Chương IX Luật Sở hữu trí tuệ 2005: Chủ sở hữu, nội dung và giới hạn quyền sở hữu công nghiệp

Chapter IX

OWNERS OF INDUSTRIAL PROPERTY RIGHTS, CONTENTS OF INDUSTRIAL PROPERTY RIGHTS, AND LIMITATIONS ON INDUSTRIAL PROPERTY RIGHTS

Section 1. OWNERS OF INDUSTRIAL PROPERTY RIGHTS, CONTENTS OF INDUSTRIAL PROPERTY RIGHTS

Article 121. Owners of industrial property objects

1. The owner of an invention, industrial design or layout design means an organization or individual who is granted a protection title for the respective industrial property object by the competent body.

Owner of a mark means an organization or individual who is granted a protection title for such mark by the competent body or who has an internationally registered mark recognized by the competent body or who has a well known mark.

2. Owner of a trade name means an organization or individual who lawfully uses such trade name in business activities.

3. Owner of a trade secret means an organization or individual who has lawfully acquired such trade secret and kept it secret. A trade secret acquired by an employee or a performer of an assigned task during the performance of the hired job or assigned task shall be owned by the employer or the task assignor, unless otherwise agreed by the parties.

4. The State is the owner of geographical indications of Vietnam.

The State shall grant the right to use geographical indications to organizations or individuals who manufacture products bearing such geographical indications in relevant localities and put such products on the market. The State shall directly exercise the right to manage geographical indications or grant that right to organizations representing the interests of all organizations or individuals granted the right to use geographical indications.

Article 122. Authors of inventions, industrial designs and layout designs and their rights

1. The author of an invention, industrial design or layout design means the person who has personally created such industrial property object. Where two or more persons have jointly created an industrial property object, they shall be co-authors of it.

2. Moral rights of authors of inventions, industrial designs and layout designs shall include the following rights:

 (a) To be named as authors in invention patents, utility solution patents, industrial design patents or certificates of registered design of semi-conducting closed circuits;

 (b) To be acknowledged as authors in documents in which inventions, industrial designs or layout designs are published or introduced.

3. Economic rights of authors of inventions, industrial designs and layout designs are the rights to receive remuneration as stipulated in article 135 of this Law.

Article 123. Rights of owners of industrial property objects

1. Owners of industrial property objects shall have the following economic rights:

 (a) To use or authorize others to use industrial property objects according to the provisions of article 124 and Chapter X of this Law;

 (b) To prevent others from using industrial property objects according to the provisions of article 125 of this Law;

 (c) To dispose of industrial property objects according to the provisions of Chapter X of this Law.

2. Organizations and individuals who are granted by the State the right to use or the right to manage geographical indications according to the provisions of clause 4 of article 121 of this Law shall have the following rights:

 (a) Organizations which are granted the right to manage geographical indications may permit other persons to use such geographical indications according to the provisions of clause 1(a) of this article;

 (b) Organizations and individuals who are granted the right to use or organizations which are granted the right to manage geographical indications may prevent other persons from using such geographical indications according to the provisions of clause 1(b) of this article.

Article 124. Use of industrial property objects

1. Use of an invention means the performance of the following acts:

 (a) Manufacturing the protected product;

 (b) Applying the protected process;

 (c) Exploiting utilities of the protected product or the product manufactured under the protected process;

 (d) Circulating, advertising, offering or stocking for circulation the products stipulated in sub-clause (c) of this clause;

 (dd) Importing the products stipulated in sub-clause (c) of this clause.

2. Use of an industrial design means the performance of the following acts:

 (a) Manufacturing products with an appearance embodying the protected industrial design;

 (b) Circulating, advertising, offering or stocking for circulation products stipulated in sub-clause (c) of this clause;

 (c) Importing products stipulated in sub-clause (c) of this clause.

3. Use of a layout design means the performance of the following acts:

 (a) Reproducing the layout design; manufacturing semi-conducting closed circuits under the protected layout design;

 (b) Selling, leasing, advertising, offering or stocking copies of the protected layout design, semi- conducting closed circuits manufactured under the protected layout design or articles containing such semi-conducting closed circuits;

 (c) Importing copies of the protected layout design, semi-conducting closed circuits manufactured under the protected layout-design or articles containing such semi-conducting closed circuits.

