Monthly Archives: May 2017

Meta-tagging vis-à-vis Trade Mark Misuse: An overview

Introduction:

For most of our questions, we rely on the internet for answers. While the debate on the reliability of information received on the internet continues, an equally enthralling race of which website will be the first to grab a searching consumer’s attention has begun.  With companies and organizations willing to pay a leg and an arm to ensure maximum footfalls on their websites, it is not surprising that such organizations are searching for loopholes to find ways to manipulate the search results on search engines. Website owners attract unwarranted attention to their website by making dubious use of Meta-tagging, framing, linking, deep linking. This article aims to introduce the concept of meta-tagging and provide an overview of the legal jurisprudence pertaining to unfair use of meta-tags with respect to Trade Marks.

What is a meta-tag?

Webpage are written in mark up languages, usually HTML (Hyper Text Markup Language). HTML uses syntax of tags and mark ups to display data and to send signals across to the web operators to ensure correct outputs. While most tags have visual and aesthetic functions, a tag category named meta-tags allow hidden commenting with regard to the description of the said website, enabling the search engines to pull out relevant websites in reference to the key words searched by the end user.

With an option to doctor the HTML source code in such a manner that it will result in favorable SEO (Search Engine Optimization), any web designer may insert the trademarks or misleading meta-tag descriptions that are similar or deceptively identical to that of his/her competitor so as to enable the search engine to pop out his/her website as well when an unaware user searches for the competitor. In 1997[1], for the first time, under the Lanham Act [U.S. Trademark Act], a law firm dealing with domain name disputes sued a defendant whose meta-tags contained the terms ‘oppedahl’ and ‘larson’, the registered trademark of the law firm, so as to divert traffic that would gain them domain name registrations and web hosting clients. The Court restrained them from using the said terms without authorization as it resulted to unfair use under the Lanham Act.

Though the Indian law does not explicitly define ‘meta-tags’ in any statute so far, in 2014[2], a Single Judge Bench at the Bombay High Court, while addressing a domain name infringement of the plaintiff’s domain name “Shadi.com” by the defendants’ “ShadiHiShadi.com”, used meta-tags to identify malafide intention. The Hon’ble Court found that the defendant was using “Shadi.com”, which was the Plaintiff’s domain name, in their meta-tags to divert traffic and for the first time defined meta-tags as follows:

11. … Meta tags are special lines of code embedded in web pages. All HTML (hyper text markup language), used in coding web pages, uses tags. Meta tags are a special type of tag. They do not affect page display. Instead, they provide additional information: the author of the web page, the frequency of updation, a general description of the contents, keywords, copyright notices and so on. They provide structured data (actually, meta-data) about the web page in question. Meta tags are always used in web-pages ‘<head>…</head>’ section, before the display section that begins with the tag ‘<body>…</body>’.

Liability of misleading meta-tags

The question of whether ignorance of facts claimed by the defendants alleging cluelessness with regard to the insertion of such misleading meta-tags can be used as a defense has not yet surfaced in the Indian jurisprudence, the Belgian Courts, however, have taken a strong stand and made precedents indicating that the owner of the websites is to take the sole responsibility for the content on the website and the source code of the websites.  In a Belgian case[3], it was held that the Defendant alleged that since the meta-tags and its contents are deliverables of the web designer to the defendant, the defendant was not the appropriate authority to decide the contents of the meta-tags; the Belgian Courts firmly held that even so, the website owner is the sole proprietor of the website and besides, the contract executed between the website owner and the web designer exempted the latter from any liability related to the contents of such meta-tags.

In another Belgian case[4], further reiterating and reaffirming the previous judgment, the Court held that it the sole responsibility of the website owner to verify the contents of the source code and not of the administrator of the search engine, thus negating the Defendant’s contention that the administration of the search engine had not updated his database, thus resulting in misleading meta-tags.

Doctrine of Initial Interest Confusion

On the premise of meta-tagging creating confusion in the minds of the unaware consumer, when a consumer searches for a product or service online, it is an undisputed fact that the trademark laws that must guard unaware consumers from being duped by competitor websites who use misleading meta-tagging.

