Intellectual Property Disputes

Intellectual property disputes have become increasingly prominent in the current digital age, where intellectual assets such as copyrights, patents, and trademarks constitute vital property in the global economy. These disputes often arise from differing views on ownership, use, or protection of intellectual products and services. Resolving such disputes not only concerns the economic interests of the involved parties but also impacts innovation and creativity in society.

Common Categories of Intellectual Property Disputes Today

Group 1: Copyright Disputes (Purely Related to Moral Rights and/or Purely Related to Economic Rights)

1. Disputes between individuals regarding determination of authorship or co-authorship.

2. Disputes concerning the right to name the work, to have the author’s name indicated on the work, the right to publish the work, and the right to protect the integrity of the work, including preventing others from distorting, modifying, or mutilating the work in any manner prejudicial to the author’s honor and reputation.

3. Disputes related to infringement of the moral rights of the author or co-authors.

4. Disputes between the author and the copyright owner concerning the creation of derivative works.

5. Disputes over copyright ownership between the author and the organization or individual that invested funds for the author or co-authors to create the work under a labor contract or contract for work.

6. Disputes between the copyright owner and users of already published works who are not required to obtain permission or pay remuneration, on the grounds that such use prejudices the normal exploitation of the work or unreasonably harms the legitimate interests of the author or copyright owner.

7. Disputes between the copyright owner and users of already published works who are not required to obtain permission but must pay remuneration, on the grounds that the user fails to pay remuneration or such use prejudices the normal exploitation of the work or unreasonably harms the legitimate interests of the author or copyright owner.

8. Contractual disputes concerning assignment or licensing of copyright, or disputes arising from contracts for services related to copyright.

9. Disputes arising from acts of copyright infringement under Article 28 of the Intellectual Property Law, including unauthorized acts such as appropriation, reproduction, distribution, sale, impersonation, publication, communication to the public, or circumvention of technological protection measures implemented by the copyright owner.

10. Disputes concerning inheritance or succession of economic rights under Article 20 and moral rights under Clause 3, Article 19 of the Intellectual Property Law.

11. Other disputes concerning copyright.

Group 2: Disputes Related to Copyright (Related Rights / Neighboring Rights)

1. Disputes between investors and performers concerning moral rights and economic rights over performances; disputes between performers and users of economic rights over remuneration for performances.

2. Disputes between producers of phonograms or video recordings and users of the producers’ rights concerning material benefits when phonograms or video recordings are distributed to the public.

3. Disputes between broadcasting organizations and users of the organizations’ rights concerning material benefits when broadcast programs are recorded, reproduced, or distributed to the public.

4. Disputes between performers, producers of phonograms or video recordings, broadcasting organizations, and users of related rights who are not required to obtain permission or pay remuneration, on the grounds that such use prejudices the normal exploitation of the performance, phonogram, video recording, or broadcast, or unreasonably harms the legitimate interests of the performers, producers, or broadcasting organizations.

5. Disputes between authors, copyright owners, performers, producers of phonograms or video recordings, broadcasting organizations, and users of related rights who are not required to obtain permission but must pay remuneration, on the grounds that the user fails to pay remuneration or such use prejudices the normal exploitation of the performance, phonogram, video recording, or broadcast, or unreasonably harms the legitimate interests of the performers, producers, or broadcasting organizations.

6. Disputes concerning related rights over performances, phonograms, video recordings, or broadcasts (e.g., disputes over who is the owner of the performance, phonogram, video recording, or broadcast).

7. Disputes arising from acts of infringement of related rights.

8. Disputes concerning inheritance or succession of related rights.

9. Other disputes concerning related rights.

Group 3: Industrial Property Disputes

1. Disputes over the right to register inventions, industrial designs, layout designs of integrated circuits, trademarks, and geographical indications.

2. Disputes over priority rights in applications for registration of inventions, industrial designs, or trademarks.

3. Disputes over authorship of inventions, industrial designs, or layout designs.

4. Disputes over moral rights and economic rights of authors of inventions, industrial designs, or layout designs.

5. Disputes over provisional rights concerning inventions, industrial designs, or layout designs between the person entitled to file the application and the person using such industrial property objects, or disputes over compensation between the holder of the protection title and the person who used the invention, industrial design, or layout design during the period from publication of the application to grant of the protection title.