4. Use of a trade secret means the performance of the following acts:

 (a) Applying the trade secret to the manufacture of products, provision of services or trade in goods;

 (b) Selling, advertising for sale, stocking for sale or importing products manufactured with the application of the trade secret.

5. Use of a mark means the performance of the following acts:

 (a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;

 (b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

 (c) Importing goods or services bearing the protected mark.

6. Use of a trade name means the performance of acts for commercial purposes by using the trade name to name oneself in business activities, or expressing the trade name in or on transaction documents, signboards, products, goods, goods packages and means of service provision or advertisement.

7. Use of a geographical indication means the performance of the following acts:

 (a) Affixing the protected geographical indication in or on goods or goods packages, business facilities, and transaction documents in business activities;

 (b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected geographical indication;

 (c) Importing goods bearing the protected geographical indication.

Article 125. Right to prevent others from using industrial property objects

1. Owners of industrial property objects as well as organizations and individuals granted the right to use or the right to manage geographical indications shall have the right to prevent others from using such industrial property objects unless such use falls into the cases stipulated in clauses 2 and 3 of this article.

2. Owners of industrial property objects as well as organizations and individuals granted the right to use or the right to manage geographical indications shall not have the right to prevent others from performing the following acts:

 (a) Using inventions, industrial designs or layout designs in service of their personal needs or for non-commercial purposes, or for purposes of evaluation, analysis, research, teaching, testing, trial production or information collection for carrying out procedures of application for licences for production, importation or circulation of products;

 (b) Circulating, importing, exploiting utilities of products which were lawfully put on the market including overseas markets, except for products put on the overseas markets not by the mark owners or their licensees;

 (c) Using inventions, industrial designs or layout designs only for the purpose of maintaining the operation of foreign means of transport in transit or temporarily staying in the territory of Vietnam;

 (d) Using inventions or industrial designs by persons with the prior use right according to the provisions of article 134 of this Law;

 (dd) Using inventions by persons authorized by competent State bodies according to the provisions of articles 145 and 146 of this Law;

 (e) Using layout designs without knowing or having the obligation to know that such layout designs are under protection;

 (g) Using marks identical with or similar to protected geographical indications where such marks have acquired protection in an honest manner before the date of filing the application for registration of such geographical indication;

 (h) Using in an honest manner people's names, descriptive marks of type, quantity, quality, utility, value, geographical origin and other properties of goods or services.

3. Owners of trade secrets shall not have the right to prevent others from performing the following acts:

 (a) Disclosing or using trade secrets acquired without knowing or having the obligation to know that they were unlawfully acquired by others;

 (b) Disclosing secret data in order to protect the public according to the provisions of clause 1 of article 128 of this Law;

 (c) Using secret data stipulated in article 128 of this Law not for commercial purposes;

 (d) Disclosing or using trade secrets obtained independently;

 (dd) Disclosing or using trade secrets obtained by analyzing or evaluating lawfully distributed products, unless otherwise agreed upon by analyzers or evaluators and owners of such trade secrets or sellers of such products.

Article 126. Acts of infringement of rights to inventions, industrial designs and layout designs

The following acts shall be regarded as infringements of rights of owners of inventions, industrial designs and layout designs:

1. Using protected inventions, protected industrial designs or industrial designs insignificantly different from protected industrial designs, or protected layout designs or any original part thereof within the valid term of a protection title without permission from the owners.

2. Using inventions, industrial designs and layout designs without paying compensation according to the provisions on provisional rights in article 131 of this Law.

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

1. The following acts shall be deemed infringements of the right to trade secrets:

 (a) Accessing or acquiring information pertaining to a trade secret by taking acts against secrecy- keeping measures applied by lawful controllers of such trade secret;

 (b) Disclosing or using information pertaining to a trade secret without the permission of the owner of such trade secret;

 (c) Breaching secrecy-keeping contracts or deceiving, inducing, buying off, forcing, seducing or abusing the trust of persons in charge of secrecy-keeping in order to access, acquire or disclose a trade secret;

 (d) Accessing or acquiring information pertaining to the trade secret of an applicant for a licence for trading in or circulating products by taking acts against secrecy-keeping measures applied by competent bodies;

 (dd) Using or disclosing trade secrets, while knowing or having the obligation to know that they have been acquired by others engaged in one of the acts stipulated in sub-clauses (a), (b), (c) or (d) of this clause;

 (e) Failing to perform the secrecy-keeping obligation stipulated in article 128 of this Law.

