Which IP Matters of Concern Engaged into Outsourcing Marketing Campaign?

It is undoubted that time is a “precious commodity” when you are running business, however marketing your brand can take up plenty of your time. Earning the awareness, respect and trust of your Client at the beginning of your business by a marketing agency is quite effective. However, which Intellectual Property issues should be paid attention to? Are you owner of the marketing content or designs of logo?

Which IP rights should be aware?

Copyright: Marketing content including articles on your website, website design, posts on your social network platforms, music and video, slogans, architecture of your business location.

Trademark: logo, banner, images.

Industrial design: Distinctive packages, such as the shape of the containers, bottles.

Trade Secret: Some advertising techniques or means of doing business.

Who owns the rights?

According to Article 39 of IP Law of Vietnam, if you enter into a contract with an author for the creation of a work, you shall be the holder of the rights, unless otherwise agreed.  Therefore, for avoiding risks, it should be clearly stated in the marketing contract that “The hirer shall be the owner/holder of all designs, articles or other works created by employees or partners according to Intellectual Property Law of Vietnam”.

Once a slogan, logo or creative idea are shown in public, they could be copied and used by third parties.  Therefore, you could consider to:

-Register the advertisement and other copyright protected material (including a website design) and at the same time alerting the public that advertising material is legally protected by copyright law by a copyright notice in text on the video or images. For registering copyright in Vietnam, it takes about 15 working days.

-Register trademarks right after your marketing agency has finished the design. Also, you should state in the contract that “the marketing agency shall be responsible for all damages if the trademark is refused by the competent authority of IP because it is identical with or confusingly similar to trademark of others”

-Relating to trade secret which could not be registered, you should sign a non-disclosure agreement with the marketing agency.

Who is responsible for infringement of IP Right of the third party?

In case of outsourcing marketing campaign, you could not manage the process of creating and designing marketing tools. For example, the marketing agency would not report if it bases on ideas, designs, article of other person or organization to make the design for your company. However, in such case all information and images show the name of your brand, customers might think you are imitating others and this negatively affects the reputation and prestige of your company. We suggest that you should request the marketing agency to comply with regulations on the industrial property rights, copyrights and related rights strictly. Also, they shall be responsible for all damages claimed by the third party if there is any infringement when performing the scope of work.

Today, it is impossible for you to carry out a successful advertisement without understanding the IP issues arising when outsourcing marketing campaign. A lack of caution can lead to the loss of a company’s own IP rights or liability for infringing the IP rights of others. Besides, to avoid costly mistakes, you should conduct rigorous research both from IP perspectives and other general legal perspective such as comparing advertising, advertising licenses, promotion regulations before launching a new advertising campaign.

It is also suggested to consult with IP law firm and licensed IP agent for advice to protect your rights, through IP research, registration, drafting agreements, and handling infringement of industrial rights.

 Tuan Nguyen and Thao Hoang @ ANT Lawyers

How ANT Lawyers Could Help Your Business?

Please click here to learn more about ANT Lawyers IP Practice or contact our IP lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at (+84) 24 32 23 27 71

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Is it an infringement in copyright if you take a picture of a photo of yourself?

Is it an infringement in copyright if you take a picture of a photo of yourself? If so, why?

The fact that it is a photo of you is irrelevant.

If you take a photograph of another photo then there would be certain creative decisions you would make, such as lighting, angle, white balance, contrast, and medium that make the resultant photograph a derivative work, with two copyrights, one for the underlying original work and another for the elements you add.

Making the photo in itself would not be a copyright violation, but what you do with the resultant image if you publish or distribute it might or might not be depending on a number of factors. Is your use fair use? what are the rights granted to you? Is the underlying photo in the public domain? or a Creative Commons image and you publish in accordance with the license? And also what countries’ copyright laware the two images created under?

If the photo were of someone else then there could also be rights of publicity of the subject, or the original photo might have been taken with a model release (contract) specifying allowed uses of the image, which would likely also apply to any derivative works.

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IP Considerations in Technology Transfer to Vietnam and South-East Asia

On November 14^th and 15^th, 2017, European Chamber of Commerce in Vietnam held a seminar for representatives from businesses and law firms “IP considerations inTechnology Transfer to Vietnam and South-East Asia”.

