Trademark dispute settlement in vietnamese law and referring to the european union law

However, the provisions of law which applied in practice are still inadequate and overlap in defining the jurisdiction of trademark dispute settlement, dispute resolution process, the co

TRADEMARK DISPUTE SETTLEMENT IN

VIETNAMESE LAW AND REFERRING TO THE

EUROPEAN UNION LAW

HO CHI MINH CITY

2013

MANAGING BOARD OF SPECIAL PROGRAMS

- -

BACHELOR THESIS REGULAR TRAINING COURSE 34 (2009 - 2013)

TRADEMARK DISPUTE SETTLEMENT IN

VIETNAMESE LAW AND REFERRING TO THE

EUROPEAN UNION LAW

HO CHI MINH CITY

2013

been acknowledged by means of complete references I would bear

full responsibility for my protest

HCMC, 16 July 2013

Ngo Thanh Hai

IP Law Intellectual Property Law 2005

CP Code Civil Procedure Code 2004

CA Law Commercial Arbitration Law 2010

Joint Circular 02 Joint Circular No

02/2008/TTLT-TANDT-VKSNDTC-BVHTT&DL-BKH&CN-BTP

TRIPS Agreement on Trade-Related Aspects of Intellectual

Property Rights

BTA Agreement between the United States of America and

the socialist republic of Vietnam on trade relationsNOIP National Office of Intellectual Property of Vietnam WIPO center WIPO Arbitration and Mediation Center

TABLE OF CONTENTS

INTRODUCTION 1

CHAPTER 1 GENERAL THEORY OF TRADEMARK DISPUTE SETTLEMENT 6

1.1 Overview of trademark 6

1.1.1 The concept of trademark 6

1.1.1.1 Trademark in international legislation 6

1.1.1.2 Trademark in Vietnamese Law 7

1.1.2 The functions of trademark 9

1.1.3 Trademark protection 12

1.2 Trademark dispute settlement 13

1.2.1 The concept of ―trademark dispute‖ 13

1.2.2 Features of a trademark dispute 14

1.2.3 Subject and object of a trademark dispute 15

1.2.4 Classification of trademark disputes 16

1.2.5 The distinction between the trademark dispute and the trademark infringement 21

1.2.6 Mechanism of trademark dispute settlement 23

1.2.6.1 Trademark dispute settlement via way of negotiation and mediation 24

1.2.6.2 Trademark dispute settlement via way of jurisdiction 25

1.3 SUB-CONCLUSION 27

CHAPTER 2 VIETNAMESE LAW ON TRADEMARK DISPUTE SETTLEMENT – SHORTCOMINGS AND REMEDIES 29

2.1 Mechanism of trademark dispute settlement in Vietnam 29

2.1.1 General provisions of trademark dispute settlement in Vietnamese law 29 2.1.2 Dispute settlement via way of negotiation, mediation 31

2.1.2.1 Negotiation 31

2.1.2.2 Mediation 32

2.1.3 Dispute settlement via way of jurisdiction 36

2.1.3.1 Dispute settlement in the People‘s Courts 36

2.1.3.2 Dispute settlement in the arbitration 44

2.1.4 Situation on trademark dispute settlement in Vietnam 47

2.1.4.1 Statistics on trademark dispute in Vietnam 47

2.1.4.2 Some typical cases 50

2.2 Mechanism of trademark dispute settlement in the European Union 58

2.2.1 General provisions of European Union Law on trademark dispute settlement 58

2.2.2 Office for Harmonization in the Internal Market (OHIM) 60

2.2.2 Community Trademark Court (CTMC) 62

2.2.3 European Union Court of Justice (ECJ) 63

2.3 Recommendations proposed for improving the law of trademark dispute settlement - based on studying experiences of EU law 64

2.3.1 Complete the law of content of the intellectual property law and civil

procedure law on settling trademark dispute 64

2.3.2 Complete the law of organization the competent authority on settling trademark dispute 68

2.3.2.1 Enhance the dispute settlement role of National Office of Intellectual Property of Vietnam (NOIP) 68

2.3.2.2 Establish specialized court for intellectual property 70

2.4 SUB-CONCLUSION 72

CONCLUSION 73

BIBLIOGRAPHY

INTRODUCTION

1 The necessity of the thesis

Today, the concept of trademark has not become estranged and was familiar with the manufacturer, as well as to consumers In the market economy, trademark not only keep its original function as a mark to distinguish the goods and services with each other, it is also an important tool for manufacturers could account market and enhance its reputation with consumers through advertising and marketing strategy According to the world's largest brand equity database BrandZ1, the famous brands globally are priced not less than billions of dollars and continue to grow each year, such as in 2012: Coca-cola is priced of US$ 77.8 billion, Apple is 76.6 billion, IBM - 75.5 billion, Google - 69.7 billion2 Because of these tremendous value, the act of trademark disputes increasingly occurs more severe and sophisticated

With the act of participating in international treaties for the protection of intellectual property rights, be an official member of the WTO in 2007 - means that Vietnam must comply with the Agreement on the relevant aspects of the right to trade intellectual Property (TRIPs) - requires building a system of intellectual property lawfully and reasonably Therefore, the Intellectual Property Law and a series of guidance legal documents have been issued to create a legal framework safely, encourage creating and protecting its creative outcomes However, the provisions of law which applied in practice are still inadequate and overlap in defining the jurisdiction of trademark dispute settlement, dispute resolution process, the confusion in the regulation of trademark dispute with the infringing right of trademark owner Moreover, these provisions are still scattered lead to the act of applying ineffectively Whereas in developed countries such as the European Union, the trademark dispute settlement system which was specified with specialized agencies and was highly efficient are

1 http://www.wpp.com/wpp/marketing/brandz/what-is-brandz/ (Last visited on 17/06/2013)

2 BrandZ Top 100, 2013 See more at: http://www.wpp.com/wpp/marketing/brandz/brandz-reports/ (Last visited

on 17/06/2013)

lessons for Vietnam to acquire and complete the dispute resolution mechanism of intellectual property in general and particularly in trademark

For these reasons, the author decides to choose the topic: ―TRADEMARK DISPUTE SETTLEMENT IN VIETNAMESE LAW AND REFERRING TO THE EUROPEAN UNION LAW‖

2 The purpose of the thesis

The thesis will concentrate on the research of trademark dispute settlement mechanism under civil procedure: negotiation, mediation and civil jurisdiction

In addition, the thesis will continue referring the settlement mechanism of the European Union (EU) through understanding its dispute settlement measures

Finally, based on the experiences of EU law and some countries, the thesis will propose recommendations for improving the legal proceedings and organizational structure to resolve effectively trademark disputes

3 Research situations

The subject of trademark is no longer new with many documents, articles and research works However, most of articles have just gone to deeply research on general trademark protection, well-known mark, completing issues of in IP law

