Intellectual property assignments _bài tập tình huống thực tế về việc vi phạm bằng sở hữu trí tuệ và cách giải quyết

Intellectual property assignments bài tập tình huống thực tế về việc vi phạm bằng sở hữu trí tuệ và cách giải quyết dựa trên các văn bản pháp luật liên quan

IP ASSIGNMENT CASE STUDY ANSWER

I The Company have to carry out immediately procedures to register protection XXX product type in foreign countries that the Company is taking interested in such as Laos, Myanmar, and EU… The registration fees should be taken into consideration.

There are two types of protection’s registration that the Company could perform trademark’s registration in abroad, included:

1 Trademark registration under Madrid system (in accordance with Agreement and Protocol)

Vietnam has been a member of the Madrid Protocol since July 11, 2006, therefore, any individual or organization who wants the trademark to be globally protected can apply for an international copyright registration according to Madrid Protocol (Noted that in order to register a trademark under the Madrid Protocol, the Company need to have a certificate to be granted a trademark protection certificate in Vietnam, in this case that is followed the Title no 2468

The advantage of this registration’s type is the Company only need to use an international registration form that will be marked the countries which you want to apply for trademark protection The procedures are very simple and convenient when just applying through the Intellectual Property Department while the trademark is still protected in many countries

2 Register directly in each country where the Company want the trademark to be protected

The Company can apply protection’s documents according to the requirements of each Trademark Registration Department’s countries The application procedure and timeline shall depend on the intellectual property (IP) laws of each country

The Registration of trademark protection in a country rather than Vietnam, the Company should take into consideration to use the law firm as well as the Company’s

representative in the country that the Company desire for trademark’s protection or use the services of Vietnam IP representatives to carry out registration procedures

3 The required documents need to be provided for the Trademark Registration Department outside Vietnam

If you register trademark protection through the Madrid Protocol, you need to prepare the following documents:

 Application form for international trademark registration (written in French) Note: The application must specify the Madrid Agreement member countries where the applicant wants the trademark to be protected

 List of Trademark models;

 List of products and services to be registered;

 A notarized or authenticated copy of the Trademark Certificate in Vietnam;

 Power of attorney (if using the service)

 Documents proving payment of fees and charges

If the Company desire to register trademark protection in each country, it is up to the application of the IP law of that country that the Company is wishing to apply

The Company should seek the assistance of Vietnam IP representatives in the country that the Company want to register IP protection

In order for the Company’s trademark protection application to be approved by the World Intellectual Property Organization (WIPO) or other national IP office, the Company need to be aware of the regulations that need to be followed However, that

is not easy The procedure for each registration process differs from one to another, requiring careful research and preparation

Therefore, thanks to the assistance of Vietnam IP representatives, the Company shall save a great deal of time and effort when the Company do it itself

II The Company has to proceed trademark valuation in Vietnam for the purpose of identifying capital contribution in Joint Venture Agreement (JAV)

Generally, trademark valuation is aimed for the following purposes:

Valuation in trademark transfer: the concept of transfer under IP law included two cases: assignment of all trademark ownership or licensing in order to gain an amount

of royalty fee With transferee side, a trademark that was acquired or licensed for a certain period of time shall be treated as intangible fixed asset with depreciation period from 20 years to 25 years

Valuation for financial statements purpose: with the direct purpose is bringing trademark value into the balance sheet These require the Company is in compliance with current valuation standards and accounting standards Under the Clause 2, Article 32 of Decree No 103/2006 / ND-CP of September 22, 2006, mentioned that trademarks created by enterprises shall be treated as an intangible fixed asset Another important financial purpose is valuation in bankruptcy or corporate restructuring, including equalization process: in many cases, the value of intangible assets including trademark value could be omitted Additionally, the valuation may also prove or guarantee the Company’s ability to raise fund, serving taxation plans of tax authorities

Trademark valuation in order to determine the damage caused by an infringement of

IP rights to a trademark: mainly the compensation for damage to the brand's identity

or brand image and different from compensation for revenue and profit losses

Generally, trademark valuation included 3 steps as followings:

 Financial analysis: Starting with the calculation of revenue that generated from trademark, that is the past and present sales of products and services trademark in each market Following, the Company shall proceed to minus production costs, business costs, and taxes, interest rates respectively in order to get the net profit from intangible earnings that derived from contractual privileges, from advantages of an invention or exclusive industrial design, from the effectiveness

of a management process or R&D activity Analytical data is gathered from published corporate information and reference information verified by valuation

organization On that basis, projecting the expected cost, revenue and profit from trademark in the next five years