The doctrine of Initial Interest Confusion allows the plaintiff to be granted remedies for infringement even if the alleged infringement causes temporary confusion in the minds of the consumer, even if it is prior to any purchase of such goods or service. This doctrine was first applied in the case of Grotrian v Steinway & Sons[5], where the Court believed that the advertisements in the name of “Steinway” would mislead the consumer into “an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian-Steinweg is at least as good, if not better, than a Steinway” but perhaps considering the consumer demographic of piano purchaser who may be more careful with their purchases thus, not resulting in any major financial losses for the plaintiff. Re-applying the principle of Initial Interest Confusion, Judge L. F. MacMahon, in the case of Mobil Oil Corporation, v. Pegasus Petroleum Corporation[6] where Mobil was the registered holder of the mark “Pegasis” and the logo mark of the Greek God Pegasis while Pegasis Petroleum’s logo did not resemble Mobil’s logo mark or word mark in any way, however, the Court concluded that Pegasis Petroleum was misleading potential customer in initial interest and hence, constitutes sufficient trademark injury.

Applying the principle of initial interest doctrine for the first time in meta-tags in the case of Brookfield Communications, Inc. v. West Coast Entertainment Corporation[7], the plaintiff, a registered proprietor of “Moviebuff” and defendant who used the same mark as description in their meta-tag, thus deceptively resulting both the plaintiff’s and the defendant’s links to popped up in the search result, creating initial confusion in the minds of the consumers only for them to find themselves browsing through the defendant’s websites which was distinctively different from that of the plaintiff, amounted to trademark infringement under this doctrine.

In another interesting case[8], in an appeal for a dismissed suit, the United States Court of Appeal for the Ninth Circuit (the Ninth Circuit) accepted the appellant’s contention that even though the consumers were aware that they were not  buying services from the appellant’s services, selling banner ads with appellant’s trademarks “playboy” and “playmate” still amounted to trademark infringement under this doctrine as the respondent was still feeding on the appellant’s good will to increase their sales.

Thus, it can be concluded that commercially using another’s trademark as a meta-tag seldom amounts to fair use. While the distinction between fair use and unfair use of meta-tags is often circumstantial and tricky, it is can be safely deduced that commercial gain, whether in the form of footfalls, good will or actual sale by the use of trademarks or deceptively similar trademarks in meta-tags or ads, as in the case of People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & ors[9], still amounts to infringement.

Fair use in meta-tags

An Exception to the doctrine of initial interest confusion is the use of trademarks that may actually be descriptive of the service or goods provided by the website owner, which will amount to fair use of such terms or words for the purpose of a meta-tag. In the case of Playboy Enterprises, Inc. v. Welles[10], the defendant, Miss Welles, was a former playmate and hence use of the terms “playboy”, “playmate of the year” and “playmate of the month” among other terms in the meta-tags of her website did not amount to infringement as such use was permitted on the ground that the terms were descriptive of the kind of service her website provided and for describing herself.

Another exception to the doctrine is the use of trademarks in meta-tags so as to attract customers to view the opinion of a certain product or service so expressed. This exception was precedented in the case of Bally Total Fitness v. Faber[11] where the defendant maintained a sub-domain called “Bally Sucks” and justified this use of the trademark “Bally” as a consumer criticism acknowledging the use of the registered trademark to attract customers so that one searches for the term ‘Bally’ on the search engine, both the plaintiff and defendant’s site would be pop up and an average user shall have the option to obtain complete information about ‘Bally’ including the opinion of others on ‘Bally’ and removing the said meta-tags would alienate the user from complete and total information regarding the mark “Bally”. Comparative statements in meta-tags also categorizes as fair use of trademarks in meta-tags[12]

Thus, summarizing, use of trademarks in meta-tags purely for describing goods or services of the said website or as ensuring opinions have been reached or even as to compare competitive brands may be allowed under fair use, however, such use is strictly circumstantial and depends largely on the facts of the case.

Conclusion

The use and misuse of intellectual property on the internet is still a new terrain that needs to be discovered for our legal system. To add to this, while our nation neither recognizes net neutrality as an unfettered right nor complete and absolute intellectual property rights, thus, leading misleading meta-tags to be a huge grey area where every verdict will be based on circumstances than concrete laws and predetermined principles. India has long started recognizing the malpractices in the use of meta-tags and search engines that amount to malicious corruption of search results for the end user but we, as a nation, do not have any concrete laws in place to regulate the use of such tags except a few precedents[13] to formulate basic rules to be abided. The need for statutory laws to address cyber security for intellectual property is being felt now more than ever with the government preferring e-commerce over off-line retail and the netizens have no choice now but to wait and watch for some provisions to be made.

Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys. Can be reached at mumbai@khuranaandkhurana.com

[1] Oppedahl & Larson v. Advanced Concepts, Civ. No. 97-Z-1592 (D.C. Colo., July 23, 1997)

[2] People Interactive (I) Pvt. Ltd. v. Gaurav Jerry & ors., NMS (L) NO. 1504 of 2014 in SUIT (L) NO. 622 OF 2014

[3] Belgacom v. Intouch, 15 October 1999, (translation in) Computerrecht, 2000, Nr. 5, 245-247

[4] NV Resiplast v. BVBA Resin, 4 February 2002

[5] Grotrian v Steinway & Sons, 365 F. Supp. 707 (1973)

[6] Mobil Oil Corporation, v. Pegasus Petroleum Corporation, 818 F.2d 254 (2d Cir. 1987)

[7] Brookfield Communications, Inc. v. West Coast Entertainment Corporation 174 F.3d 1036 (9th Cir. 1999)

[8] Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)

[9] Ibid. 2

[10] Playboy Enterprises, Inc. v. Welles , 7 F.Supp.2d 1098 (S.D. Cal. 1998)

[11] Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998)

[12] FS 2434/97, Hillerod fodgeret, November 17, 1997.

[13] Mattel, Inc. and Others vs. Jayant Agarwalla and Others, 2008 (38) PTC 416; Consim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. & Ors, 2013(54)PTC578(Mad); Samsung Electronics Company Limited & Anr. vs. Kapil Wadhwa & Ors., C.S. (OS). No.1155/2011

Digital Rights Management & Its Interaction with Net Neutrality

The online platform offers ample opportunity for infringement of copyrights and it is but natural for copyright holders to react apprehensively and clamor for absolute regulation of the digital copyright market. However, the virtual world is a whole different ball game where standard rules fail to achieve the desired objective. Therefore, a mechanism was developed to counter unauthorized use and give more control to the copyright holder over the categories accessible and the type of usage and modification allowed, called Digital Rights Management (DRM). It was proposed through the WIPO Internet treaties of WIPO Cooperation Treaty (WCT) and WIPO Performers and Phonograms Treaty (WPPT) to provide a flexible and globally enforceable mechanism of governing digital copyrights.

Functioning

DRM works on the format of a pre-existing contractual relationship where the copyright holder controls the usage of the work even after it has been accessed by the user. It controls the number of copies that can be made, specifies the modifications allowed and how much of the work can be accessed, after its sale to the user.[1] DRMs are a business management model based on a contractual relationship, and serve the interests of the creator or the facilitator of digital content.  They can range from mere content copy regulation to full-fledged management schemes regulating each action in the transaction, all in an encrypted fashion. The material to be accessed can be decrypted through special knowledge which may be acquired by performing certain authorized actions. Some mechanisms supervise and regulate the number of copies that can be made.[2] The machine readable information coded in Rights Expression Languages (REL) is used to control permissions which restrict access and use for certain periods and for certain users as well as influence the quality of the work accessible.[3] DRMs are widely used in e-books, video games, computer software, mobiles etc., and work quite well. However, this mechanism is not suitable for all digital platforms as will be delineated in the following pages.

DRM Provisions in Indian Copyright Act

The Copyright Amendment Act, 2012 incorporated certain DRM provisions in consonance with the WIPO Cooperation Treaty (WCT) and WIPO Performers and Phonograms Treaty (WPPT). India had consistently resisted becoming a contracting party to these TRIPS treaties, however, the incorporation of digital regulatory provisions indicates an alteration of position. Section 65A and 65B comprise the DRM provisions, the former dealing with protection against circumvention of technological measures and the latter with protection of rights management information. Clause 2(a) of section 65A also specifies that nothing in the provision shall prevent the doing of anything referred to therein for the purpose that is not expressly prohibited by the Copyright Act, 2012. Apart from this, the provision also exempts circumvention of technological measures for the purpose of certain activities like encryption research, lawful investigation, security testing of a computer system or a computer network with the authorization of the owner, protection of privacy and measures necessary in the interest of national security.[4] The Indian copyright law permits circumvention with the help of third parties provided certain procedural conditions are satisfied. However, section 65A provides for a criminal penalty of imprisonment for 2 years and a fine, for violation of this provision, which is a rather worrisome development.[5]