There are a number of research projects on trademark dispute, but most were written for a long time and before the intellectual property law was issued, so the value are not high It can be considered as the bachelor‘s thesis in 2001 of the author Nguyen Thuy Hang, "Dispute settlement on trademark and industrial design under international law and the Vietnamese law"; "Enforcement of rights of intellectual property by civil remedies in Vietnam, the situation and solutions" by Nguyen Hoang An, bachelor‘s thesis, 2005; ―Some problems of intellectual property disputes settlement in civil proceedings‖ by Nguyen Nhu Quynh (Published in Journal of Law, 2005)

Recently, some research has great value and close to the content of the author‘s thesis, such as:

 U Thi Bach Yen (2006), ―Law on protection of intellectual property right – Practical application in Ho Chi Minh courts‖, master‘s thesis The thesis concentrated

on analyzing the role of civil courts in intellectual property dispute settlement, illustrated by real cases and situations in Ho Chi Minh City courts From that, the thesis also indicated some solutions based on the experiences of some countries in the world

 Nguyen Van Tien (2010), "Practices on intellectual property disputes settlement

at the People's Court" The study indicated some limitations, shortcomings and difficulties in the settlement of disputes over intellectual property rights in Vietnam From that, the study also presented some amended recommendations

 Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union law and Vietnamese law" The thesis clarified logically the regulations of the European Union law on protection trademark and well-known trademark, relating to international laws and some of the countries in the world, and especially focused on the improvement of Vietnamese legal system on well-known trademark protection

 Nguyen Thi Thuong (2012), "Trademark dispute settlement under Vietnamese law – situation and resolution‖, bachelor thesis The thesis made quite clear the concept

of trademark disputes, clarified trademark disputes and analyzed real situations together with considerable solutions However, the thesis did not distinguish clearly the trademark disputes the trademark infringement the owner‘s rights

4 The scope of the research

In the thesis, the author mainly focus on researching, evaluating of trademark dispute settlement under the laws on civil procedures of Vietnam In addition, the author would like to make an overview the provisions of European Union law on community trademark disputes settlement, as well as studying some cases in Vietnam and in EU

5 Methodology

Traditional legal methods or legal dogmatic method

The traditional legal method is commonly used in most fields of legal research This method is normally understood as a way of interpreting, clarifying, evaluating and analyzing applicable legal regulations in order to make clear theoretical and practical matters3 In other words, it is also used to explain, evaluate the valid legal contents and

to forecast the development of these legal norms Accordingly, this method shall predict the tendencies of law in general and in specific provisions also Therefore, when using this method, the author has approached and studied many legal sources, on the international and national levels, such as national laws of Vietnam, the US, the UK, China or case law (in Vietnam and EU) and legal doctrines

Legal historical perspective

The legal historical method may be understood as a way of approaching and studying certain issues in the context of the history of their development It is uncontroversial that law is historical in nature This means that laws have always existed within the historical contexts of countries or territories and therefore, has been influenced and affected by their historical conditions4 Thus, analysis based on the formation and development of trademark and trademark dispute settlement in Vietnam and in EU, this method can help the readers understand current statutes by understanding their historic sources and development of these legal systems Besides, upon considerations of the historical development and conditions in a country or a community, the legal historical method will supply reasonable and scientific explanations for legal problems which they face

Other research methods

law and Vietnamese law", p.23

4

Phan Ngoc Tam (2011), see (3), p.26

In addition to the mentioned methods, the author also refers research methods such as economic legal perspective; sociological legal perspective and comparative legal method To determine the appropriate level of damages to award in trademark litigation

or to define the infringement activities in trademark cases based on economic damage, the economic legal method will be used Otherwise, to compare the provisions of law with present situations or with the EU laws as well as proposed solutions for improving the law in Vietnam, the method of sociological and legal comparative will be used

6 Scientific meaning and value of thesis

The thesis will provide the basis contents and in-depth analysis of the trademark disputes, the dispute settlement process under the civil procedure Based on the introduction the dispute measures of the European Union, the author also proposes some practical recommendations to improve the legal system and law organizations to

resolve trademark disputes in practice

7 Structure

The thesis consists of 02 chapters:

Chapter 1: General theory of trademark dispute settlement

Chapter 2: Vietnamese law on trademark dispute settlement – shortcomings and recommendations

CHAPTER 1

GENERAL THEORY OF TRADEMARK DISPUTE SETTLEMENT

1.1 Overview of trademark

1.1.1 The concept of trademark

1.1.1.1 Trademark in international legislation

Trademarks are one of the basic IP objects in our lives Since ancient times, people had known to use shapes, own signs or signatures to express their property right5 Laws on the protection of trademark were enacted firstly in Britain6 From that, the definition of trademarks has been spread on many European countries In the explosion of science and technology, the expansion of international relations and the risk of infringement of IPR, it is necessary to consider a common regulation to protect those rights So, a diplomatic conference was held in Paris and approved the Convention on the protection

of IP, including trademark7

Trademark was defined clearer in TRIPs, defined trademark as ―any sign, or

any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark” 8

5

Syllabus of intellectual property law (2012), Ho Chi Minh City University of Law, pages.249 For example, some Roman ceramic artists used to use more than a hundred different trademarks to distinguish their products with other ones One of the most famous trademarks at that time, which was most counterfeited, is Fortis

6 The earliest trademark legislation was the Bakers‘ Marking Law, obliging every baker to put his mark on the bread he baked, enacted by the British Parliament in 1266 See more at:

http://www.wipo.int/wipo_magazine/en/2005/02/article_0003.html (last visit on 21/06/2013)

7 Paris Convention for the Protection of Industrial Property, approved on March 20, 1883 However, under

Article 6.1, this Convention did not show the particular definition of trademark and let each national member decide by itself Instead, the convention regulated cases refusing the trademark application; such as, the trademark which is inability to distinguish, immoral or contrary to public order or has the ability to deceive the public It can be seen that, except cases above, any sign which has the ability to distinguish can be used as a trademark

8

Article 15.1 TRIPs

WIPO also has the definition of trademark, ―trademarks are distinctive signs, used to

differentiate between identical or similar goods and services offered by different producers or service providers.” 9

In summary, albeit each nation and international organizations have different approaches on explaining the concept of trademarks, a common point can easily recognize in mentioned concepts is the distinctive capability of trademarks So, the first consideration in determining whether a trademark is protectable in those countries is to determine whether or not the mark is distinctive of the products or services on which the mark is used12

1.1.1.2 Trademark in Vietnamese Law

In Vietnam, trademarks were firstly13 regulated in Decree 197/HDBT14 It regulated

that trademarks are “signs that can be accepted as words, pictures, drawings,

embossing or a combination of these factors, is expressed in one or a variety of colors” 15

However, the concept of trademarks was just regulated in sub-laws and only

officially regulated in Civil Code 1995, which became the highest legal basis and

9

http://www.wipo.int/trademarks/en/ (last visited on 13/06/ 2013)