 The Company has to determine the prorate of trademark in the contribution of profit generated from intangible assets: from the perspective of governance, the degree of influence of the brand on consumers' purchasing decisions at the point

of sale In some categories of products such as cosmetics, packaged consumer goods, the influence of trademark in consumer decisions can be very high; In contrast, in some other businesses such as industrial marketing products (B2B), the influence of trademarks in consumer decisions will be lower For example, buyers choose MICROSOFT software not only because of the WINDOW brand but also because this operating system is being installed on over 80% of computers’ users on the market: it will be very troublesome to synchronize when using a different operating system For SHELL, people buy fuel not only for trademark name but also for the convenient location of gas stations And then, the trademark’s contribution rate is applied to the expected revenue, cost and profit from intangible assets trademark (trademark earnings) in the next five years

 The Company has to measure the strength of trademark (Trademark strength): is a measure of the ability of a trademark to continue to attract customers (through the loyalty of the customer, the degree of re-purchasing the trademark) and that is the ability to protect the expected revenue flow in the future This is a step to determine the discounted cash flow to the net present value (NPV) from the trademark which, consisted of two factors The first factor is the devaluation of the currency, determined by the interest rate of long-term government bonds in the local market The second factor is the level of risk of the expected trademark revenue itself, depending on the strength of the trademark measured by 7 key indicators: the role of trademark in the joint production – business, stability of the trademark over time, its position in the market, the level of its international business, the development trend of the trademark, the level of investment in the trademark and the level of protection legal protection of trademark

After determining the discount cash flow rate, the expected revenue shall be discounted to net present revenue in order to identify trademark value at the time of joint venture

III Find out counterfeited goods marked trademark XXX: in cooperation with market management Department, Economic Police in order to monitor and handle infringement Advertise trademark XXX in public media in order to let customers know this is trademark of A, and have clearly warnings of infringement if it is detected.

Under Chapter XVIII, Article from 211 to 215 stated clearly when dealing with infringements of IP rights by application of administrative and criminal measures, control of IP related to imports and exports

Article 211 Acts of infringement of industrial property rights which shall be subject

to administrative penalties

The following acts of infringement of industrial property rights shall be subject to administrative penalties:

 Acts of infringement of intellectual property rights which cause loss and damage

to consumers or society;

 Failure to terminate an act of infringement of intellectual property rights although the intellectual property right holder has issued a written notice requesting termination of such act;

 Producing, importing, transporting or trading in intellectual property counterfeit goods stipulated in article 213 of IP Law, or assigning others to do so;

 Producing, importing, transporting or trading in articles bearing a mark or geographical indication which is identical or confusingly similar to a protected mark or geographical indication, or assigning others to do so

The Government shall specify acts of infringement of intellectual property rights which shall be subject to administrative penalties, the forms and levels of penalties, and the procedures for applying same

Any organization or individual who commits an act of unfair competition in intellectual property shall be subject to an administrative penalty in accordance with the law on competition

Article 212 Acts of infringement of industrial property rights which shall be subject

to criminal penalties

 Any individual who commits an act of infringement of intellectual property rights involving a criminal element shall be criminally prosecuted in accordance with the criminal law

Article 213 Intellectual property counterfeit goods

 Intellectual property counterfeit goods regulated in IP Law comprise goods bearing counterfeit marks and goods bearing counterfeit geographical indications (hereinafter referred to as counterfeit mark goods) defined in clause 2 of this article and pirated goods defined in clause 3 of this article

 Counterfeit mark goods means goods or their packages bearing a mark or sign which is identical with or indistinguishable from a mark or geographical indication currently protected for those very goods, without permission from the mark owner or organization managing the geographical indication

 Pirated goods means copies made without permission from the copyright holder

or related right holder

Article 214 Forms of administrative penalty and measures for remedying consequences

Any organization or individual who commits an act of infringement of intellectual property rights defined in clause 1 of article 211 of IP Law shall be compelled to terminate such act and shall be subject to one of the following principal penalties:

 A caution;

 A monetary fine

Any organization or individual who infringes intellectual property rights may, depending on the nature and seriousness of the infringement, also be subject to one of the following additional penalties:

 Confiscation of intellectual property counterfeit goods, raw materials and materials, and facilities used mainly for production or trading of such intellectual property counterfeit goods;

