By Dr. Bui Duc Anh and Lawyer Nguyen Nhu Hai – UniLaw LLC

INTELLECTUAL PROPERTY LAW INTERNATIONAL IN VIETNAM – UNILAW

Exclusive Rights to International Cinematic Works: The Landmark Battle over Digital Distribution in Vietnam

In a significant case involving international intellectual property rights, the Ho Chi Minh City High People’s Court presided over a dispute regarding the “Exclusive Right to Exploit Cinematographic Works within the Territory of Vietnam”. The case featured a Vietnamese plaintiff, Company T4, and a well-known digital platform defendant, Company V (the operator of tv.zing.vn), alongside a Hong Kong-based related party, Sea Yuen Limited. Company T4 claimed it held exclusive exploitation rights for three popular international series: “The Story of MingLan,” “Princess Silver,” and “Legend of The Phoenix” across all platforms in Vietnam, including television and internet services. The plaintiff discovered that Company V had been uploading and streaming these episodes without permission, causing substantial commercial damage. T4 sought compensation totaling 45 billion VND based on the contract values for these exclusive licenses.

The defendant, Company V, countered by arguing that their website operated as a social network and that the content was uploaded by independent users. They claimed they were not legally required to monitor every user-generated upload for copyright compliance. However, the court’s investigation revealed that the licensing chain from the original producers to Sea Yuen Limited and then to Company T4 was legally sound and had been authenticated through consular legalization. Furthermore, T4 had obtained the necessary import permits from the Ministry of Culture, Sports, and Tourism. The court ultimately rejected the “social network defense,” finding that Company V had indeed used the works without the owner’s consent. The final judgment required Company V to pay Company T4 over 14.3 billion VND in damages and attorney fees, and to issue a public apology in three consecutive issues of major newspapers. This outcome highlights the rigorous scrutiny Vietnamese courts apply to the chain of title for international IP assets and sets a precedent for digital platform liability in Vietnam.

The Evolution of Intellectual Property Framework in Vietnam: Aligning with Global Standards

Vietnam’s intellectual property regime has undergone massive shifts to meet international commitments, particularly following its accession to the World Trade Organization (WTO) and participation in modern trade agreements like the CPTPP. The primary legal instrument is the Law on Intellectual Property (Law No. 50/2005/QH11), which has been significantly amended in 2009, 2019, and most recently in 2022 to keep pace with global technological and commercial advancements. For an intellectual property attorney, these updates are critical because they define how rights are established for foreign entities.

Article 6 of the IP Law serves as the bedrock for establishing these rights. As a vietnam intellectual property lawyer, we often emphasize that while some rights are automatic, others require formal action.

Article 6. Grounds for generation and establishment of intellectual property rights

1. Copyright shall arise at the moment a work is created and expressed in a certain material form, regardless of its content, quality, form, mode and language and whether it has been published or not, registered or not.

2. Related rights shall arise at the moment a performance, audio and visual recording, broadcast or satellite signal carrying encrypted program is fixed or performed without causing prejudice to copyright.

3. Industrial property rights shall be established as follows:

a) Industrial property rights to inventions, industrial designs, layout designs, trademarks shall be established on the basis of a decision on the grant of a protection title by the competent state agency… or the recognition of international registration under an international treaty to which the Socialist Republic of Vietnam is a member.

b) Industrial property rights to a trade name shall be established on the basis of lawful use thereof.

c) Industrial property rights to a business secret shall be established on the basis of having lawfully obtained the business secret and keeping it secret.

d) Rights to prevent unfair competition shall be established on the basis of competitive activities in business.

This article explains that things like books or songs are protected the moment they are made, even if you don’t sign a paper. However, for inventions or brand logos, you generally must get an official certificate from the government or have it recognized through international treaties to be safe.

Protecting the Creative Spirit: Copyright and Related Rights for Foreign Works

For international clients, copyright protection is often the first line of defense. The scope of protected works in Vietnam is broad, covering everything from literature and music to computer programs and scientific data. Under Decree 17/2023/ND-CP, foreign organizations and individuals enjoy protection if their works are published first in Vietnam or are protected under international treaties like the Berne Convention.

Article 14. Types of works eligible for copyright protection

1. Literary, artistic and scientific works eligible for copyright protection include:

a) Literary and scientific works, textbooks, teaching materials and other works expressed in written words or other characters;

b) Lectures, addresses and other speeches;

…e) Cinematographic works and works created by a process analogous to cinematography;

…m) Computer programs and data collections.

This law lists what can be protected by copyright, meaning you have the exclusive right to decide how your writing, movies, or computer code are used. It ensures that if you create something original, no one else can just copy it and sell it as their own.