10 Repealed by Directive 2008/95/EC

12 Kenneth L.Port, ―Trademark law and policy‖, Carolina academic press, pages 141

13

Dao Minh Duc wrote that Law No.13/57 dated 01/08/1957 in Southern of Vietnam rules "production mark " refers to the product or the agricultural industry and "brand" for the trade goods See more at:

http://luatsohuutritue.net/mot-so-van-de-ve-dinh-gia-nhan-hieu/ (Last visited on 13/06/2013)

14 Decree 197/HDBT dated 14th December 1982 and be guided by Circular 1134/SC dated 17th October 1991

15

Article 3.1 Decree 197/HĐBT

principles to protect IPR, include trademarks Although Decree 197/HĐBT, Circular 1134/SC and Civil Code 1995 made an important role in building a legal background

to protect IPR, there were some restriction about protection scopes16 requires a new regulation, which can be reasonable with the current situation

On 29th November 2005, IP Law was enacted, marked the complement and outstanding development of the protection of IPR New definition of trademarks was expressed as

follows: ―A trademark is the sign used to distinguish goods or services of the

organizations, different individuals‖17 This definition was detailed in the Article 72, is signs can be seen as words, letters, images, drawings, including holograms or combination thereof that are expressed by one or more colors and distinguish with goods or services of other subjects Therefore, signs could be used as a trademark must

be visible and distinctive

In some countries like France, USA… signs might also be invisible like sounds, tastes and odors18 According to Article 15.1 TRIPs, any sign which can distinguish the goods and services of different subjects is recognized as a trademark So, in principle, despite some differences between visible signs and invisible signs, distinguishing function is still the basic requirement19 to register a trademark In fact, signs such as colors, tastes, odors or sounds are also playing a crucial role to differ goods and services of producers20 Therefore, in the author‘s opinion, Vietnam should supplement invisible signs like sounds, tastes or smells so that it can be used as a trademark

16

Nguyen Thi Thuong, 2012, bachelor‘s thesis ―trademark dispute settlement under Vietnamese law – situation and resolution‖, pages.10

17 Article 4.16 Intellectual Property Law 2005

18 For example, in USA, the sound of lion roar of MGM film studios or Nokia tune were registered as trademarks Other example, in 1990, a court held that a Californian company could register a plumeria scent as a trademark for its sewing thread and embroidery yarn (US Reg No 1,639,128, subsequently abandoned) Other example is in

L’Oréal v Bellure, the England‘s Court of Appeal court held that Bellure's use of lists in its advertising that

compared its perfumes' scents to those of well-known L'Oréal perfumes constituted trademark infringement Some representative sounds of various famous registered trademarks in the U.S can be found at:

http://www.uspto.gov/trademarks/soundmarks/index.jsp (last visited on 20/06/2013)

19 http://thongtinphapluatdansu.edu.vn/2010/05/12/5062/ (last visited on 15/06/2013)

20 Odor of perfumes, wines or tastes of some agriculture products or foods can be signs to distinguish products of different producers

1.1.2 The functions of trademark

Trademarks and the legal protection they afford to play a pivotal role in commerce On the one hand, they contribute to market order by defining various important rules of business and on the other hand, they help consumers in their buying decisions 21

Trademark was also reassured by Jacobs A.G when he said that trademarks are neither less important nor less deserving of protection, than any other types of intellectual property22 So, it can see trademarks as performing four functions as follows:

Distinctiveness

Trademarks permit the public to distinguish between goods of varying sources This is the basic function of trademarks The ECJ has recognized that the distinctiveness of trademarks is its ―essential function‖23 This is valuable both from the consumer viewpoint and the seller's viewpoint For the consumer, they can distinguish between goods on the market – where displayed various types of goods – and, by being able to

do so, gives the suppliers of goods under the mark an incentive to produce high-quality goods sold under a mark Moreover, trademarks not only distinguish between goods and services to each individual or organization but also help consumers distinguish goods and services thereof with counterfeit products Like most of legislations of countries, IP Law regulates that a trademark does not have a distinctive capability if it falls into one of the circumstances listed in Article 74

Badge of origin

The second function of a trademark, as mentioned is one another essential function of trademark, is to guarantee the identity the origin of the trademark product to the consumer or ultimate user In the case Galaxo Group Ltd v Dowelhurst Ltd, the ECJ

22 HAG No.2 [1990], pages.583

23

Guy Tritton, ―Intellectual property in Europe‖, published by Sweet & Maxwell (2002), pages 506

stated that, ―a trademark is a badge, in the widest sense, used on or in relation to goods,

so as to indicate source‖24 With necessary information presented on a trademark, consumers could know the producers, place of origin and they could find out the products they need For example, some collective marks such as Hoa Loc mango, Cho Gao dragon-fruit, Ngu Hiep durian or Ba Vi milk, Bat Trang pottery… could indicate the origin of the manufacturers and place that products be produced For the proprietor

of trademarks, the purpose of building a trademark is to point out distinctly the origin

or ownership of the goods to which it is affixed; to secure to the proprietor, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product

Quality assurance

There are some of the different perspectives of modern authorities with the function of trademark - guarantee of quality In some countries like USA, Philippines25… a trademark is a ―creative silent salesman‖26

- ―the conduit through which direct contact between the trademark owner and the consumer is assured‖27

A trademark stimulates sales by creating goodwill and assures buyers that all goods bearing the same marks have the same quality It is not only a symbol of origin but also a symbol of quality assurance and the reputation of the trademarked goods or services28

Advertising and marketing

24 LTC Harms, ―The enforcement of intellectual property right: A case book‖, WIPO, 2005, p.109

25 http://pinoy-business.com/intellectual-property/trademarks-and-trademark-law-functions-of-trademark (Last visited on 15/06/2013)

26 LTC Harms, ―The enforcement of intellectual property right: A case book‖, WIPO, 2005, p.111.

27 http://pinoy-business.com/intellectual-property/trademarks-and-trademark-law-functions-of-trademark (Last visited on 15/06/2013)

28

Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union law and Vietnamese law", pages.39

For example, albeit there are many types of mobile phone which produced by many manufacturers, users prefer

to choose iPhone because they are not only noticed by the origin of the products (Apple Corporation); on the other hand, they are assured of quality and persistence of this product

Trademarks play an important role in advertising It is normal for consumers to make purchases based on the continuous influence of advertising The way in which trademarks promote this process is based on the ability to distinguish and identify goods and services Trademarks are a concise way to refer to the products Thus, trademarks become the channel to attract customers and introduce necessary information on the products such as quality, origins… Besides, due to the cost of advertising, especially through the electronic media, the use of the trademark would reduce the amount of information conveyed