The seminar provides some sound advice relating to IP Considerations & Practical Tips for Successful Technology Transfer in Vietnam. Further, audience could learn some ways to minimize risk of IP issues associated with Technology Transfer in South-East Asia.

According to Law on Technology Transfer 2017, which shall take effect as of July 01^st, 2018, Vietnam government ensures rights as well as legal interests and facilitates both organizations and individuals in carrying out technology transfer to Vietnam. However, to take advantage of such policy when contemplating transferring technology to Vietnam, you should Evaluate IP Value & Risk of IP infringements through the following tips:

·        Check availability of use or protection status of IP objects

·        Perform IP clearance search and market research

·        Check and maintain validity of IPRs

·        Use local IP agents as watchdogs of your IPRs (advice/strategy)

·        Use NDA (Non-Disclosure Agreement)

·        Check registration of IP objects with cautious consideration in the consistence of all material (contract and records by local authorities- NOIP)

·        Sign Transferring technology contract or Assignment of IPRs/ License of IPRs separately toward each IP objects

Besides, there are some contractual issues to pay attention to such as:

·        What are conditions of use?

·        Structure of fees for License,

·        How to terminate?

·        What happens with the goods/ materials/ equipment after termination?

·        How to avoid risk of technology usage after termination.

Multinational and global companies are always facing with challenges in devising creative solutions to minimize the risks to their IPRs associated with technology transfers. Careful evaluation and due diligence at the first stage of the transferring technology project help companies prevent unwilling suffer and unfair competition.

ANT Lawyers Co., Ltd is a law firm with IP agent certificate issued by National Office of Intellectual Property.  We are also member of legal committee of EuroCham which help contribute legal opinions to promote the development of investment environment in Vietnam.

Tuan Nguyen and Thao Hoang @ ANT Lawyers

How ANT Lawyers Could Help Your Business?

Please click here to learn more about ANT Lawyers IP Practice or contact our IP lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at (+84) 24 32 23 27 71

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Challenges in Preparing Documents for Representative Office Application

The representative office (RO) is a popular foreign investment vehicle which investors utilize when wishing to enter the Vietnamese market without committing too much investment.  The representative office could help the foreign entity to hire local employee to carry out market research, business promotion.

A foreign company wishes to establish a representative office in Vietnam must submit an application dossier for a license to the Provincial Department of Industry and Trade (DIT).

However, there are cases which the government agencies receiving the application would be different from department of industry and trade depending on the business lines carried out by the foreign entity.

Firstly, the trade service is bound in Vietnam’s Commitment in trade service in WTO but there are no existing specialized legislative documents:

When the trade service which the foreign entity provides does not fall under areas prescribed by specialized legislative documents in Vietnam, the licensing agency shall submit a written request for directions to the relevant ministries for opinions. The foreign entity shall wait for at least 15 working days for receiving a written notice of whether the license for establishment of the representative office is granted or rejected. This process not only extends duration of establishment of representative office but also rises risk of rejection.

Secondly, the trade service is not yet bound in Vietnam’s Commitment:

Where the scope of operation of the representative office is inconsistent with Vietnam’s commitments or the foreign trader is not located in the country or territory being party to treaties to which Vietnam is a signatory, there is an extra process in registration of representative office. The representative office shall be approved by relevant ministers, heads of ministerial agencies for establishment of the representative office.

Thirdly, trade services are supplied in foreign countries, but such does not exist in Vietnam

The foreign entity has to apply codes as following to Vietnam standard industrial classification system or CPC. If the foreign entity can not define a code, it is merely impossible to register the representative office.

In most of the cases, the foreign entity should consult with law firm in Vietnam whom lawyers have expertise in WTO laws, law on investment and experience in working with Vietnam state authorities, to prepare application right at the start and be ready to challenge the authorities when required to protect best interests of the clients.

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Can you copyright your name?

That does not serve a public interest, so no, copyright law does not support that.

Consider: copyrighting names would mean that people that are charged with ethical violations, crimes, or just dirty play could not be discussed in the news. Exxon, for instance, could just copyright their name and then prohibit any news media from discussing them by name.