In the digital age, “Related Rights” are equally vital. These protect the investments of performers, producers of audio/video recordings, and broadcasting organizations. Any vietnam IP lawyer will point out that unauthorized distribution of fixed recordings on the internet constitutes a clear violation of these rights.

Strategizing Brand Protection: Trademark Registration for Global Businesses

A vietnam intellectual property lawyer plays a pivotal role in assisting international corporations like Tyson Holdings Limited or Alexander Klein to navigate the trademark registration process. Vietnam follows the “first-to-file” principle, meaning that the first person to file an application for a mark generally has the superior right to it. This makes early registration critical for foreign brands.

Through the Madrid Protocol, international applicants can designate Vietnam in their registrations, simplifying the process of obtaining protection across multiple jurisdictions. For instance, Tyson Holdings successfully protected the “SEA HORSE” brand for mattresses and furniture by ensuring their applications were handled correctly through specialized intellectual property attorneys in Vietnam.

Article 74. Distinctiveness of trademarks

1. A trademark shall be considered distinctive if it consists of one or several easily noticeable and memorable elements, or many elements forming an easily noticeable and memorable combination.

2. A trademark shall be considered as non-distinctive if it is a sign falling into one of the following cases:

…e) Signs which are identical with or confusingly similar to another person’s trademark protected for identical or similar goods or services on the basis of an application with an earlier priority date or filing date.

This means your brand logo or name must be unique and easy for customers to remember so it doesn’t get confused with others. If your logo looks too much like a brand that was registered before yours, the government will likely reject your application.

Defending Well-Known Marks: The “Asanzo vs Asano” Precedent

The protection of “Well-known marks” provides an exception to the strict registration requirement. Under Article 75, a mark is protected based on its widespread use and reputation among consumers in Vietnam. A notable case involved the dispute between “Asano” (a registered mark) and “Asanzo”. The plaintiff, Company Đ, owned the “Asano” trademark for electronic products. The defendant, Company A, used “Asanzo” on its website and products. Although Company A had its own registration for “Asanzo” (text only), the court found that their use of a stylized logo with similar colors and fonts created a “likelihood of confusion” for the average consumer. The court emphasized that the overall impression, not just the literal spelling, determines infringement.

Article 129. Acts of infringement of industrial property rights to trademarks, trade names and geographical indications

1. The following acts performed without the permission of the owner of a trademark shall be considered as infringement of the right to such trademark:

…c) Use of a sign identical with or similar to a protected trademark for goods or services which are identical with, similar to or related to those for which the trademark is registered, if such use is likely to cause confusion as to the origin of the goods or services.

This law says you cannot use a name or logo that is almost the same as someone else’s registered trademark for similar products. If your branding makes customers think your product comes from the other company, you are breaking the law.

Safeguarding Industrial Innovation: Patent and Design Protection

International innovation requires the shield of patents and industrial design registrations. Foreign inventors often use the Patent Cooperation Treaty (PCT) or the Hague Agreement (for designs) to secure their rights in Vietnam. In the case of pharmaceutical giant MS&D (US), the company sued a local manufacturer, Company ĐVP, for infringing on patents related to “Sitagliptin,” a compound used in diabetes medication. The dispute centered on whether the defendant’s generic products fell within the scope of MS&D’s protected chemical structures.

Vietnamese courts rely heavily on technical evaluations from the Vietnam Intellectual Property Research Institute (VIPRI) to determine infringement in such complex scientific matters. For an intellectual property attorney, preparing these technical comparisons is a core part of the litigation strategy.

Article 126. Acts of infringement of the right to an invention, industrial design or layout design

The following acts shall be considered as infringement of the right of an owner of an invention, industrial design or layout-design:

1. Use of a protected invention, a protected industrial design… within the term of the protection title without the permission of the owner.

This article states that if you have a government certificate for a new machine design or a chemical formula, no one else is allowed to use it while your certificate is valid. Using someone’s invention without asking first is a serious legal violation.

Combating Counterfeits: Enforcement Mechanisms and the Role of a Vietnam IP Lawyer

Effective IP protection is impossible without robust enforcement. Vietnam provides three main pathways for enforcement: civil litigation, administrative action, and criminal prosecution. Most international entities prefer administrative actions through the Market Surveillance Agency or Customs for quick results against physical counterfeits. In cases where a vietnam IP lawyer represents a client, they can request Customs to “suspend customs procedures” for shipments suspected of carrying infringing goods.