2. Lawful controllers of trade secrets defined in clause 1 of this Article include owners of trade secrets, their lawful licensees and managers of trade secrets.

Article 128. Obligation to maintain secrecy of test data

1. Where the law requires applicants for licences for trading in or circulating pharmaceuticals or agro- chemical products to supply test results or any other data being trade secrets obtained by investment of considerable effort, and where applicants request such data to be kept secret, the competent licensing body shall be obliged to apply necessary measures so that such data is neither used for unfair commercial purposes nor disclosed, except where the disclosure is necessary to protect the public.

2. From the time of submission of secret data in applications to the competent body stipulated in clause 1 of this article to the end of a five year period as from the date the applicant is granted a licence, such body must not grant licences to any subsequent applicants in whose applications the said secret data is used without the consent of submitters of such data, except for the cases stipulated in clause 3(d) of article 125 of this Law.

Article 129. Acts of infringement of rights to marks, trade names and geographical indications

1. The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

 (a) Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;

 (b) Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (c) Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (d) Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners.

2. All acts of using commercial indications identical with, or similar to, trade names of others which were used earlier for the same or similar type of goods or services, which cause confusion as to business entities, establishments or activities under such trade names shall be deemed to be infringements of the right to the trade name.

3. The following acts shall be deemed to be infringements of the right to protected geographical indications:

 (a) Using protected geographical indications for products which do not satisfy the criteria of peculiar characteristics and quality of products bearing geographical indications, although such products originate from geographical areas bearing such geographical indication;

 (b) Using protected geographical indications for products similar to products bearing geographical indications for the purpose of taking advantage of their reputation and popularity;

(c) Using any sign identical with, or similar to, a protected geographical indication for products not originating from geographical areas bearing such geographical indication, and therefore misleading consumers into believing such products originate from such geographical areas;

 (d) Using protected geographical indications of wines or spirits for wines or spirits not originating from geographical areas bearing such geographical indication, even where the true origin of goods is indicated or geographical indications are used in the form of translations or transcriptions, or accompanied by such words as "category," "model," "type," "imitation" or the like.

Article 130. Acts of unfair competition

1. The following acts shall be deemed to be acts of unfair competition:

 (a) Using commercial indications to cause confusion as to business entities, business activities or commercial origin of goods or services;

 (b) Using commercial indications to cause confusion as to the origin, production method, utilities, quality, quantity or other characteristics of goods or services; or as to the conditions for provision of goods or services;

 (c) Using marks protected in a country which is a contracting party to a treaty of which the Socialist Republic of Vietnam is a member and under which representatives or agents of owners of such marks are prohibited from using such marks, if users are representatives or agents of the mark owners and such use is neither consented to by the mark owners nor justified;

 (d) Registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected trade names or marks of others, or geographical indications without having the right to use, for the purpose of possessing such domain name, benefiting from or prejudicing the reputation and popularity of the respective mark, trade name or geographical indication.

2. Commercial indications stipulated in clause 1 of this article mean signs and information serving as guidelines to trading of goods or services including marks, trade names, business symbols, business slogans, geographical indications, designs of packages and/or labels of goods.

3. Acts of using commercial indications stipulated in clause 1 of this article include acts of affixing such commercial indications on goods, goods packages, means of service provision, business transaction documents or advertising means; and selling, advertising for sale, stocking for sale and importing goods affixed with such commercial indications.

Article 131. Provisional rights to inventions, industrial designs and layout designs

1. Where an applicant for registration of an invention or industrial design knows that such invention or industrial design is being used by another person for commercial purposes without prior use right, the applicant may notify in writing the user of the filing of the latter's application, clearly specifying the filing date and the date of publication of the application in the Official Gazette of Industrial Property so that the user may either terminate or continue such use.

2. For a layout design which has, before the grant date of the certificate of registered design of semi- conducting closed circuits, been commercially exploited by the person with the registration right or his or her licensee, if such person knows that such layout design is being used by another person for commercial purposes, then he or she may notify in writing the user of his or her registration right so that the user may either terminate or continue such use.

3. Where the person notified of contents stipulated in clauses 1 and 2 of this article continues using such invention, industrial design or layout design, then as soon as an invention patent, utility solution patent, industrial design patent or certificate of registered design of semi-conducting closed circuits is granted, the owner of the object shall have the right to request the user to pay compensation equivalent to the price for licensing of such invention, industrial design or layout design within the corresponding scope and duration of use.

