How Licensing of Trademark Works?

Licensing of industrial property subject in general or of trademark in specific is regulated in Intellectual Property law.  Accordingly, in trademark licensing, the owner (licensor) grants permission to another (licensee) to use that trademark on mutually agreed terms and conditions. The licensing of trademark must be established in written form to avoid dispute in trademark licensing.

 

Trademark licensing in Vietnam

Accordingly, licensing of trademark includes the following types: exclusive contract, non-exclusive contract; sub-license contract.

Firstly, exclusive contract means a contract under which, within the licensing scope and term, the licensee shall have the exclusive right to use the licensed trademark while the licensor may neither enter into any trademark license contract with any third party nor, without permission from the licensee, use such trademark.

Secondly, non-exclusive contract means a contract under which, within the licensing scope and term, the licensor shall still have the right to use the trademark and to enter into a non-exclusive trademark license contract with others.

Thirdly, trademark sub-license contract means a contract under which the licensor is a licensee of the right to use such trademark pursuant to another contract.

In any type of the contracts, it is required to have the following contents: full names and addresses of the licensor and of the licensee; grounds for licensing; contract type; licensing scope including limitations on use right and territorial limitations; contract term; licensing price; rights and obligations of the licensor and of the licensee.

Besides the above contents, the parties also need to take note on the validity of this contract. Different from assignment contract of trademark when it is required to register at National office of Intellectual Property of Vietnam to take effect, the licensing contract of trademark does not required this kind of registration for taking effect. Licensing contract shall automatically be terminated upon the termination of the licensor's trademark right.

If Client needs any more information or request for legal advice regarding licensing of trademark or dispute in trademark licensing contract, our Intellectual Property attorney in Vietnam at ANT Lawyers will be of help.

Why Investor Needs to Protect Trademark in Vietnam?

Trademark protection in Vietnam is initially obtained through trademark registration. Trademark opposition could be filed to prevent a pending application for a mark from being granted application. Litigation is the final measure to handle dispute during trademark protection in Vietnam.

 

Trademark is a sign that help distinguish the goods or services of one enterprise from those of others. Together with industrial design and patent, trademark of goods and services plays an extremely important role for the growth of the enterprise. Trademark establishes a link between enterprise and customer. A strong trademark will attract customers to use goods or services. When trademark is popular and economic benefits achieved through sale of goods or provision of services coupled with trademark is large, the violation of trademark is inevitable.

The annual reports of the Vietnam National Office of Intellectual Property (NOIP) prove that trademark violation in Vietnam is the most popular, among other industrial property rights. According to the preliminary annual report in 2011, and 2012, there has been more than 1,000 cases of trademark violations each year.  Report of 2013 and after shows more than 2,000 trademark infringements were handled with the total fines of trademark violators of around USD 1 million per year. Having said that, it is important for trademark owner to register trademarks in Vietnam for better protection. This is also suggested for even well-known trademarks.

For registration, trademark owner has two options: either directly register trademark in Vietnam by filling an application for registration with the Vietnam NOIP, or seek the trademark protection in Vietnam through Madrid’s system. For the first option, the trademark owner needs to prepare, file for registration, and pay fee as the requirement of Vietnam Intellectual Property law. In case trademark needs to be protected in a number of nations, including Vietnam, trademark owner may register trademark through Madrid’s system.

Where the violation of trademark occurs, trademark owner needs to judge the level of infringement, level of damage to choose suitable resolutions. Initially, the trademark owner may protect by requiring to the trademark violator to terminate the infringing acts, apologize, and rectify. In case of being damaged, trademark owners have rights to claim compensation. If failing to reach result, trademark owner may use settlement mechanism through negotiation or mediation or could request the competent state agencies to handle acts of infringement through i.e. filling a denunciation application and submitting to the Vietnam NOIP. Litigation might be required to handle acts of infringement. Generally, the proceeding of civil litigation is more complex than the arbitration proceeding. In cases the trademark owner needs a decision from court in order to end trademark infringement, civil litigation is top priority. In the remaining cases, arbitration is a better choice with advantages of cheaper cost, shorter settling time, and more flexible.

If you are looking for an experienced Trademark lawyers in Vietnam to help you with your Trademark application, you should visit ANTLawyers.vn. Our attorneys have experience with the Trademark process and will work closely with you as you apply for your IP.

 

How Probation is Regulated in Vietnam Labour Code?