Article 216. Measures for control of imported and exported goods related to intellectual property

1. Measures for control of imported and exported goods related to intellectual property include:

a) Suspension of customs procedures for goods suspected of infringing intellectual property rights;

b) Inspection and supervision to detect goods with signs of infringing intellectual property rights.

This allows a brand owner to ask the border police (Customs) to stop and check shipping containers that might be full of fake goods. It is a very effective way to stop counterfeit products from entering the country before they even hit the stores.

Calculating Damages: The Legal Standards for Material and Moral Compensation

When an international client sues for infringement, the calculation of damages is the most contentious phase. Under Article 204, damage is defined as actual loss caused directly by the infringement. A vietnam intellectual property lawyer must meticulously prove the reduction in the client’s profits, the infringer’s illicit gains, or a “hypothetical royalty”.

In a case involving software piracy (PTC vs. Company H), the plaintiff, a US software company, discovered the unauthorized use of its “CREO” engineering software. The court awarded damages based on the value of a full license for each unauthorized installation found.

Article 205. Bases for determination of amount of damages caused by infringement of intellectual property rights

1. In cases where the plaintiff proves that an act of infringement has caused material damage to him or her, he or she shall have the right to request the court to decide on the level of compensation on one of the following bases:

a) Total material damage calculated in an amount of money plus the profit derived by the defendant…;

b) The price of the assignment of the right to use the intellectual property object…;

c) Where it is impossible to determine the level of material compensation… the level of compensation shall be determined by the Court… but shall not exceed five hundred million (500,000,000) dong.

This law explains how a judge decides how much money a victim should get when their ideas are stolen. It can be based on the victim’s lost money, the thief’s extra profits, or a standard fee, but if no exact number can be found, the judge can award up to 500 million VND.

Domain Names and Unfair Competition: Navigating the Intersection of Tech and Law

The intersection of trademarks and internet domain names is a frequent source of conflict. In a dispute between the international platform “SHOPBACK” and a local registrant of “shopback.vn,” the court had to decide if registering a domain name that matches a well-known international mark constitutes unfair competition. The international company successfully argued that the local registrant acted with “bad faith” by redirecting traffic to a competing service.

A specialized intellectual property attorney will utilize Article 130 of the IP Law, which prohibits acts that cause confusion or take unfair advantage of another’s reputation. The court can order the revocation of such domain names and prioritize their registration for the rightful trademark owner.

Article 130. Acts of unfair competition

1. The following acts shall be considered as acts of unfair competition:

…d) Registering or possessing the right to use or using a domain name identical with, or confusingly similar to, a protected trade name or trademark of another person… for the purpose of taking advantage of or damaging the reputation and prestige of the respective trademark or trade name.

This rule stops people from “stealing” website addresses that are the same as your brand name. You cannot register a website name just to trick your competitor’s customers or to hurt the other company’s good name.

Confidentiality and Trade Secrets in the International Workplace

For multinational companies operating in Vietnam, protecting internal data and customer lists is paramount. As a vietnam IP lawyer, we advise clients to implement robust non-disclosure agreements (NDAs) and non-compete clauses. In a matter involving a software provider, a technology sector client, Unilaw helped draft comprehensive agreements defining “Business Secrets” according to the latest 2022 standards. These secrets are protected under Article 127, which prohibits the unauthorized disclosure or use of confidential commercial information.

Article 127. Acts of infringement of the right to business secrets

1. The following acts shall be considered as infringement of the right to business secrets:

a) Accessing or collecting information belonging to a business secret by taking measures against the security measures of the lawful controller of such business secret;

b) Disclosing or using information belonging to a business secret without the permission of the owner of such business secret.

This means employees or partners cannot sneak into a company’s private files to steal secrets like recipes or client lists. If someone shares or uses your company’s private info without your okay, they are breaking the law and can be sued.

Why Every Multinational Needs an Expert Intellectual Property Attorney in Vietnam

The complexity of Vietnam’s IP landscape—with its blend of local statutes, administrative decrees, and overlapping international treaties—demands the expertise of a seasoned vietnam intellectual property lawyer. Whether it is managing a portfolio of hundreds of trademarks like Tyson Holdings, or navigating a high-stakes patent battle like MS&D, the difference between success and failure often lies in the quality of legal representation.

Unilaw has a long-standing history of supporting international clients across these diverse fields. From performing “Due Diligence” on IP assets during an M&A transaction to representing clients in courtrooms across the nation, an intellectual property attorney at Unilaw serves as a bridge between international business goals and Vietnamese legal realities. As Vietnam continues to integrate into the global economy, the value of specialized IP counsel will only increase, ensuring that innovation and creativity remain protected in one of the world’s most dynamic markets.