6. Disputes over prior use rights for inventions or industrial designs between the owner of the invention or industrial design and the prior user, including disputes concerning transfer of such rights to others, expansion of scope or volume of use without the owner’s permission.

7. Disputes over compensation between the holder of the protection title for inventions, industrial designs, or layout designs and the person who used such objects during the period from publication of the application in the Industrial Property Official Gazette to the grant of the protection title.

8. Disputes over rights of the owner of industrial property objects (including disputes concerning the rights of co-owners).

9. Disputes arising from acts of infringement of industrial property rights, including exclusive rights to inventions, utility solutions, industrial designs, layout designs of integrated circuits, trade secrets, trademarks, trade names, geographical indications, and acts of unfair competition, including domain names under Articles 126, 127, 129, and 130 of the Intellectual Property Law.

10. Disputes arising from acts infringing the rights of authors of inventions, industrial designs, or layout designs.

11. Disputes over remuneration payable to authors of inventions, industrial designs, or layout designs.

12. Disputes concerning contracts for assignment of industrial property rights; contracts for licensing of industrial property objects; or disputes concerning contracts for industrial property representation services.

13. Disputes concerning inheritance or succession of industrial property rights or economic rights of authors of inventions, industrial designs, or layout designs.

14. Disputes arising from acts of unfair competition related to industrial property.

15. Other disputes concerning industrial property rights.

Group 4: Disputes Concerning Plant Varieties

1. Disputes over registration rights, priority rights, or authorship rights concerning protected plant varieties.

2. Disputes over provisional rights with persons using plant varieties arising from the date of publication of the application for protection of the plant variety to the date of issuance of the certificate of protection for the plant variety under Article 189 of the Intellectual Property Law.

3. Disputes concerning acts falling within the scope of limitations on the rights of the holder of the certificate of protection for plant varieties under Article 190 of the Intellectual Property Law, including: (i) use of the plant variety for personal and non-commercial purposes; (ii) use of the plant variety for experimental purposes; (iii) use of the plant variety to create other plant varieties; (iv) individual household producers using harvested material from the protected plant variety for self-propagation and replanting in subsequent seasons on their own land area.

4. Disputes concerning the obligation to pay remuneration to the breeder of the protected plant variety.

5. Disputes concerning the obligation of the breeder to assist the holder of the certificate of protection in maintaining propagating material of the protected plant variety.

6. Disputes concerning contracts for transfer of use rights to protected plant varieties between the holder of the certificate of protection and the transferee of use rights, or disputes among co-owners of protected plant varieties concerning performance of such contracts.

7. Disputes concerning contracts for transfer of ownership of protected plant varieties between the holder of the certificate of protection or co-owners and the transferee, including disputes over ownership of protected plant varieties originating from the state budget.

8. Disputes arising from acts infringing rights over protected plant varieties.

9. Other disputes concerning rights to plant varieties.

Jurisdiction over Intellectual Property Disputes

Administrative Resolution of Intellectual Property Disputes

• The Science and Technology Inspectorate has jurisdiction to handle violations related to industrial property disputes;
• The Information and Communications Inspectorate has jurisdiction to handle violations involving the act of “registering, occupying, or using domain names identical or confusingly similar to protected trademarks, geographical indications, or trade names of others with the intent to occupy domain names, exploit, or cause damage to the reputation or prestige of the corresponding trademark, trade name, or geographical indication”;
• Market Management Authorities have jurisdiction to impose penalties for the following violations:

• Violations in the production, trading, transportation, or storage of goods in the domestic market;
• Violations in the trading or transportation of goods in the domestic market.

• Customs Authorities have jurisdiction to impose penalties for violations in transit or importation of goods;
• Police Authorities have jurisdiction to detect, verify, collect information and evidence of acts infringing industrial property rights and provide such information to competent sanctioning authorities; they also have jurisdiction to impose penalties for acts of trademark or geographical indication counterfeiting.
• Provincial and district People’s Committees have jurisdiction to impose penalties for industrial property violations occurring within their localities in accordance with the principles of determining and allocating administrative sanctioning authority.