DRM and low Net Neutrality: the Unholy Alliance

An adverse impact on fair use is the least of the complications that DRM causes. In retrospect, analyzing the impact of its operation in the US and the EU is proof enough of its draconian and anti-progressive nature. Although the provisions in the Indian Copyright Act are not draconian in nature, DRM has the potential to turn the clock back on any society in which it operates. DRM makes generally legal things illegal, as a consequence of which innocent downloaders – who are free-loaders at best – are prosecuted under laws meant for pirates while the real threat continue to operate. Although India has not adopted such overly stringent enforcement mechanisms, the inclusion of DRM provisions in the Indian Copyright Act has not been founded on any rational basis.[6]Therefore, even a minimalist approach as adopted by India is not in our best interests. This discussion is intimately connected to the recent debates on net neutrality which is another regulatory initiative attempted at price differentiation among different classes of consumers using the internet for various different purposes. This would create inequality among consumers and only serve to benefit telecommunication companies who are lobbying for this initiative. The Free Basics initiative by Facebook which was aggressively advertised was actually against the principle of net neutrality as it sought to provide “certain basic internet services for free”. The problem with such differentiation is not only that there is no clarity as to what these basic services mean, whether they will be uniform across all service providers and is it appropriate for telecom companies to determine what will be available to whom, but there is also a danger of arbitrary decision-making which will ultimately adversely affect the users. This coupled with DRM would make fine potion for a user rights disaster, making a mockery out the whole system of IPR and competition law.

About the Author: Akriti Dhagga, Intern, at Khurana and Khurana Advocates and IP Attorneys

[1]Tarun Krishnakumar and Kaustav Saha, ‘India’s New Copyright Law: The Good, The Bad and the DRM’ 10 JIPR (December 2012).

[2] Arul George Scaria, ‘Does India Need Digital Rights Management Provisions or Better Digital Business Management Strategies?’ JIPR (September 2012) vol 17 pg 467.

[3]Sacha Wunsch-Vincent, ‘The economics of copyright and the internet: Moving to an empirical assessment relevant in the digital age’ Economic Research Working Paper No.9, WIPO Economics and Statistics Series, (July 2013).

[4]Indian Copyright Act, S 65A (2)(b) to 65A (2)(g)(1957).

[5] Arul George Scaria, ‘Does India Need Digital Rights Management Provisions or Better Digital Business Management Strategies?’17 JIPR 464, 463-477 (September 2012).

[6] Charles Bailey, ‘Strong Copyright + DRM + Weak Net Neutrality = Digital Dystopia’ Information Technology and Libraries 116-139 (September 2006).

Cartier International AG and Ors.  Vs.  Gaurav Bhatia and Ors.

Citation: 226 (2016) DLT 662

Introduction

As per a study conducted in 2016 by OECD (Organisation Economic Cooperation and Development) and the European Union’s Intellectual Property Office, India ranks amongst the top five exporters of counterfeit products. Inspite of the legislative authorities providing stringent anti-counterfeit laws that award both civil and criminal remedies to the wronged, there still exist rampant export of fake goods and parallel exports that have caused grave losses in terms of goodwill and revenue to number of companies in various industries.

In the present case, Plaintiff filed an injunctive suit against the Defendants who was the proprietor of several e-commerce websites that dealt in trading of international luxury products.