Economic functions

Trademark is an intangible and a valuable asset of the enterprise Its value is best expressed through the licensing trademarks or other activity like franchising or through the activity of assessment of the competent authorities in the process of evaluating business assets29 In practice, the value of a trademark and a brand are considered the same because the value of trademark could be laid in the aesthetic factors, the level of prestige and buying power of trademark goods and services30 The economic benefit brought by trademarks such as: increasing sales, tightening of customer loyalty, increasing profits and income for businesses, expanding and maintaining market, increasing production and sales of goods and increasing the value of the product by the consumer to purchase a product's reputation31 Besides, trademarks reward the manufacturer who consistently produces high-quality goods and they thus stimulate economic progress32 Some of the proof can be seen in the franchising activities in Vietnam recently such as: in 2005, Unilever Group bought toothpaste brand P/S of Phuong Dong company with US$5 million; Kinh Do Corporation bought brand Wall's ice cream for just US$ 15 billion (a brand is owned 52% market share)33

30 Phan Ngoc Tam (2011), "Protection on well-known trademarks - a comparative study between European Union law and Vietnamese law", pages.46

31

http://thongtinphapluat.vn/vi/news/Phap-luat-dan-su/Vai-tro-cua-thuong-hieu-doi-voi-doanh-nghiep-1508/ (Last visited on 20/06/2013)

32 Guy Tritton, ―Intellectual property in Europe‖, published by Sweet & Maxwell (2002), pages 507

33 bui-ram.htm.htm (Last visited on 17/06/2013)

http://nhuongquyen.org/tin-tuc/981_1158/Thuc-trang-mua-ban-thuong-hieu-tai-Viet-Nam-duong-quang-hay-Besides mentioned functions of trademarks, some studies expand the roles of trademarks with other functions like: helping consumers to express lifestyle34; to segment market, to create a product-oriented and meaningful35

All in all, because of those significant functions, the trademark disputes occur more frequently and severely, lead to the establishment the intellectual property right protection system strong enough to protect those values of trademarks

1.1.3 Trademark protection

Protection of IPR is the act of the state - through the legal system - to establish the rights of owners of IPR, including copyright, rights related to copyright and IP rights and plant variety rights36 So, the trademark protection is the act of the state, via regulations of intellectual property legislation such as: protection conditions; establishment of IPRs to trademarks; protect the rights of the trademark proprietor, content and limitation rights of trademark proprietor, etc To be protected, except for well-known marks, the other trademarks need to be registered and be granted the certificate by the competent authority Rooted in the certificate, the proprietor will use

it like the evidence which prove that he has the rights to his trademark and prevent the infringement of the defendant

When the proprietor has the certificate, he has the exclusive rights of his trademark According to Civil Code 2005, trademarks are a type of asset, so the owner has the rights to possess, use and dispose of The rights of trademark owners are regulated by the Article 123.1 and entail clearly into the Article 124.5 and chapter X of the IP Law Besides, the Article 125 regulates the right to prevent others from using trademarks; however, there are circumstances in clause 2 that the proprietor does not have the rights

to prevent others from performing

Thus, understanding the protection of trademarks is the essential issue in defining the rights and obligations of the subjects; term of protection in a trademark dispute settlement

1.2 Trademark dispute settlement

1.2.1 The concept of “trademark dispute”

According to some dictionaries, ―dispute‖ means ―a conflict or controversy; a conflict

of claims or rights; an assertion of a right, claim, or demand on one side, met by contrary claims or allegations on the other37‖ or means that ―an argument or a disagreement between two people, groups or countries, discussion about a subject where there is disagreement 38‖ In summary, based on the definitions above, the term

of ―dispute‖ can be understood as a conflict, controversy or a disagreement between parties about a certain benefit or rights

In fact, the term ―intellectual property dispute‖ or ―trademark dispute‖ was not explained by the IP Law ―Intellectual property dispute‖ is considered as a kind of civil dispute falling under the court‘s jurisdiction in the Article 25.4 and Article 29.2 of the

CP Code Under the Dictionary of law, ―civil dispute‖ means:

The dispute over the rights, benefits and obligations of legal entities in civil law relation such as disputes in the signing, execution and payment of the purchasing agreement, investment, technology transfer , transportation, insurance or in the implementation of personal rights is itself associated with the property relations such as copyrights, inventions, patents, in divorce, inheritance, etc 39

Based on the definition of civil dispute, the term ―intellectual dispute‖ was defined as follows:

37 Black‘s Law Dictionary, Second pocket edition, 2001, pages 211

38 Oxford Advanced Learner‘s Dictionary

39

Black‘s Law Dictionary, Second pocket edition, 2001, pages 532

―Disputes over intellectual property arising directly from the subject of

intellectual property or commercial transactions and relationships related to the extraction of objects of intellectual property, such as in the case establishment, merger, consolidation of joint venture company, technology transfer agreements, general contract (EPC), and contracts related to intellectual property (research contract and labor contract)” 40

Therefore, trademark dispute can be understood that is a conflict occurs directly from the object of intellectual property are trademarks (disputes on the trademark rights of the proprietor) or arises from trade transactions and relationships related to the exploitation of trademark like licensing of the trademark, franchising and so on Those might occur from the process of registration to the exploitation, use and dispose of trademarks

1.2.2 Features of a trademark dispute

Because an intellectual property dispute in general or trademark dispute in specific is a kind of civil dispute so it carries some typical features like follows:

Trademark dispute as a civil dispute has a nature of privacy: Those disputes occur

between private-to-private and parties use methods of self-determination of the subject involved in property relations, negotiation and mediation method; the court has the jurisdiction to resolve only if it has the request of the parties

Almost all of the trademark disputes are complicated: There are many reasons entail

into appearing this feature One of the reasons is the nature of the trademark dispute occurs from an object which quite new and inadequate information for citizens So, disputing parties might not have adequate perspective with their rights and aware of the infringement of the other party In addition, those disputes require the subject who has

40 U Thi Bach Yen (2006), ―Law on protection of intellectual property right – Practical application in Ho Chi Minh courts‖, master‘s thesis, p.11

the jurisdiction of resolving dispute must have a professional expertise in defining the object and nature of that dispute

Trademark disputes have the nature of “multinational” 41

: Rooted in the object of the

dispute is trademarks, which is registered by international legislation or national law;

so, the trademark disputes will be subject to the international legislation like treaties, law on which it is protected or the national legislation Moreover, the nationality of the proprietors or the places of occur dispute could be very large are the reasons leading to the multinational feature of trademark disputes

Trademark disputes need to be highly confidential 42 : Like other object of the

intellectual property such as copyright, patents, trademark is also a valuable asset of the enterprise It not only plays a distinctive role but also a representative of quality, prestige and the orientation43 of the trademark owner Hence, the dispute requires the necessary security and best dispute settlement mechanisms to ensure that requirements

It can be concluded that, the aforementioned features of the trademark disputes will govern the selection of great ways to solve most appropriate for each particular dispute The party will decide whether these factors should be given priority in dispute to choose the resolutions which meet the requirements of the situation

1.2.3 Subject and object of a trademark dispute

Based on the concept and the features of a trademark dispute, it can recognize the subject and the object of a trademark dispute as:

Subject of a trademark dispute

41 U Thi Bach Yen (2006), ―Law on protection of intellectual property right – Practical application in Ho Chi Minh City courts‖, master’s thesis, pages 11 and the article ―Intellectual property disputes settlement via way of

arbitration or mediation‖, Lawyer Nguyen Hoan Thanh, pages.1

42 Nguyen Hoan Thanh, The article ―Intellectual property disputes settlement via way of arbitration or mediation‖, pages.1

43

Section 1.1.2 this thesis

Because a trademark dispute is considered a civil dispute, its subject will bring the nature of privacy It means that the dispute is mentioned only which is occurring between private-to-private disputing parties and do not have the participation of state authorities (if it has then that is an administrative dispute or a criminal dispute) Under the Civil Code, the subject of civil law relations contains individuals, legal entities and other subjects44 In addition, according to Decree 103/2006/ND-CP, the subject of trademark dispute can be international organizations and individuals who meet the conditions for the protection of IPR in Vietnam under the international treaties to which Vietnam is a member45

Object of a trademark dispute

Because trademark is a type of property rights which regulated in the Article 181 Civil Code, the object of a trademark dispute is the dispute of ownership rights of the trademark Hence, the dispute might occur in process of possession, use and disposition

of trademarks

1.2.4 Classification of trademark disputes

Although Vietnam has participated in a lot of bilateral and multilateral treaties on IP, most of regulations in those treaties do not entail in categorizing trademark disputes Otherwise, those regulations usually concentrate on the conditions to register trademark46, trademark protection and trademark enforcements like in the TRIPs47 or BTA48 So, classifying trademark disputes is regulated by domestic legislation

In the U.S, trademark dispute can be classified into disputes in trademark Trial and Appeal Board (TTAB) proceedings (such as opposition to a pending application;

cancellation of an existing registration49) and disputes in court proceeding like claims

of infringement, dilution and unfair competition50 Unfair competition belongs to the regulations of each stage; for example, New York Courts recognize ―two theories of common law unfair competition: palming/passing off and misappropriation‖51

These types of behaviors are essentially misrepresentation that damage the goodwill and reputation of the party who is the subject of the misrepresentation

In chapter V, Trademark Law of the People‘s Republic of China52 also regulated disputes concerning registered trademarks Trademark disputes come under the Board's jurisdiction Disputes might occur in the opposition, cancellation the registered trademark Besides, China also regulated the disputes of trademark license contracts, so

a trademark registrant may license others to use its trademark by signing a trademark license contract To dispute a trademark Office's rejection of an application for assignment or renewal, an applicant has fifteen days to file with the Board an Application for a Review of an Assignment (or Renewal) Rejection53

In Vietnam, there are no particular articles that classifying of trademark disputes in the

IP Law However, there are some studies of the Vietnamese authors wrote this issue Intellectual property disputes may be divided into categories: disputes in order to determine the owner or legal use of IP objects; dispute over the violation IPR; dispute over transferring to others the right to use or expand the volume, range from publication date of the application; disputes over inheritance rights of IP; disputes over service contracts representing IP; disputes over the right to apply for a certificate of protection of IPR; disputes arising out of IPR for transfer of ownership or right to use

IP objects (also called license contract) 54; or be divided into disputes arising in the

49

―Pratical Skills – Basics of IP Law‖, Co-sponsored by the IP Law Section and the Committee on Continuing Legal Education of the New York State Bar Association, pages.192

50 ― Pratical Skills – Basics of IP Law‖, see (47), pages.193

51 ―Pratical Skills – Basics of IP Law‖, see (47), pages 177

52

Trademark Law of the People's Republic of China was adopted at the 24th Meeting of the Standing Committee

of the Fifth National People's Congress on August 23, 1982 (amended 2001)

53 Paul B Birden, ―Trademark Protection in China: Trends and Directions‖, pages 467

54 Nguyen Nhu Quynh, ―Some problems of intellectual property disputes settlement in civil proceedings‖, published in Journal of Law, special issues of the Civil Procedure Act 2005

process of establishing the right to register the trademark; disputes arising in the infringement of the IP rights of the trademark; disputes over the use of the trademark in practice55

The CP Code based on the beneficial purpose of the disputes, divides the IPR dispute into: Disputes over IPR or technology transfers56; disputes over IPR or technology transfers among individuals or organizations, which are all for the purposes of profits57 Those disputes were detailed in the Joint Circular 0258

Under those mentioned analyses above, it can be concluded that trademark disputes can

be put into categories:

- Dispute over the registering process

In this process, there are specific disputes like: disputes over the right to register trademarks; disputes over the priority right to applications for registered trademarks; disputes over the registering trademark with trade names, registered trademarks or geographical indications; disputes over the registering trademark with the registered trademark which was terminated in cases of termination of validity of protection titles Easily seeing that, those disputes occur with the purpose of establishing the ownership rights of the trademark

There are several reasons why significant disputes outbreak in this process The first reason is that the applicant did not spend enough time to make a preliminary investigation registered trademarks which can be identical or confusing with his marks Besides, the applicant usually researches his marks with the registered trademark in the trademark information system and forget the research on the confusion capability his mark with geographical indications or trade names The second reason is from the

55

Nguyen Thi Thuong (2012), Bachelor‘s thesis, ―Trademark dispute settlement under Vietnamese law – situation and resolution‖, pages 26 – 30

56 Article 25.4 Civil Procedure Code 2004

57 Article 29.2 Civil Procedure Code 2004

58

Section A.I.3 Joint Circular 02/2008

authority office which has the competence of granting protection title when the information of registered trademark did not update and publish on time and in necessary media tools (newspapers or on the internet) or the bad connection between the information of application in domestic office and in the international office lead to the information of the first applicant or the priority rights will not considered correctly

Besides, some people did not aware carefully of the role of registering the trademark in the competent authority, so he did not file a trademark application This dispute usually occurs between different legal systems in the regulations of priority rights For example, in EU when people file a CTM at OHIM, they will have a right to file under the principle ―first to file‖, the first registrant will have the right to file the trademark Meanwhile, in almost all of EU countries, the trademark may be protected based on the use of the owner That means they admit the principle of ―first to use‖, the first user will have to right to register the trademark The dispute easily to occur if one person wants to file his mark in OHIM, but there are still the proprietors of the earlier trademark59 or earlier right, then his application may be opposed by them

- Dispute over the rights of the trademark owners

Under the article 181 Civil Code, the rights of a trademark are a type of property rights

So, the proprietor of the trademark has the rights to possess, to use and to dispose60 However, because of the nature of invisible61 of trademark rights, the rights to possession are less outweigh than the rights to use and dispose of Therefore, a lot of disputes occur in this process

When the trademark registrant is granted the protection certificate, he has the exclusive rights of using the trademark such as fixing the protected mark on goods; circulating,

59 Article 8.2 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trademark (amended Regulation No 40/94), ―…trademarks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark‖