Jurisdiction of People’s Courts over Intellectual Property Disputes

Jurisdiction of People’s Courts is divided into two levels:

1. Jurisdiction by Court Level:

• District People’s Courts: Resolve intellectual property disputes and technology transfer disputes not aimed at profit-making purposes;
• Provincial People’s Courts: Resolve cases where one of the disputing parties or the property is located abroad, or where judicial entrustment to the representative agency of the Socialist Republic of Vietnam abroad is required, or disputes over intellectual property and technology transfer between individuals or organizations with profit-making purposes.

2. Territorial Jurisdiction:

• The Court at the place of residence or work of the defendant (if an individual) or the place of the defendant’s head office (if an agency or organization) has jurisdiction to resolve first-instance cases.
• The parties may agree in writing to request the Court at the plaintiff’s place of residence or work (if an individual) or head office (if an organization) to resolve the case.
• If the defendant’s place of residence, work, or head office is unknown, the plaintiff may request the Court at the defendant’s last known place of residence, work, or head office.
• If the defendant has no place of residence, work, or head office in Vietnam, the plaintiff may request the Court at the plaintiff’s place of residence, work, or head office to resolve the case.

Methods for Resolving Intellectual Property Disputes

Intellectual property disputes are a form of civil dispute, and as civil disputes, the parties have the right to resolve them through negotiation or conciliation.

• Negotiation: A method of dispute resolution whereby the parties voluntarily exchange, discuss, and negotiate to settle the dispute.
• Conciliation: Based on respect for the rights and interests of the State and the parties, respect for the common interests of society in industrial property, and compliance with industrial property regulations and civil law. It must be conducted openly, objectively, promptly, and lawfully; state agencies for industrial property management may participate.

However, the disadvantage of these two methods is that no state authority guarantees enforcement of the agreements reached. Since negotiation and conciliation are essentially voluntary agreements between the parties, if one party deliberately breaches such agreements, the other party must still resort to litigation for a more definitive resolution.

– Court Litigation Procedure:

Step 1: Prepare the lawsuit file
The plaintiff prepares the lawsuit petition. The petition must include the contents prescribed in Article 164 of the Civil Procedure Code.
Supporting documents and evidence must be attached to prove that the claims are grounded and lawful.

Step 2: Submit the lawsuit file directly to the Court or by post. Upon receipt, the Court records the filing in its register.

Step 3: Within five working days from receipt of the petition, the Court must examine and issue one of the following decisions: accept the case if it falls under its jurisdiction; transfer the petition to the competent Court and notify the plaintiff if the case falls under another Court’s jurisdiction.

Step 4: Trial Preparation
The time limit for trial preparation is as follows:
– 04 months from the date of case acceptance. In complex cases or cases involving objective obstacles, the Chief Justice of the Court may extend the trial preparation period once, but not exceeding 02 months.

– In cases where resolution of the case is temporarily suspended, the trial preparation period is recalculated from the effective date of the Court’s decision to resume resolution.

Step 5: Bring the case to first-instance trial.

Intellectual Property Dispute Resolution and Consultation Services at BKC Law

At BKC Law, we provide in-depth consultation and support services for resolving intellectual property disputes. Our team of experienced lawyers assists clients in protecting their legitimate intellectual property rights through the most effective dispute resolution methods. We offer services ranging from case consultation and analysis, negotiation, drafting of legal documents, to representation in litigation. With a commitment to optimally safeguarding our clients’ intellectual property rights, BKC Law is a trusted partner for resolving complex issues and achieving the best possible outcomes in intellectual property disputes.

For free legal consultation at BKC Law, please contact our Lawyers using the following information:

Telephone: 0901 3333 41

Email: info@bkclaw.vn

District 1 Office: 9th Floor, Diamond Plaza Building, 34 Le Duan Street, District 1, Ho Chi Minh City

Binh Tan Office: 41 Ten Lua Street, Binh Tan District, Ho Chi Minh City