Parties

  1. Plaintiff No. 1, Cartier International A.G., is the proprietor of the trademark CARTIER since 1847. The trademark CARTIER has also been recognized as a well known mark under section 2(zg) of the Trademarks Act, 1999.
  1. Plaintiff No. 2, Officine Panerai AG, is the proprietor of the trademark PANERAI since 1860.
  1. Plaintiff No. 3, Richemont International S.A., is the proprietor of the trademarks VACHERON CONSTANTIN and JAEGER LECOULTRE. Plaintiff No. 3 has been engaged in manufacture and sale of watches under the trademark VACHERON CONSTANTIN since 1819 and under the trademark JAEGER LECOULTRE since 1903.
  1. The Plaintiffs are part of Richemont Group. Plaintiff Nos. 2 and 3 deal in watches and other horological and chronometric instruments while plaintiff No. 1 deals in jewellery, writing instruments and leather goods as well.
  1. Defendant No. 4 is a company trading under the name and style of Digaaz e-Commerce Pvt. Ltd. and that defendant Nos. 1 to 3 are the directors thereof.

Brief facts

  1. The defendants operate an e-commerce website http://www.digaaz.com, where they offer lifestyle and fashion products for sale. The defendants have been found to be offering for sale and supplying huge quantities of counterfeit products bearing trademarks and logos of various luxury brands including the plaintiffs on their website http://www.digaaz.com.
  1. Many customers have already been cheated by the defendants who have purchased large quantities of counterfeit products, including those bearing the plaintiffs’ trademarks. Subsequently, complaints were lodged in the Cyber Cell. The matter was still pending against them and was at the stage of filing charge sheet.
  1. The plaintiffs came to know in February, 2014 that the defendants were selling and supplying counterfeit products of various luxury brands including those of the plaintiffs on their website http://www.digaaz.com and issued cease and desist notices to them on 20th February, 2014, which were left unanswered.
  1. The volume of counterfeit goods sold by the defendants demonstrates that the defendants were seasoned infringers and counterfeiters with a regular supply of counterfeit goods. Many of the right holders of these brands had instituted proceedings against the defendants before this Court and have obtained orders restraining the defendants from selling counterfeit products bearing their respective trademarks and logos.
  1. The Chandigarh Cyber Cell’s investigation and raid confirm that the defendants were offering for sale of counterfeit products including those bearing the suit trademarks on the impugned websites http://www.digaaz.com, http://www.watchcartz.com and http://www.luxecart.com. The Cyber Cell also confirmed that the defendants procure the counterfeit products from New Delhi, Ludhiana and Chandigarh at throw away prices and sell these at exorbitant rates cheating both customers and brand owners and making enormous illegal profits in the process.
  1. On 8th October, 2014 defendant Nos.1 and 2 were arrested by the Cyber Cell and were remanded in judicial custody for 14 days. The matter is still pending against them and is at the stage of filing charge sheet.
  1. The plaintiffs ultimately filed the present suit seeking permanent injunction restraining infringement of trademark, passing off and damages.

Issue

Whether Plaintiffs are entitled for permanent injunction against Defendants as prayed for?

Applicable laws/rule

Trade Marks Act, 1999

Section 135- Reliefs in suits for infringement or for passing off include temporary and permanent injunction on court‘s terms and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.

Decision of the Court

  1. While holding that there is a prima facie case of infringement, the court delved into the issue of damages and punitive damages.
  1. In terms of Section 135 of the Trade Marks Act, 1999, the plaintiffs in the instant suit opted for damages and the computation thereof was accepted by the court.
  1. The Court held that defendants have deliberately stayed away from the present proceedings with the result that an enquiry into their accounts for determination of damages could not take place. The Hon‘ble Court observed that allowing such conduct would give arise to situation where defendant who appears in Court and submits its account books would be liable for damages, while party who chooses to stay away from proceedings would escape the liability on account of failure of the availability of books of account.
  1. The Hon‘ble Court observed that this Court has in previous instances granted exemplary and punitive damages and referred to the case of Time Incorporated v. Lokesh Srivastava & Anr., (citation) where Justice R.C. Chopra observed that “time has come when the Courts dealing in actions for infringement of trademarks, copyrights, patents etc., should not only grant compensatory damages but also award punitive damages with a view to discourage and dishearten law breakers who indulge in violation with impunity out of lust for money, so that they realise that in case they are caught, they would be liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them.”
  1. The Hon‘ble Court further referred to the case of Microsoft Corporation v. Rajendra Pawar & Anr.,2008 (36) PTC 697 (Del.) in which it was stated that: “Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade court proceedings in a systematic attempt to jettison the relief sought by the plaintiff. Such flagrancy of the Defendant’s conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of court proceedings does not de facto tantamount to escape from liability. Judicial process has its own way of bringing to tasks such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective.
  1. In light of the above approaches of concurrent Benches, the Court in Cartier passed a decree of permanent injunction against the Defendant and proceeded to order the Defendants to furnish books of accounts to the Plaintiffs to compute exact damages. The Hon‘ble Court finally ordered punitive damages of Rs. 1 crore to be paid to the Plaintiffs, along with the costs.