Section 2. LIMITATIONS ON INDUSTRIAL PROPERTY RIGHTS

Article 132. Factors limiting industrial property rights

Industrial property rights may be limited pursuant to this Law by the following factors:

1. Right of prior users to inventions or industrial designs.

2. Obligations of owners, including:

 (a) To pay remuneration to the authors of inventions, industrial designs or layout designs;

 (b) To use inventions or marks.

3. Licensing of inventions pursuant to decisions of competent State bodies.

Article 133. Right to use inventions on behalf of the State

1. Ministries and ministerial equivalent bodies shall have the right, on behalf of the State, to use or permit other organizations or individuals to use inventions in domains under their respective management for public and non-commercial purposes, national defence and security, disease prevention, and treatment and nutrition of the people, and to meet other urgent social needs without having to obtain permission of invention owners or their licensees under exclusive contracts (hereinafter referred to as holders of the exclusive right to use inventions) in accordance with articles 145 and 146 of this Law.

2. The use of inventions pursuant to clause 1 of this article shall be limited within the scope of and under the conditions for licensing provided for in clause 1 of article 146 of this Law, except where such inventions are created by using material and technical facilities and funds from the State Budget.

Article 134. Right of prior use of inventions and industrial designs

1. Where a person has, before the publication date of an application for registration of an invention or industrial design, used or prepared necessary conditions for use of an invention or industrial design identical with the protected invention or industrial design stated in such application for registration, but created independently (hereinafter referred to as the prior use right holder), then after a protection title is granted, such person shall be entitled to continue using such invention or industrial design within the scope and volume of use or use preparations without having to obtain permission or paying compensation to the owner of the protected invention or industrial design. The exercise of the right of prior users of inventions or industrial designs shall not be deemed an infringement of the right of the owner of the invention or industrial design.

2. Prior use right holders to inventions or industrial designs must not assign such right to others, except where such right is assigned together with the transfer of a business or production establishment which has used or has prepared to use the invention or industrial design. Prior use right holders must not expand the use scope and volume unless it is so permitted by the owner of the invention or industrial design.

Article 135. Obligation to pay remuneration to authors of inventions, industrial designs and layout designs

1. Owners of inventions, industrial designs and layout designs shall be obliged to pay remuneration to the authors of such inventions, industrial designs and layout designs in accordance with the provisions of clauses 2 and 3 of this article, unless otherwise agreed upon by the parties.

2. The minimum level of remuneration payable by an owner to an author shall be regulated as follows:

 (a) Ten (10) per cent of the profit gained by the owner from the use of the invention, industrial design or layout design;

 (b) Fifteen (15) per cent of the total amount received by the owner in each payment for licensing of the invention, industrial design or layout design.

3. Where an invention, industrial design or layout design is jointly created by more than one author, the remuneration level provided for in clause 2 of this article shall be applicable to all co-authors. The co- authors shall agree between themselves on the division of the remuneration paid by the owner.

4. The obligation to pay remuneration to authors of inventions, industrial designs and layout designs shall exist throughout the term of protection of such invention, industrial design or layout design.

Article 136. Obligation to use inventions and marks

1. Owners of inventions shall be obliged to manufacture protected products or apply protected processes to satisfy the requirements of national defence and security, disease prevention, and treatment and nutrition of the people or to meet other social urgent needs. When the needs stipulated in this clause arise but an invention owner fails to perform such obligation, the competent State body may license such invention to others without permission from the invention owner in accordance with the provisions of articles 145 and 146 of this Law.

2. Owners of marks shall be obliged to use such marks continuously. Where a mark has not been used for five consecutive years or more, the ownership right to such mark shall be invalidated in accordance with the provisions of article 95 of this Law.

Article 137. Obligation to authorize the use of principal inventions for the purpose of using dependent inventions

1. A dependent invention means an invention created based on another invention (hereinafter referred to as the principal invention) and may only be used on condition that the principal invention is also used.

2. Where the owner of a dependent invention can prove that his or her invention makes an important technical advance as compared with the principal invention and has great economic significance, he or she may request the owner of the principal invention to license such principal invention at a reasonably commercial price and conditions.

Where the owner of a principal invention fails to satisfy the request of the owner of a dependent invention without justifiable reason, the State body concerned may license such invention to the owner of the dependent invention without permission from the owner of the principal invention in accordance with the provisions of articles 145 and 146 of this Law.