60 Article.164 Civil Code 2005

61 It can explain that the nature of invisible is feature of a trademark because we cannot touch, keep the trademark Things like marks in goods or services are just external expression of trademark rights For example,

we can tear a trademark in a product but the rights of the trademark still

offering, advertising for sale or stocking for sale goods bearing the protected mark… However, there are some circumstances which lead to the dispute The first case like other people also has the right to use the trademark which is identical or confusing with the protected trademark This might occur if both trademarks are granted the protection certificates62; the trademark which is protected outside Vietnamese country disputes with the domestic trademark; the trademark which is considered a well-known mark in other countries dispute with the domestic trademark; disputes between the protected trademark with trade name, geographical indications63; disputes over right portions of co-owners64

- Disputes arising from acts of unfair competition

There are some disputes from acts of unfair competition such as using the trademark causes confusion as to the origin, production method, utilities, quality, quantity or other characteristics of goods or services; using trademark if users are representatives or agents of the mark owners and such use is neither consented to by the mark owners nor justified; registering or possessing the right to use or using domain names identical with or confusingly similar to trademark65 This is new disputes and tends to increase

in the recent years

- Disputes over contracts for licensing of trademarks or disputes over contracts for industrial property representation services

Based on the disposition right of the trademark owner, the owner may transfer one part

or all rights of the trademark to individual, legal entities or other subjects So, the proprietor may transfer his rights by a trademark right assignment contract or a license contract Like other types of contracts, the disputes may appear because of the violation

62 Dispute between the trademark ―Cadivi‖ and ―Cadi-sun‖

63 Those disputes differ from the dispute in the registering process because the owner of trade name or geographical for many reasons cannot consider the violation of the mark in the registering process and only after the trademark is protected, they recognize and make argument with the trademark proprietor

65

http://www.vnnic.vn/tranhchaptenmien/thongke/tranh-ch%E1%BA%A5p-li%C3%AAn-quan-%C4%91%E1%BA%BFn-t%C3%AAn-mi%E1%BB%81n-honghagascom (Last visited on 30/06/2013)

of rights and obligations in the contracts or disputes with the third-party on the rights of the trademark Besides, disputes in the representation services contract also occur regularly Some usual cases such as: the violation of the representatives or the agents in using or filing trademark application in domestic country without the consent of the trademark owner

- Other disputes

Besides trademark disputes mentioned above, there are other disputes such as

trademark inheritance disputes If the trademark right is considered as a property right and is a type of asset, the owner has the right to bequeath In case there are more than two inheritors of trademark and they cannot make agreement on who is the owner of the trademark or who is the subject to file the trademark application, the dispute may appear and be resolved under inheritance law

It can be concluded that, together with the development of the economy and society, the trademark dispute occurs increasingly The dispute not only occurs in national borders but many trademark disputes appear in other countries Because of the features

of a trademark dispute, those disputes are very complicated and need to be considered carefully by the competent authority; so that those disputes are settled consistently

1.2.5 The distinction between the trademark dispute and the trademark infringement

“An actual dispute will not exist until a claim is asserted by one party which

is disputed by the other” 66

Until now, there has been a mistake between the trademark dispute and the trademark infringement This misunderstanding entail into the act of choosing the inconsistent mechanism to resolve the trademark dispute In facts, the number of case about trademark is settled by the People‘s Courts lesser than by other measures such as administrative procedures67

66 Foskett, David.,―The law and Practice of Compromise‖, Sweet & Maxwell, London, 1989, p.5

bachelor thesis, pages 40

Infringement means “a breaking into; a trespass or encroachment upon; a violation of

a law, regulation, contract, or right‖68 So a trademark infringement means ―violation

of trademark terms by another body that encroaches on the privileges and rights of the owning body‖69 In contrast, a trademark dispute like mentioned70 above is a conflict or controversy between two parties in defining who have the rights to the trademark We may distinguish those terms based on following criteria:

Firstly, the ranges of trademark dispute are greater than the ranges of trademark

infringement The trademark infringements contain the acts under the Article 29.1 IP Law 2005 While the trademark disputes may occur in the process of establishing the trademark right, the process of using and dispose of the trademark rights and other disputes (inheritance trademark dispute)71

Secondly, there is a difference from the legal trademark relations of the parties Parties

have conflicts of rights and obligations which aim to define who is the proprietor of the trademark occur in trademark disputes while in the trademark infringement, one side has the proof to request the competent agency handling the infringement of the other side

Finally, there are different measures to resolve the dispute and the infringement of

trademarks Whereas the trademark infringement can be settled by the administrative procedure, civil procedure and criminal procedure or right to self-protection, the trademark disputes depend on types of dispute to have different measures If the dispute relates to the contracts or inheritance trademark dispute, it will be settled by the civil procedure Otherwise, other trademark dispute may use measures of resolving the trademark infringement

In short, determining what a trademark infringement is and what a trademark dispute is led to apply correctly the measures of handling the dispute Because the incorrect

68 Black‘s Law Dictionary, Second pocket edition, 2001, pages 302

69 Black‘s Law Dictionary, Second pocket edition, 2001, pages 531

70 Section 1.2.1 this thesis

71

Section 1.2.4 this thesis

application not only did not solve the request of the owner but it also affected other social relations

1.2.6 Mechanism of trademark dispute settlement

The dispute settlement mechanism of IPR requirements based on IPR enforcement in the TRIPs, countries are building for itself a dispute resolution mechanism for IPR in accordance with the conditions and the economic and societal characteristics of each country Essentially, the IP dispute resolution mechanisms are the following: the dispute settlement mechanism jurisdiction (including litigation and arbitration); dispute resolution mechanism non-jurisdiction (consultation, brokerage and mediation) and other mechanisms72

In the U.S, any person who in connection with any goods or services which cause confusion, misrepresents the nature, geographic origin of the trademark proprietor shall

be liable in a civil action if he believes that he is or likely to be damaged73 A trademark dispute may occur in the TTAB proceeding (Trademark Trial and Appeal Board) and in the federal or state court proceeding A dispute is settled in the federal court if the trademark is registered federally or the diversity of the parties; otherwise a state court will be chosen The claim may be an infringement, dilution and unfair competition74

Under Vietnamese law, the provisions of the dispute settlement mechanism of trademark are abundant and consistent with international practice of dispute resolution mechanisms Outside the jurisdiction mechanism such as negotiation, mediation is the jurisdiction mechanism (in the People's Court proceedings and arbitration)75

72 Duong Dinh Cong, ―Enforcement of intellectual property right under the law of Vietnam and some countries in Southeast Asia", master‘ thesis (2011)

73

The Langham Act, Section 43

Legal Education of the New York State Bar Association, pages.193

in Southeast Asia", master‘ thesis (2011)

Therefore, because IPR dispute is a civil dispute (in a broad sense so include commercial disputes), the resolution of this dispute based on the principles, general procedures prescribed in the Civil Procedure Code Hence, a trademark dispute can be settled by the following mechanisms:

1.2.6.1 Trademark dispute settlement via way of negotiation and mediation

Vietnamese people have a proverb, ―making peace is treasured‖76 For a long time, Vietnamese prefer to settle the conflict or the controversy by making a dialogue between the parties or thank to the third party to reach an understanding, instead of filing court litigation Of course, there are significant advantages that a dispute should

be settled by those measures

Negotiation and mediation generally produce or promotes:

Economical: Negotiation and mediation are generally less expensive when contrasted

to the expense of litigation or other forms of fighting

Quickly: instead of taking long period time to get a court date, and multiple years if a

case is appealed, the mediation and negotiation alternative often provides a more timely way of resolving disputes It is very useful for businessman who wants to get on with his work

Mutually satisfactory: parties are usually more satisfied with the outcome that they

agreed upon than a decision of the third-party

Greater control the result: Because they settle their dispute by themselves

(negotiating and mediating), they can predict the result rather than the case is arbitrated

or adjudicated

76

―Dĩ hòa vi quý‖

Preservation of relationship: the relationship of two parties may be lost if the

outcome is stated by a win/lose decision making-procedure By contrast, the negotiation or mediation can preserve a working relationship or be more amicable if it

is terminated77

Confidential: because of the negotiating and mediating by the parties, the dispute can

be kept secret, so the prestige and the business strategies of the parties will be protected

Albeit there are some common points in the negotiation and mediation, they should be

distinguished Negotiation means ―the deliberation, discussion, or conference upon the

terms of a proposed agreement; the act of settling or arranging the terms and conditions of a bar- gain, sale, or other business transaction”78 While mediation (or

reconciliation) means ―a method of non-binding dispute resolution involving a neutral

third party who tries to help the disputing parties reach a mutually agreeable solution‖79 Thus, the negotiation measure is parties negotiate to settle the trademark dispute while if two parties cannot negotiate by themselves, there must be a third party involved; then it is the mediation

1.2.6.2 Trademark dispute settlement via way of jurisdiction

Although the mediation and negotiation have a lot of merits in settling a trademark dispute, they still exist certain shortcomings That is the negotiation or mediation process can be occurred and the decision of the third-party will bind depending on the parties‘ consent80 However, this weakness of two mentioned measures will be filled by the mechanism of jurisdiction, it contains:

77

http://www.mediate.com/articles/mediationfaq.cfm ( Last visited on 12/06/2013)

78 Black‘s Law Dictionary, 2001, Second pocket edition, pages 472

79 Black‘s Law Dictionary, 2001, Second pocket edition, pages 444

80 Nguyen Thi Thuong (2012), "Trademark dispute settlement under Vietnamese law – situation and resolution‖,

bachelor’s thesis, pages 34

- Settlement of disputes through courts

- Settlement of disputes through arbitrations

The common point of two measures above is the binding which disputing parties must comply with the procedures of the court or the arbitration center and the decision of the judges or the arbitrator, also

All over the world, especially in developed countries, the court litigation measures are the first priority in settling a civil dispute Besides the feature of binding is an advantage of the jurisdiction mechanism, with each measure there are a lot of strong points as follows:

Courts: democracy, the ability to maintain and ensure the fairness of the institutions of

civil procedure compared with other procedures, impose measures to prevent acts of trademark infringement by effective emergency temporary measures and satisfactorily resolve compensation issues81

Arbitrations: the arbitrator‘s decision is final value and the ultimate effect; the

information of the case is confidential; the measure is flexible and save time; preserve the business relationship between the disputing parties; using the experts in the intellectual property field to solve the disputes and be supported and ensured the legality by the court82

Although both mentioned measures belong to the jurisdiction mechanism, the application of each measure is different If the court is the judicial body of the State, on behalf of each country decided to submit the dispute to trial in civil proceedings specified in the Civil Procedure Code, the arbitration center is a non-governmental

82 Bach Thi Le Thoa, ―Dispute settlement by the arbitration and the supporting mechanism of the court‖,

available at: http://thongtinphapluatdansu.edu.vn/2009/08/11/3590/ (Last visited on 20/06/2013)

organization, only resolve disputes when the parties have agreed to the selection of referees83

Based on the nature of a civil dispute, it can be concluded that when a trademark dispute occur, disputing parties can choose the appropriate measures such as negotiation, mediation or via litigation in the court or arbitration to settle which consistent with their purpose Moreover, it should have a right perspective that the mentioned mechanisms can be combined and supported together in a dispute settlement like the mediation can be applied in the court litigation, for instance

1.3 SUB-CONCLUSION

The use of trademarks dates back thousands of years and develops altogether with the international commercial economy Although there are many concepts of trademark, the common point is the distinctive function of trademarks Besides, other trademarks functions like the badge of origin, quality assurance and advertising… are the motivation that leads the trademark disputes occurring frequently and severely For almost all of the countries in the world, a trademark will be protected when it is registered in the competent authority, for the proprietor will be established their right to the trademark Based on the nature of the property rights, the owner can possess, use and dispose of the trademark However, the trademark disputes also occur through the process of the proprietor‘s use and are classified in categories such as the dispute in the registering process, the dispute in the exploitation and use of the trademark or the dispute in the disposition of trademarks

Therefore, to settle those disputes, each country regulates consistent mechanisms to handle quickly and satisfactorily the purpose of disputing parties Differ from the mechanism of handling the trademark infringements, with the nature is a civil dispute,

a trademark dispute can only settle by the civil procedures like the mechanism of negotiation, mediation or via the litigation in the civil courts or the arbitrations For a

83

http://thongtinphapluatdansu.edu.vn/2009/08/11/3590/ (Last visited on 20/06/2013)

lot of advantages of each measure, disputing parties can choose the best suitable tool to protect their rights or combine those measures during the trademark dispute settlement

In summary, to understand and determine whether those measures can qualify consistently the trademark dispute settlement, Chapter II will explain with the regulations in Vietnamese Law or the application in practice Based on those analyses, this chapter also presents solutions to complete the law on trademarks dispute settlement, from the experiences of the European Union law

CHAPTER 2

VIETNAMESE LAW ON TRADEMARK DISPUTE SETTLEMENT –

SHORTCOMINGS AND REMEDIES

2.1 Mechanism of trademark dispute settlement in Vietnam

2.1.1 General provisions of trademark dispute settlement in Vietnamese law

Civil Code 2005

In civil code 2005, the provisions of IPR are in the Chapter XXXV, Part VI Compare with the Civil Code 1995, there are only general provisions on trademark rights in Civil Code 2005 such as basic principles in civil relations and trademark ownership84 So, it can recognize that trademark rights in the nature are civil rights and comply with the regulations of the civil code However, the rights of the trademark like using, preventing, or transferring were regulated in detail in the IP Law In the author‘s opinion, it is necessary to cut provisions on the rights of the trademark owners in the Code, for it is detailed in the specialized law and avoid the unnecessary duplication

In regulations of dispute settlement, basic principles like principles of free and voluntary undertaking and agreement85, the principle of conciliation86 of the Civil Code

2005 are also the basic principles in settling a trademark dispute

IP Law (amended 2009)

IP Law come into effect from 01/07/2006, collected the provisions of intellectual property into a single law Accordingly, trademark is one of the IP objects, which belong to the scope of IP Law Differ from the provisions of Civil Code 2005, IP Law

