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