copyright regime by visiting the following link: https://kenfoxlaw.com/6-benefits-of-registering-a-work-for-copyright-protection-in-vietnam-why-should-a-work-be-registered-with-copyright-office-of-vietnam.

A Copyright Registration Certificate issued by COV may aid the design owner in enforcing against an alleged infringement in Vietnam if the infringement is detected while the industrial design application is pending with IP Vietnam.

 

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