 Suspension of business activities for a fixed period in the sector in which the infringement was committed

In addition to the penalties stipulated in clauses 1 and 2 of this article, any organization or individual who infringes intellectual property rights may also be subject to one or more of the following measures for remedying consequences:

 Compulsory destruction, distribution or use for non-commercial purposes of intellectual property counterfeit goods as well as raw materials and materials, and facilities used mainly for production or trading of such intellectual property counterfeit goods, provided that such destruction, distribution or use will not affect the exploitation of rights by intellectual property right holders;

 Compulsory transportation out of the territory of Vietnam of transit goods infringing intellectual property rights or compulsory re-export of intellectual property counterfeit goods and imported materials and raw materials, and facilities used mainly for production or trading of such intellectual property

counterfeit goods after the infringing elements have been removed from such goods

The amount of the monetary fine stipulated in sub-clause (b) of clause 1 of this article shall be set at least equal to the value of the detected infringing goods but shall not exceed five times such value

 The Government shall issue detailed regulations on the method of determining the value of infringing goods

Article 215 Preventive measures and/or measures to secure enforcement of administrative penalties

In the following cases, organizations and individuals shall have the right to request the competent body to apply preventive measures and/or measures to secure enforcement

of the administrative penalties stipulated in clause 2 of this article:

 An act of infringement of intellectual property rights is likely to cause serious loss and damage to consumers or society;

 Material evidence of the infringement is likely to be dispersed or there are indications that the offender will evade responsibility;

 In order to secure enforcement of a decision imposing an administrative penalty Preventive measures and/or measures to secure enforcement of administrative penalties which may be applied in accordance with administrative procedures to acts

of infringement of intellectual property rights shall comprise:

 Temporary detention of persons;

 Temporary custody of infringing goods, material evidence and facilities;

 Body searches;

 Searches of means of transport and objects; searches of places where infringing goods, material evidence and facilities are hidden;

 Other administrative preventive measures in accordance with the law on dealing with administrative breaches

IV Licensing for foreign companies: consider whether license is exclusive or not The Company should take consideration into main contents of the License Agreement such as: how to ensure the quality of XXX trademark products, the testing and quality assurance mechanism, required sales amount, licensing fees (one-time or yearly), the validity of the license, the terms of penalty for breach, etc These are as detailed as possible.

Under the current law, the licensing of industrial property items must be in compliance with certain conditions First of all, to grant a license for an industrial property item in Vietnam, that item must already be protected in Vietnam; in other words, that item must have been granted a patent or a certificate of trademark registration

The scope of license transferring cannot be broader than the scope of protection that is mentioned in the exclusive patent or the corresponding trademark registration certificate For example, for a trademark, the transferor can only transfer the rights stated in the trademark registration certificate, which means that the transfer is only applied to the trademark, goods / services in accordance with the certificate of protection that is valid at the time of transferring

The assignor or the license transferor must ensure that this trademark is registered under the owner of the assignor or license transferor and that transfer or license does not result in disputes with any such third parties If the dispute arises from the transfer

or licensing of an industrial property items, the assignor or license transferor shall be responsible for resolving these disputes

In particularly, for geographical indications, it should be taken noted that the rights to geographical indications cannot be transferred or licensed Furthermore, the transferring of a trademark must not cause confuse to customers with the character or origin of the trademarked goods and / or services

License Agreement

The contract of transferring and licensing of industrial property items must be in writing, and must include minimum terms and conditions as prescribed by IP law Verbal contracts, letters or correspondence are not accepted and have no legal effect

If the transferring or licensing of an industrial property trademark is included in another contract (such as a technology transfer contract, a service contract, etc.), in fact for the purpose of trademark registration, this contract must be established in a separate section

License agreement must be included the following contents:

 Names and addresses of the parties (the assignor and the assignee, the licensor and the licensee)

 The basis of assignment / license (i.e., the transfer / license is made under the exclusive license or issued registration certificate, or on the basis of a secondary license)

 The subject of industrial property trademark is transferred, or in the case of a license, the scope of the license is granted includes: the form of the license (exclusive or non-exclusive), the territory of the license, and the validity of the license

 The transfer price or the licensing fee for the license transferring (the free licensing or licensing transferring must also be clearly stated in the contract);

 Rights and obligations of each parties;

 Conditions to amend or terminate the license contract;

 Disputes resolution;

 Time and place to sign the contract;