By Linh Nguyen
The study of IP court judgments serves as an indispensable tool for practitioners and businesses to shape their intellectual property strategies. Further, lessons can be taken, and broader implications can be drawn therefrom. These facilitate a deeper comprehension of legal principles, and potential challenge anticipation, and ultimately contribute to the protection and enforcement of IPRs in a dynamic and ever-evolving business landscape. If you share the same thoughts, do not hesitate to stay tuned for our articles in this series!
Episode 1. Navigating the grey area of overlapping IPRs: resolving industrial design dispute by copyright?
Overview of the law case
Parties:
- Plaintiff: Ms. Candida Jennifer L. (Nationality: U.A.E)
- Defendant: Small Turtle Company Limited (Vietnamese company), hereinafter referred to as Company R.
Ms. L. designed and started trading helmets for children (under the name “SafeheadBaby”) in 2003. She registered industrial design before the European Union IP Office on 22 September 2014.
On 26 April 2017, Ms. L. filed a lawsuit petition to the Civil Court of Hochiminh City alleging that Company R. had been manufacturing and selling helmets for children under the name MUMGUARD with the identical shape of SafeheadBABY since 2015 in Vietnam. The products were being sold through various channels including the website at www.mumguard.com, and E-commerce platforms like Tiki, Sendo, etc. The plaintiff claimed IPR infringement, asserting that the helmet shape was an applied-art work that is automatically protected under copyright in Vietnam as a member country of Berne Convention for the Protection of Literary and Artistic Works. Ms. L. sought penalties and damages totaling 375,000,000 VND (equivalent to 16,000 USD).
Legal proceedings:
On 17 August 2017, the Court recorded the plaintiff’s petition.
On 3 August 2022, the Court conducted the first-instance trial, and issued its judgement.
Court Decision and Rationale Behind
In the absence of a specialized IP Court in Vietnam, the Court sought expert opinions from the Intellectual Property Office of Vietnam (IPVN). The IPVN conveyed that the industrial design of the helmet SafeheadBaby under the plaintiff’s ownership has neither been filed nor registered in Vietnam. Therefore, the helmet design in dispute is being freely used by the public in Vietnam including the defendant or any other parties, i.e., it does not constitute infringing acts of design rights in Vietnam. On the other hand, in perspectives of registration, no one can establish the ownership of the design rights due to the lack of worldwide novelty taking the prior disclosure of the plaintiff’s design.
The Court also rejected the request for copyright protection, citing the plaintiff’s failure to prove the helmet’s form as an applied-art work under copyright. The submitted proof, originating from an EUIPO filing, identified SafeheadBaby as an industrial design, not a copyrighted applied-art work.
The Court found no legal grounds for the plaintiff’s claims. The petition and damage claims were refused, and the plaintiff was obligated to pay a court fee of 21,750,000 VND (equivalent to 950 USD).
Analysis and Commentary
Through the examination of a legal case, several key observations are spotlighted:
In order to protect and enforce IPRs, registration in such territory is pivotal. The plaintiff’s failure to register her design in Vietnam resulted in the absence of protection for her helmet design within the country, which in turn, prevented her from protecting her design against exploitation by other third parties in Vietnam. The plaintiff was unable to obtain design rights in Vietnam in this circumstance due to the lack of novelty over the prior publication of the design in the EUIPO application.
Regarding copyright protection, the Berne Convention plays a pivotal role in setting basic principles for member countries including Vietnam to comply with, which remarkably include: i) works originating in one of the member countries (i.e., works of the resident of such country or works first published in such country) must be given the same protection in each of the other member countries as the latter grants to the works of its own nationals; and ii) copyright protection is automatic, and does not require formal registration in any member country. The case of Ms. L. hinges significantly on this aspect, as she asserted the basic principles of the Berne Convention that the helmet design, categorized as an applied-art work, should be automatically protected under copyright in Vietnam as a member country thereof. However, it is essential for IP practitioners to understand that the Berne Convention also emphasizes the “independence of protection” of works whereby the extent of protection, as well as the means and conditions of legal resourse, are governed solely by the laws of the country where protection is claimed. Therefore, the local Vietnamese copyright laws and their interpretation of what constitutes an applied-art work critically determined the outcome in this case. This underscores the importance of not only relying on international conventions but also understanding the specific local legal context in which the IP is sought to be protected. One more important thing is that copyright registration is not compulsory in Vietnam, but it serves as a valuable tool in case of disputes providing a means to release the burden of proof. As to this case, assuming that the registration was available, the outcome of dispute settlement would have been different in favour of the plaintiff.
In summary, this case sheds light on the intricate interplay between registrations of different IP objects such as design and copyright, evidence and enforcement of IPRs, emphasizing the strategic considerations for IPR holders operating or intending to operate in Vietnam.
Need help with IP registration and consultation in Vietnam? Reach out to us at kass@kass.asia!
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