LUND UNIVERSITY HANOI LAW UNIVERSITY NGUYEN NHU QUYNH TRADEMARK EXHAUSTION AND PROPOSALS FOR AN IMPROVEMENT OF VIETNAMESE TRADEMARK LAW i SUPERVISORS: PROF. KATARINA OLSSON ASSOCIATE PROF. BUI DANG HIEU ABSTRACT IPR exhaustion not only signals the end of an IPR owners’ distribution rights regarding a particular product but also serves as the basis for solving many trade-related matters, particularly parallel imports, repairs (and recycling or reconstruction) of IPR-protected goods, and anti-competitive practices involving IPRs. The settlement of IPR exhaustion- related issues requires the intervention of policies, international conventions and national laws, and many areas of law, including at least intellectual property, competition and contract law.
Still, the utility of the exhaustion doctrine and measures for the exploitation of that utility are not always fully recognized, particularly by developing and least developed countries. This thesis focuses on trademark exhaustion and provides a comparison between Vietnam’s trademark exhaustion rules both in law and in practice and those of the TRIPS Agreement, the US and EU. Notwithstanding this delimitation, its solutions should be useful for developing countries other than Vietnam. Its goals are to help those countries to design their trademark laws (and to some extent, their relevant policies) with a view to complying with the TRIPS Agreement, fitting their socio- economic contexts, and fostering economic growth and social welfare.
Keywords: IPR exhaustion, trademark exhaustion, the TRIPS Agreement, US law on trademark exhaustion, EU law on trademark exhaustion, Vietnamese law on trademark exhaustion, conditions triggering trademark exhaustion, legal consequences of trademark exhaustion, parallel imports of trademarked goods, repairs of trademarked goods, and trademark-related contractual restrictions. PREFACE The exhaustion of IPRs has not so far been the subject of significant legislation at the international level. It is still “one of the most heatedly debated IP-related topics” ' and “[p]erhaps one of the most trade-related issues in the field of intellectual property."” The issue has attracted the attention of researchers in both law and economics. Trademark exhaustion, like IPR exhaustion in general, is an exception to the scope of IPRs.
Recognition of IPR exhaustion serves to balance the conflict between the interests of IPR holders and those of consumers and maintains reasonable equality between IPR protection and the circulation of goods and service as well as healthy competition. The applicability of the trademark exhaustion principle has undeniably been valuable. Nonetheless, both developed and developing countries have faced difficulties in designing laws dealing with trademark exhaustion-related matters. Many issues relating to the exhaustion doctrine and to trademark exhaustion in particular are still controversial, especially where the economic aspects are concerned.
Those are my reasons to embark upon this research. I hope it will serve a reference point for readers who are interested in the trade-related aspects of IPRs, particularly in the exhaustion doctrine and trademark exhaustion, the conditions triggering trademark exhaustion, the legal consequences of trademark exhaustion, the exhaustion regime for trademark and parallel imports of trademarked goods, trademark exhaustion in cases of repair of trademarked goods, and trademark exhaustion in cases of contractual restrictions. In addition, it contains advice for law and policy makers, especially those of Vietnam, in tailoring policy and law on the issues. Looking back after almost five hard years of research, I would like to record the invaluable help of the kind people enveloping me and my passions and endeavors.
This dissertation would not have been possible without their support and I would like to express my deepest gratitude to all who have ever helped me. First and foremost, I would like to offer my wholehearted thanks to my wonderful supervisors, Professor Katarina Olsson and Associate Professor Bui Dang Hieu, for their insightful conversations during the development of the ideas in this thesis and for helpful comments on the text. My supervisors have shared their immense knowledge, experiences, and precious time with me whilst allowed me room to work in my own way. I learned from their academic, stern but friendly attitude to students as this encouraged me to put more effort into the research.
My supervisors were happy with my preliminary results and were willing to give me their help at any time in dealing with difficulties which arose. | am very fortunate to have them to go with me on the rough road during the past years. It is a pleasure to express my special gratitude to the project Strengthen Legal Education in Vietnam (funded by the Swedish International Development Cooperation Agency) and the Faculty of Law, Lund University. These organizations have given me the opportunity ' Ganea, Peter, Exhaustion of IP Rights: Reflections from Economic Theory, Institute of Innovation Research-Hitotsubashi University, Japan, 2006.
See also Gallego. Beatriz Conde, The principle of exhaustion of rights and its implications for competition law, International Review of Intellectual and Competition Law, IIC 2003, 34 (5), pp. ? This is Thomas Cottier’s observation, cited by Sheckhtman, Ekaterina and Sesitsky, Evgeniy, Exhaustion and Parallel Importation in the Field of Trademarks, 2008, <http://www.com/research- papers/papers-2008/Shekhtman-Sesitsky. ii to be im the Joint Doctoral Training Program and realize my dreams of engaging in such study.
I have benefited from the magnificent library and advanced computer system of the Faculty of Law which greatly enrich my dissertation. My most fruitful and intensive research time has been in this cordial refuge. I would like to thank the professors, librariams, and other staff of the Faculty. In the course of my years of research, I also have had the privilege and pleasure of receivimg precious support from and spending fruitful time at a number of excellent educational and research centers, national and international organizations, and govemmental offices.