Conclusion

This Judgment was much appreciated for the high punitive damages that were ordered. This judgment poses as a strong precedent for trademark infringement and anti-counterfeit cases. On analysing the judgment, it can be concluded that the following factors among other things were taken into consideration while granting punitive damages to the Plaintiffs: the Defendants’ absence in the proceeding, thus implying their complete dismissal and total disregard for the rule of law; the fraudulent techniques implemented by the Defendants to attract affluent consumers who would have otherwise been the Plaintiffs’ consumers and, blatant trademark infringement and sale of counterfeit products.

 

About the Author:  Nadine Kolliyi, Legal Intern at Khurana & Khurana, Advocates and IP Attorneys and Amruta Mahuli, Legal Associate at Khurana & Khurana, Advocates and IP Attorneys who can be reached at mumbai@khuranaandkhurana.com.

World IP Day celebrated by BIPF

In celebration of World Intellectual Property Day, Bangladesh IP Forum (BIPF) held a boot camp, “Volunteer for Intellectual Property” (VIP), on May 2, 2017 at the Nabab Nawab Ali Chowdhury Senate Bhaban of University of Dhaka to raise awareness on the importance of intellectual property rights (IPR).

On the fourth year this preparation has been held, 300 college students and youthful business people were prepared on fundamental intellectual property (IP) issues, for example, copyright, trademark, patent and designs, with the aim to develop attention to the significance of intellectual property rights (IPR). Manzurur Rahman, Additional Secretary, Ministry of Information, called for attention to the requirement for IP mindfulness so that no other Bangladeshi needs to meet an indistinguishable destiny as the late Lucky Akhand, and included that one ought to look for legitimate help for one’s intangible property the way one would for tangible property. Barrister ABM Hamidul Mishbah, Founder of Bangladesh IP Forum, highlighted the significance of IP mindfulness in the flourishing “idea market”, where even youthful youngsters are making recreations.

Speakers at the event included Ministry of Information Additional Secretary Md Manzurur Rahman; Bangladesh Copyright and IP Forum founder Barrister ABM Hamidul Mishbah; Bangladesh Association of Software and Information Services President Mustafa Jabbar; Copyright Office Registrar Jafor R Chowdhury; Director of Access to Information (A2i) Programme under Prime Minister’s Office Md Mustafizur Rahman; Kazi Food Industries Ltd CEO Tanvir Haider Chaudhury; Dr Nuzhat Chowdhury of Bangabandhu Sheikh Mujib Medical University; filmmaker Asif Munier; and Unmad Editor Ahsan Habib.

Other speakers were Director of Leveraging ICT under ICT Division Sami Ahmed; Bangladesh Organisation for Learning & Development Founder President Quazi M Ahmed; former CEO of IBM Bangladesh and stand-up comedian Naveed Mahbub; Dhaka University Assistant Professor Arif Jamil; Aamra Networks Ltd Head of Marketing Solaiman Shukhon; Gweebarra Bakery Industry Ltd Director Quaseed Abd-Allah Chowdhury, and Bangladesh Innovation Forum Founder Ariful Hasan Opu.

The event was inaugurated by Her Excellence Leoni Cuelenaere, Honourable Ambassador of the Kingdom of Netherlands in Bangladesh. The closing ceremony was presided over by Programme Director of A2i Kabir Bin Anwar, who presented the certificates to the participants.

Upon completion of the training, the volunteers are presently anticipated that they would spread IP mindfulness and go about as ministers of IPR in their groups and systems.

The VIP 2017 event was sponsored by Bellissimo Ice Cream, Kazi Food Kitchen, Microsoft, and Gweebarra Bakery Industry Ltd.

Author: Abin T Sam, Jr.Patent Associate at Khurana & Khurana Advocates and IP Attorneys.