84 Article 751 and Article 753 Civil Code 2005

85 Article 4 Civil Code 2005

86

Article 12 Civil Code 2005

contain the nature of the substantive law and formality law87 IP Law regulates the rights and obligations of the trademark right proprietor and has defined sequences to establish trademark rights and how to enforce these rights Accordingly, when a trademark dispute occur, disputing parties and competent authority shall base on the protection title which is granted with the certain conditions in IP Law to make the correct decision In addition, IP Law contains some innovative provisions rather than the CP Code such as the provisions of provisional urgent measure; compensation for damage…

Albeit there are significant efficient provisions of IP Law, there is also some provisions lack of detailed and difficult to apply in practice This leads to the trademark dispute settlement less effective

It can be seen that, CP Code is considered as the first and main legal basis to resolve a trademark dispute in the Civil People‘s court

CA Law

Because a trademark dispute is a civil dispute (civil in broad sense), so it can be settled

by the commercial arbitration under the Article 2 CA Law Replaced the Ordinance on

thesis, p.16

88

Civil Proceedings Law of Vietnam Syllabus (2012), HCM university of law, published by Hong Duc, p.22

Commercial Arbitration No 08/2003/PL-UBTVQH 11, CA Law contain sufficient legal basis to settle commercial disputes

2.1.2 Dispute settlement via way of negotiation, mediation

2.1.2.1 Negotiation

Without the presence of the third party, negotiation is the mechanism that disputing parties discuss, negotiate to meet the agreement and belong to the voluntary of the parties to conduct the obligations89 So, Vietnamese law only refers to the basic principles which instruct the civil relations instead of particular regulations

In the CP Code, right to decision-making and self-determination is one of the basic

principles in the process of resolving a civil case: ―In the course of settling civil cases

and/or matters, the involved parties shall have the right to terminate or change their requests or voluntarily reach agreement with one another, which is not contrary to law and social ethics” 90

So, the common point in those provisions is the recognition of the legislation in considering negotiation is a measure to settle a dispute In addition, those provisions also prohibit the negotiation that is contrary to law and social ethics This is essential, especially with a trademark dispute, when the affected parties might be the third party like consumers Thus, if a party ―uses‖ a trademark of the proprietor without his consent and makes fake goods, the proprietor cannot negotiate with the violator to pay the damages, for this is an act of violating the law and this might affect the benefits of the consumers

Besides, negotiation would not only be used as an independent measure but it also could combine with other measures or be used in many processes of settling disputes

In the arbitration proceedings, the parties are free to negotiate, agree on dispute

Law, p.24

90

Article 5.2 Civil Procedure Code 2005 This principle is also referred in the Article 4, Civil Code 2005

resolution91 In the court litigation, the disputing parties have the right to change their request, negotiate to meet agreement92

Although the provisions on the principle of settling a trademark dispute were referred

in many laws93, but in specialized laws on intellectual property, those provisions are still quite vague In the IP Law, there is provision on the right to self-protection of the

proprietor So the proprietor may ―request organizations or individuals that commit

acts of infringing upon IPRs to terminate their infringing acts, make public apologies

or rectifications and pay damages‖94 It mays be considered as a negotiation However, the law only refers this Article like a right to self-protection whereas negotiation is an independent measure In the author‘s opinion, with the significant roles95

and features

of negotiation, it should refer more clearly in IP Law as an independent article like

―measure to self-protection‖ instead of ―right to self-protection‖ Therefore, the recognition of the negotiation mechanism will be clear in this article

2.1.2.2 Mediation

Like negotiation, mediation is considered as a non - bidding procedure in which a neutral intermediary, the mediator, assists the parties in reaching a settlement of a dispute96 Mediation is one of the efficient alternative dispute resolutions without going to a court and is being applied in many legislation systems in the world:

Based in Geneva, Switzerland, the WIPO Center97 was established in 1994 to promote the resolution of intellectual property disputes through alternative dispute resolution

91 Article 9, Commercial Arbitration Law 2010

92

Article 5.2 Civil Procedure Code 2004

Law, p.44-46

94 Article 198.b Intellectual Property Law 2005

95

Section 1.2.5.1 this thesis

96 Eun-Joo MIN, ‗‗Arbitration, Mediation and Expert Determination - Time- & Cost - Efficient Dispute

Resolution Tools‘‘, Arbitration and Mediation Center, WIPO

97 This is one unit of the International Bureau of The World Intellectual Property Organization (WIPO) See more at: http://www.wipo.int/amc/en/index.html (Last visited on 26/06/2013)

(ADR) 98 Those ADR contain mediation, arbitration, expedited arbitration and expert determination99 Mediation in WIPO center can be applied as an independent measure

or a procedure followed the arbitration measure WIPO center have been used in disputes covering a variety of fields, including trademark co-existence agreements, domain name disputes and cases arising out of agreements in settlement of prior multi-jurisdictional IP litigation100 Trademark cases submitted to the WIPO center have included both contractual and non-contractual disputes101 Since establishing, WIPO center proved that it is an efficient and affordable means of resolving intellectual property disputes than through court litigation, especially with trend to occur new types

of disputes such as cross-border and cross-cultural disputes102

To date, WIPO Center has administered over 350 mediations, arbitration and expert determination cases103 In WIPO mediation, 71 percent of cases settled, 23 percent did not and 6 percent are pending From 2005 to 2009, The WIPO Center – having administered over 80 mediations and 110 arbitrations and 41 percent of the administered procedures were mediation cases in there104

In the UK, mediation is also considered as a kind of ADR Intellectual Property Office (IPO) of the UK plays the role to conduct the mediation IPO can help to resolve disputes involving unregistered rights, such as copyright and design rights, as well as patents, trademarks and registered designs105 With trademark disputes, IPO mediation just resolves the trade mark opposition and invalidation proceedings on relative grounds106 and may not be an alternative to litigation include trade mark disputes

98 http://www.wipo.int/amc/en/center/advantages.html (Last visited on 26/06/2013)

99 http://www.wipo.int/amc/en/center/wipo-adr.html (Last visited on 26/06/2013)

100

http://www.wipo.int/wipo_magazine/en/2009/03/article_0008.html ( Last visited on 26/06/2013)

WIPO, p.1

102 http://www.wipo.int/wipo_magazine/en/2009/03/article_0008.html ( Last visited on 25/06/2013)

103

http://www.wipo.int/amc/en/center/caseload.html ( Last visited on 25/06/2013)

104 http://www.wipo.int/wipo_magazine/en/2009/03/article_0008.html ( Last visited on 25/06/2013)

105 Concept House Cardiff Road Newport NP10 8QQ, ―Mediation of Intellectual Property Disputes and IPO Mediation Service‖, published on March 2013, p.3

106

http://www.ipo.gov.uk/types/tm/t-other/t-object/t-afterpub/t-oppose.htm ( Last visited on 28/06/2013)