These are: Suffolk University Law School (Boston, US), WIPO, WTO, Max Planck Institute (Munich, Germany), the European Patent Office and, in Vietnam, the Inspectorate of the Ministry of Science and Technology (MOST). the National Office of Intellectual Property (NOIP) of MOST, the Competition Administration Department (VCAD) of the Ministry of Industry and Trade (MOIT), the Exports and Imports Administration Department of MOIT, the Drug Administration Department of the Ministry of Health, the General Department of Customs of the Ministry of Finance, and the People’s Supreme Court. I greatly benefited when the Japanese Patent Office published my first English article on the Vietnamese law on IPR exhaustion in the magazine of the IP Community (in 2007). After its publication, I received many valuable comments which have been useful in the subsequent development of my dissertation.
| would like to thank WIPO for inviting me to return to Geneva in 2010 to carry out a research on the use by WIPO Member States of exhaustion-related intellectual property provisions to address anti-competitive practices within the Project on Intellectual Property and Competition Policy. The arguments below, particularly those on competition-related trademark exhaustion have been strengthened by my work with the WIPO project. Also, I express my sincere gratitude to the Vietnamese Ministry of Science and Technology for permitting me to write some parts of the Circular guiding the Decree No. 97/2010/ND-CP of the Government on sanctioning administrative violations in the domain of industrial property, also in 2010.
Such parts (they are on parallel imports; reuse, recycling, and repair of industrial property right-protected goods; and production and marketing of industrial property right-protected products in excess of the rights granted to industrial property right owners) closely link to my dissertation. Through discussions with the drafting group, my ideas on these issues were improved. More importantly, my ideas for improving Vietnamese law on them have been used in a legal normative document. I would like to gratefully acknowledge the invaluable support of Hanoi Law University.
My university granted me the best conditions for completing this dissertation. My special thanks go to the Board of Rectors, the Department of foreign relations, the Personnel Office, and the Faculty of Civil Law. I am aware and fully appreciate that my colleagues in the Center of Intellectual Property Law and the Division of Civil Law have been burdened with additional teaching hours due to my frequent, lengthy absences. On an individual level, many have given their time, knowledge, and experience in assisting my research.
I have received Professor Christina Méell’s warm guidance and effective help in both study-related and practical matters, especially in the first three years of the project when I was a very immature PhD candidate. I have also been supported in many ways throughout the process of writing up my research by Assistant Professor Bengt Lundell who is one of the people most involved in the whole program. His seasoned ili experience and knowledge of international issues mixed with his understanding of Vietnamese have helped me out in many puzzles. I convey a special acknowledgement to his significant contribution in smoothing my research schedules both at home and abroad.
I would love to emphasize my thanks to Professor Hans Henrik Lidgard. When I first asked him about parallel imports, I knew nothing more than the terms “parallel imports” and “IPR exhaustion.” I was interested in them but worried by their novelty, and I was very hesitant to select the subjects for the proposal for PhD research. Professor Lidgard erased my hesitancy and triggered my passion for doing research on trademark exhaustion. Furthermore, he has given me continuous encouragement and been a constructive voice during seminars even when he was not a member of the Examination Panels.
The encouragement of Professor Lars-Géran Malmberg and his sincere regards have fostered my study since the time I was a master student at Lund University. I fully appreciate the opinions on comparative method of Professor Michael Bogdan. Those opinions made me more confident in using such a method and devoting a whole chapter of my dissertation to comparison. It is a pleasure to pay tribute also to Professor Birgitta Nystrém, Professor Hans-Heinrich Vogel, Assistant Professor Eva Lindell-Frant, and Dr.
Tran Le Hong for their constructive criticism and useful feedback during and after the seminar. I gratefully acknowledge their important contribution to improving my dissertation. Nuno Pires de Carvalho for his tireless help in the whole process of my doing research. I gratefully thank Dr.
Christopher Heath, Dr. Carsten Fink, Dr. Professor Margaret Chon, Associate Professor Jessica Silbey, Associate Professor Stephen M. MacJohn, Assistant Professor Ulf Maunbach, Associate Professor Pham Duy Nghia, Dr.
Pham Dinh Chuong, Dr. Pham Hong Quat, and Mrs. Tu Viet Lan for acting as patient interviewees in many discussions carried out over long-distance via e-mails. many thanks go to Dr.
Pham Hong Quat, Mrs. Le Hong Van, and Mr. Nguyen Thanh Hong for helping me overcome the difficulties in selecting and accessing the official documents of the trademark exhaustion-related cases in Vietnam. Thank to these cases, my writing on trademark exhaustion in law and practice of Vietnam becomes more convincing.
I record here the help of Professor Stephen Hicks in arranging and following up my discussions with scholars of intellectual property law when I was in Boston in the US and afterward. Also, many thanks go to Philip Horowitz for his care and patience in reviewing my English. This dissertation would not have been existed without my long-suffering family. From the bottom of my heart, I thank my parents, Niet Nguyen and Hue Tran, for teaching me and my younger sister about the importance of study, giving us the privilege of being able to study, and raising us with their gentle love and care.
This dissertation is one of my efforts to keep them happy with the achievements of their two daughters. I owe much to my parents-in-law and my parents for their support of my extensive study and their considerate care for my daughter when I was abroad. Words fail me in expressing my indebtedness to the sacrifice of my small family. Luu Dinh, I fully understand how much difficulty he has experienced when I have been far away from our home.
His love and other contributions given without complaint have IV supported me through all the stress of every step of the journey. Devotion to Titti Quynh Trang, my little daughter, has been a motivation for me to complete this dissertation.