Probation is an agreement between an employee and an employer on a probationary job in a certain period of time in accordance with the provisions of law. Before entering into a labor contract, the employer and the employee should go through a probationary period to determine the long-term cooperation and attachment between the parties. The probation should comply with the provisions of the Labor Code and relevant guiding documents. The Labor Code 2019 comes into force as of January 1st, 2020, a number of new regulations accordingly are issued in connection to the probation, which each company should review the matter with its labour lawyers in Vietnam for compliance.

 

Regarding the circumstances which are permitted to enter into a probationary contract, this contract is not applicable to the labor term which is below 01 month.  The Labor Code 2012 does not require that the probationary provision must be stipulated in the labor contract. Accordingly, an employer and an employee may negotiate on the probation, the rights and responsibilities of the parties during the probation period. The parties may conclude a probation contract if there is an agreement on the probation. If the probation work meets the requirements, the employer shall conclude an employment contract with the employee. From these provisions, it can be understood that the employee and the employer should make a separate probationary contract. The labor contract should be signed when the probation is completed and the employee meets the recruitment requirements of the employer. According to the latest provisions in the Labor Code 2019, the employer and the employee may agree on the probation stated in the labor contract or a separate probationary contract. If the probationary provision is stipulated in the labor contract, the employer shall continue performing the existing labor contract at the end of the probationary period once the employee satisfies the requirements. Otherwise, a new labor contract shall be entered into.

The Labor Code determined the restriction of the probation period based on the nature and complexity of the job. The probationary period previously was limited to no more than 60 days for jobs requiring a college or higher professional qualification. Currently, the probationary period is permitted to extend up to 180 days for the executives. The executives play an important role in business and operation of the enterprises, including owner of a sole proprietorship, a partner of a partnership company, chairperson or member of the Board of Member, President of a company, President or member of the Board of Directors, Director/General Director, or holder of another managerial position prescribed in the company’s charter (applicable to the enterprise with no state capital)

Another amendment to the cancellation of the probationary contract, the Labor Code 2019 removed the limitation of the right to cancel. Accordingly, during the probationary period, each party has the right to cancel the probationary contract or labor contract entered into without prior notice and compensation. On the contrary, the employee and the employer may cancel the probation if the probationary job does not meet the requirements that the parties have agreed upon under the Labor Code 2012

Probationary periods are primarily designed to test out whether both employer and employee to match each other at the start of an employment relationship. The enterprises as employers need to have a clear understanding of the principles of entering into a labor contract as well as a probationary contract to avoid potential dispute in Vietnam.

ANT Lawyers is a law firm in Vietnam, recognized by Legal500, IFLR1000. We are an exclusive Vietnam member of Prea Legal, the global law firm network covering more than 150 jurisdictions. The firm provides a range of legal services to multinational and domestic clients.

Cancellation Against of Trademark in Vietnam

Trademark is the priceless asset with your company because of being used to distinguish goods or services of different organizations or individuals.

 

Cancellation Against of Trademark in Vietnam

It usually takes a long time and attempts for your company to gain the trust and belief from customers on your goods and trademark. However, if there is any other same trademark of the same goods like yours, it will easily make customer mistake or confuse and lead many damages to your company such as distinguishing capacity, losing reputation and sale decline.

In fact, many international companies after co-operating with domestic companies to distribute or sell good, find that co-operators steal their trademark by registered trademark protection in National offices intellectual property. Because trademark is protected independently in each nation, it is easy for violators to do steal trademarks.

To protect your rights and benefits, you should request Vietnam IP authority to cancel violated trademark. With highly professional staff and great experience in IP aspect in Vietnam, ANT Lawyers would like to support you in cancelling against of trademark in Vietnam as follows:

Cancellation against of trademark in Vietnam

Under the Article 96 of the Law on Intellectual Property of Vietnam (IP Law), a certificate of trademark registration may be cancelled wholly or partly, by any third party’s request.

The applicant may request to the National Office of Intellectual Property (NOIP) in written form to cancel protection titles in the cases specified provided that they pay fees and charges.

Period for filling cancellation request

To request cancellation of a trademark due to the Applicant’s bad faith: the period for lodging such a request is the whole term of a Protection Title.

To request cancellation of a trademark due to other legal reasons: the period for lodging such a request is within 5 years as from the granting date.

The case for cancellation

A certificate of trademark registration may be cancelled wholly or partly, by any third party’s request, in the following cases:

The registration applicant has neither had nor been assigned the right to register an invention, industrial design, layout-design or mark;

The subject matter of industrial property fails to satisfy the protection conditions at the time the protection title is granted.

Required documents

Proofs (if any)

Power of attorney;

Written justification of the reason for request (clearly stating the serial number of the protection title, reason, legal grounds, contents of the request for termination or Cancellation of part of or the entire protection title) and relevant documents.