Bangladesh puts to motion GI Registration for Comilla delicacy Rasmalai, textile Khadi

The process to get Geographic Indication (GI) registration of two famous Bangladeshi products, Comilla’s dessert Rasmalai and textile Khadi, has started. Comilla Deputy Commissioner Jahangir Alam has said the district administration has chosen the products and started to find their original producer. “We have started discussions with the producers,” he told bdnews24.com on February 14th.

According to the World Intellectual Property Organization, a Geographical Indication (GI) is a sign used on products that have a particular geographic origin, possess, qualities or a reputation that are due to that origin. GI indication of goods acts as the “claim to fame” for a state. The members of the World Trade Organization signed the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement in 1994. The TRIPS agreement introduced intellectual property law into the international trading system for the first time and remains the most comprehensive international agreement on intellectual property to date.

Though TRIPS requires WTO members to provide copyright rights, including that related to GI, Bangladesh made the GI law – the Geographical Indicative Products (Registration and Protection) Act – in 2013. A GI policy was formulated in line with the law after another two years. Later, measures were taken to protect the ownership of traditional ‘Jamdani’ saree’s intellectual property. Now the steps have been extended to ‘Rasmalai’ and ‘Khadi’.

A letter from Assistant Commissioner Merina Sultana at the Comilla DC’s office has been issued, announcing the decision to have the two products as geographically indicative ones. ‘Rasmalai’ maker Matri Bhandar and ‘Khadi’ manufacturers were called to the DC’s office to discuss the matter on 13th February.

Brothers Khanindra Sen and Manindra Sen opened the sweets shop Matri Bhandar in Comilla’s Monoharpur in 1930. Now their descendants run the main shop, though shops with similar names are aplenty in the district. Many of the locals believe this shop is the origin of ‘Rasmalai’.

Comilla traditionally produces ‘Khadi’, a textile which was being exported along with world famous ‘Muslin’. Comilla’s Chandina is one of the places famous for handspun and hand-woven ‘Khadi’ or ‘Khaddar’ for a long time. The product became a symbol of the Swadeshi Movement during the British rule of the undivided India to boycott foreign products. A handloom used by Mahatma Gandhi is still there. Many weavers are now involved in the production of ‘Khadi’. Asked how the original producer will be determined from them, a district administration official told bdnews24.com: “The oldest ‘Khadi’ manufacturers are in Chandina. We are scrutinising them.”

DPDT Sub-Registrar (Patent and Design) Saidur Rahman has said the process to register Hilsha and several other products were under way. He told bdnews24.com that the DCs across Bangladesh are finding their corresponding districts’ products following Prime Minister Sheikh Hasina’s order.

A DPDT official, requesting anonymity, said the department would issue the registration for ‘Rasmalai’ and ‘Khadi’ after checking the products to be sent by Comilla district administration. He also said Netrokona’s ‘Sadamati’, Kataribhog’ and ‘Kalijira’ rice, Rajshahi’s mango, and several other products were also being scrutinised for GI registration.

The Department of Patents, Designs and Trademarks (DPDT) is the authority tasked with issuing GI registration.

Following an application from Bangladesh Small and Cottage Industries Corporation (BSCIC), ‘Jamdani’ saree became the first product to get GI registration in November last year.

Author: Abin T Sam, Jr.Patent Associate at Khurana & Khurana Advocates and IP Attorneys.

Myanmar – IP Law Developments

Background

Myanmar has no devoted law on trademarks. In Myanmar, registration of a trademark is possible through “Declaration of Ownership of Trademark” in the Office of the Registration of Deeds under the Ministry of Agriculture, Livestock and Irrigation and Assurances. The Inspector General of Registration supports this process under the section 18(f) of the Registration Act of 1909. To publicize the registration, a cautionary notice is published in local newspaper which describes the details of related trademark.