Copyright only protects “creative works”, such as books, news articles, TV shows, movies, etc. While it does protect invented elements, such as characters, it is not so granular that names are protected. Thus, I could write a book about a dentist from Colorado Springs whose name was Harry Potter or James Bond. Names are not really considered all that unique, after all, I happen to know that there are 22 other Todd Gardiners in the United States (and I have met seven of them).

Even if I was to write an article about JK Rowlings’ Harry Potter, I could certainly do so as non-fiction, making a scholarly or newsworthy report on the character (but not use this character in my own fiction, obviously).

So, because you would be infringing on the rights of people who share your name, infringing unfairly on free speech rights of press and the public, interfering with the public interest to discuss things by their name, and because a name is not a “creative work” under copyright law, you cannot get copyright protections for use of your name.

Similarly, you might register a Trademark for your name. But the rules for trademark registration require use in commerce (such as a brand name), and the restrictions only prohibit competing use in commerce. I can still say “Microsoft” or “Starbucks”, even though they are trademarked. I just can’t name a business with these names unless it is in a different class of business (e.g. Starbuck’s Plumbing would be legal).

The units of language: symbols, letters, numbers, words, common phrases, and the names of objects/people/places are all very hard to restrict because we are using them to communicate with each other.

How ANT Lawyers Could Help Your Business?

Please click here to learn more about ANT Lawyers IP Practice or contact our IP lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at (+84) 24 32 23 27 71

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How feasible is it to get a patent without an attorney ?

How feasible is it to get a patent without an attorney (it is relatively advanced and there are few attorneys with acceptable knowledge)?

You can read some literature (like Patent It Yourself by Pressman) and have a reasonable shot at preparing a document that, ultimately, will become a patent.

The question you didn’t ask is what the value of that patent is. I hate to sound elitist, but without an attorney steering the ship from the beginning, it’s unlikely that patent will have substantial value.

It’s not that patent attorneys are gods among men, who uniquely possess the high degree of intellectual rigor to prepare a patent application. It’s just that patent law is insanely complex and unintuitive. There are a ton of ways you could go wrong.

And worse yet, by “wrong,” I don’t mean you’ll limit your chances of getting a patent. No, you’ll get a patent. But there will be some odd phrase buried somewhere between the application you prepared and the advocacy you undertook to get the application granted that will drastically limit the scope of the patent. And to the trained eye, those phrases jump off the page.

To put it another way, when I was a young patent attorney, the typical process would be that I’d draft an application and send it to an experienced partner for review. We’d inevitably meet to discuss it.

There often followed a word-by-word cross examination about why I wrote the application the way I did. “Do you need this word? Are we going to get a patent because of this word, and not get a patent without it? What purpose does this word serve?” That kind of thing.

For a long time, I would come away from those meetings with a much better understanding of the invention, and how to write a much better application. I like to think of myself as a reasonably clever guy, but even after law school and internships and all that, I couldn’t write a good patent application for at least a year after practicing. I am not unique in that regard.

As for the technological demands for understanding your invention, I assure you, someone can understand it. The good news is, they have you to help them. These days, it’s not hard to find a patent attorney with a PhD in the discipline your invention is in — at least broadly speaking.

How ANT Lawyers Could Help Your Business?

Please click here to learn more about ANT Lawyers IP Practice or contact our IP lawyers in Vietnam for advice via email ant@antlawyers.vn or call our office at (+84) 24 32 23 27 71

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What is the first patent in America? And the patent number?

First patent issued by U.S.: First U.S. Patent Issued Today in 1790, issued in 1790.

They didn’t start using numbers until 1836, when Patent #1 was issued on July 13, 1836:

Another 108 patents issued in 1836. Patent #1 was issued to Senator John Ruggles, who happened to be chairman of the Senate Committee on Patents. While there, he put through a bill to reorganize the Patent Office, presumably knowing that one part of the bill would be that patents would now be numbered, went and invented something nominal so that, the sleaze he was, he could nab that first number. Here is the patent in full: Patent US1 - Locomotive steam-engine for rail and other roads.

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