Time and procedures

In case a request for cancellation of trademark protection title is made by a third party, the NOIP shall notify in writing the third party’s opinions to the protection title holder, setting a time limit of two months from the date of notification for the trademark protection title holder to respond.

After considering opinions of the parties, the NOIP shall issue a decision on cancellation of part of the entire protection title or notify its refusal to cancellation the trademark protection title.

If disagreeing with the NOIP’s decision on handling of the request for Cancellation of the trademark protection title, the requester or an involved party may lodge a complaint about that decision or the relevant notice.

A decision on cancellation of a trademark protection title shall be published in the Industrial Property Official Gazette and recorded in the National Register of Industrial Property within two months from the date of its signing

If you are looking for an experienced IP services in Vietnam to help you with your IP application, you should visit ANTLawyers.vn. Our attorneys have experience with the IP process and will work closely with you as you apply for your IP.

Signals of Copyright Infringement in Vietnam

Authors might find their copyright are infringed in Vietnam and would need legal services from a local legal and intellectual property firm to advise.

 

Signals of Copyright Infringement in Vietnam

A literary, artistic or scientific work is an achievement from hard intellectual labor of the author. However, after publishing works, many authors find others use, print or trade their works without their prior written permission. The copyright infringement action can cause many material damages for authors when their intellectual labor achievements are used by others without prior asking and annual royalties. To ensure the rights of authors, the law strictly forbids from infringing and stipulates particularly as follows:

Appropriating copyright in a literary, artistic or scientific work.

Impersonating an author.

Publishing or distributing a work without permission from the author.

Publishing or distributing a work of joint authors without permission from the co-authors.

Modifying, editing or distorting a work in any way which prejudices the honour and reputation of the author.

Copying a work without permission from the author or copyright holder, except in the cases allowed by the Law

Making a derivative work without permission from the author or copyright holder of the work used for making such derivative work, except in the case allowed by the Law.

Using a work without permission from the copyright holder and without paying royalties, remuneration or other material benefits in accordance with law, except in the cases allowed by the Law.

Leasing out a work without paying royalties, remuneration or other material benefits to the author or copyright holder.

Duplicating, producing copies of, distributing, displaying or communicating a work to the public via a communications network or digital means without permission from the copyright holder.

Publishing a work without permission from the copyright holder.

Deliberately destroying or de-activating the technical solutions applied by the copyright holder to protect copyright in his or her work.

 

Deliberately deleting or modifying electronic information in a work regarding management of the rights to such work.

Manufacturing, assembling, transforming, distributing, importing, exporting, selling or leasing out equipment when knowing, or having grounds to know, that such equipment may de-activate technical solutions applied by the copyright holder to protect copyright in his or her work.

Making and selling a work with a forged signature of the author of such work.

Importing, exporting or distributing copies of a work without permission from the copyright holder.

With highly professional staff and great experience in Copyright and Related right aspect in Vietnam and other countries in the world, ANT Lawyers - Law firm in Vietnam would like to support and represent the clients in protecting copyright and related right.

 

When and How to Register Trademark to Protect IP Rights

Considering trademark registration activities, the subject holder must comply with certain conditions to fulfill its trademark registration rights.

According to Article 13.1 Law on Intellectual Property amended in 2009:

-Organizations and individuals may register marks to be used for goods they produce or services they provide.

Register trademark in Vietnam

-Organizations and individuals that conduct lawful commercial activities may register marks for products they are marketing but produced by others, provided that the producers neither use such marks for their products nor object to such registration.

-Lawfully established collective organizations may register collective marks to be used by their members under regulations on use of collective marks. For signs indicating geographical origins of goods or services, organizations that may register them are collective organizations of organizations or individuals engaged in production or trading in relevant localities. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration must be permitted by competent state agencies.

-Organizations with the function of controlling and certifying the quality, properties, origin or other relevant criteria of goods or services may register certification marks, provided that they are not engaged in the production or trading of these goods or services. For other geographical names or marks indicating geographical origins of local specialties of Vietnam, the registration thereof must be permitted by a competent state agency.

-Two or more organizations or individuals may jointly register a mark in order to become its co-owners on the following conditions: i) This mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners; ii) The use of this mark causes no confusion to consumers as to the origin of goods or services.

If the subject falls into one of the cases mentioned above, they will have the right to register the mark at the National Office of Intellectual Property. After the subject condition has been met, consideration should be given to the condition that a mark can be protected as a trademark. In particular (i) It is a visible mark in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colors; (ii) It is capable of distinctive goods or services of the mark owner from those of other subjects.

However, there are some exceptions even when the mark satisfies those two conditions. For example, marks identical with or confusingly similar to national flags or national emblems; or marks identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations shall not be protected as a trademark.

In order to register for protection of a trademark, the registrant should pay attention to the subject matter and the conditions for the trademark to be protected in order to avoid being refused at the registration authority because of the failure to meet the conditions for the subject or the conditions for protection.

IP Attorney at ANT Lawyers – a Law Firm in Vietnam, a licensed IP agent in Vietnam shall be providing the advice to client to help the clients evaluate and file registration for trademark, patent, copyright and other IP related services

Subject Matters of Intellectual Property Rights

Intellectual property subject matter is divided into three groups included: subject matter of copyright, subject matter of industrial property rights, subject matter of rights to plant varieties. In details:

Protect Intellectual Property Rights in Vietnam

-The subject matter of copyright shall comprise literary, artistic and scientific works; the subject matter of copyright related rights shall comprise performances, audio and visual fixation, broadcasts and satellite signals carrying coded programmes.

-The subject matter of industrial property rights shall comprise inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names and geographical indications.

-The subject matter of rights to plant varieties shall comprise plant varieties and harvested materials.

Pursuant to Intellectual Property right 2005 (amended in 2009), Intellectual property rights means rights of an organization or individual to intellectual assets comprising copyright and copyright related rights, industrial property rights and rights to plant varieties. For example, software computer program can be protected under Copyright, or name of a product can be protected under Industrial property right that is Trademark or the outward appearance of a car can be protected as Industrial design.

However, intellectual property rights are generated and established based on certain grounds:

Firstly, copyright shall arise at the moment a work is created and fixed in a certain material form, irrespective of its content, quality, form, mode and language and irrespective of whether or not such work has been published or registered. For instance, a musician is about to write a song, however, the idea of the song still bears in mind of the musician and have not written down yet. At that time, copyright of the musician still does not generate.

Secondly, related rights shall arise at the moment a performance, audio and visual fixation, broadcast or satellite signal carrying coded programmes is fixed or displayed without causing loss or damage to copyright. Related right is the right related to copyright. Proceeding to above example, when the musician has finished writing his song and is sung by the singer on stage, the right of the singer to sing the song of the musician is related right.

Thirdly, different grounds for the generation and establishment of industrial property right. As said above, industrial property rights include 7 subject matters: inventions, industrial designs, designs of semi-conducting closed circuits, trade secrets, marks, trade names and geographical indications. These subjects have different grounds for generating and establishing right:

-Industrial property rights to an invention, industrial design, layout design, mark or geographical indication 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;

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

-Industrial property rights to a trade secret shall be established on the basis of lawful acquirement of the trade secret and maintaining confidentiality thereof.

Fourthly, rights to a plant variety shall be established on the basis of a decision of the competent State body to grant a plant variety protection title in accordance with the registration procedures

It is wise to consult the advice of a IP attorneys in Vietnam to help assist you with your patent. We are a legal marketplace with quality lawyers who are knowledgeable in various areas of the law—including patents.

ANT Lawyers is a law firm in Vietnam, recognized by Legal500, IFLR1000. We are an exclusive Vietnam member of Prea Legal, the global law firm network covering more than 150 jurisdictions. The firm provides a range of legal services to multinational and domestic clients.

What Are Permits for Importing Cyber Information Security Products?

According to Article 48, Law on Cyber Information Security, the import licenses and permits required for Cyber information security products are regulated as following:

 

Personal data security law firm in Vietnam

1.To import cyber information security products on the Government-prescribed list of cyber information security products subject to import permit, an enterprise shall obtain a permit for import of cyber information security products from a competent state agency

2.Before importing cyber information security products, organizations and enterprises must have them certified and announced as conformable with regulations.

3.An organization or enterprise shall be granted a permit for import of cyber information security products when fully meeting the following conditions:

a/ Possessing a license for trading in cyber information security products;

b/ Having cyber information security products certified and announced as conformable with regulations;

c/ Ensuring that users and use purposes of cyber information security products do not harm national defense and security or social order and safety.

4.The Ministry of Information and Communications shall prescribe in detail the order, procedures and dossier for grant of a permit for import of cyber information security products.

Our cyber security lawyers always follow development of laws in Vietnam to provide the client with update.  Please contact ANT Lawyers for service inquiries.

ANT Lawyers is a law firm in Vietnam, recognized by Legal500, IFLR1000. We are an exclusive Vietnam member of Prea Legal, the global law firm network covering more than 150 jurisdictions. The firm provides a range of legal services to multinational and domestic clients.