Process

In order to register a trademark in Myanmar, the below described process has to be followed:

  1. A prior mark search has to be conducted in to ensure the uniqueness of trademark. This confirms that the trademark has not been registered previously. Since there is no IP Office in Myanmar, this search has to be conducted on private basis from the cautionary notices published in the local newspaper or journals. as is the case with services offered through other firms. However, since the publication of a cautionary notice in newspaper is not compulsory this prior mark search cannot be enforced as an exhaustive search. In any case, the Registrar does not conduct a search of prior marks when examining a Declaration of Ownership filing.
  1. Registration of a trademark under the Office of the Registration of Deeds, requires the applicant to submit a signed declaration of ownership of the mark. This self attested declaration must include the detailed description of the related goods and services. The documents necessary for registration of trademark includes, power of attorney, original specimen of each trademark and declaration of ownership of trademark.
  1. Registration process of a trademark takes minimum three weeks once the application has been filed for obtaining a trademark. According to the Myanmar Stamp Act, every instrument to which the duty applies, when executed outside of Myanmar, must be duly stamped within three months of entering the country.

Further, Office of Registration of Deeds does not allow Foreign trademark owners to file a registration directly in the country. To do so, they must apply through a local licensed agent or a lawyer. The must submit the required documents in English, or certified English translations provided where other languages are used.

Lastly, in order to draw the attention of public towards the registered trademark, it’s a common practice to publish a cautionary notice regarding the same in the newspaper to declare that the mark has been registered and is in use by the owner or licensees. The cautionary notice must consist of information like the name of the trademark, its owner, the registration number and a warning stating that any fraudulent imitation or unauthorized use will be dealt with in accordance with the law.

Treaty Obligations

On May 2001, Myanmar became a member of the World Intellectual Property Organization (WIPO). On January 2006, Myanmar was due to bring new intellectual property laws being a member of the World Trade Organization (WTO) and in keeping with TRIPS Agreement. Further, on November 2005, Myanmar and other least developed countries were given an extension by the WTO Council for TRIPS until 1 July 2013, to provide protection for trademarks, copyright, patents, and other intellectual property under the WTO, but this has not eventuated.

Draft Trademark Law

In Myanmar no law has yet passed regarding the Draft Trademark Law although the application for it has been submitted in the parliament in 2013 only. Most probably the Draft Trademark law or it’s amended version will be passed soon.

This law is assumed to have securing the trademark for the duration of ten years from the first filed date and has to be renewed successively for the same duration thereafter. The law will follow ‘first-to-file’ system, which states that the ownership of trademark will be granted to the person who applies first for the registration. For prior mark search of a trademark, one must apply to the Intellectual Property Office, which the law will presumably establish, pay a registration fee and conduct the relevant search.

Currently, Myanmar is under the process of developing special Intellectual Property courts. The courts will deal with the disputes regarding the criminal and civil cases of infringements. Under the draft law a trademark owner may initiate litigation in a criminal and/or civil action for an alleged infringement. Trademark infringement will also be a criminal offence under the draft law, punishable by up to three years in prison.

In order to continue enjoying the rights entitled by a registered mark under the Draft Trademark law pertaining to Registration Act 1909, the application for the trademark has to be refiled by the owner under the new provisions once they come into force.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

Enhancement of IP protection in Vietnam via new Penal code

July 1, 2016, was the day when the new Penal Code 2015 came into existence by replacing the then current Penal Code. The new Penal Code brought a number of transformations as far as trademarks and other IP‘s are concerned. The new Penal Code has enhanced the capability of brand holders in enforcing their trademark and Intellectual Property rights.

The transformations introduced by the new Penal Code 2015, mainly includes:

  1. It is for the first time that criminal liabilities may be applied to legal entities (juridical persons, as opposed to individuals) for various crimes, which includes:
  • the crime of manufacturing and trading in counterfeit goods (Article 192);
  • the crime of manufacturing and trading in counterfeit foods, foodstuffs or food additives (Article 193);
  • the crime of manufacturing and trading in counterfeit curative medicines or preventive medicines (Article 194);
  • the crime of manufacturing and trading in counterfeit animal feeds, fertilizers, veterinary drugs, plant protection drugs, plant varieties and animal breeds (Article 195);
  • the crime of violating copyright and related rights (Article 225); and
  • the crime of violating industrial property rights (trademarks and geographical indications) (Article 226).
  1. The solutions for handling the criminal liabilities applied to legal entities may include:
  • monetary fines;
  • suspension of business;
  • prohibition on doing business; and
  • prohibition on raising capital.

The above mentioned criminal liabilities to legal entities introduced by the new Penal Code have enabled robust and highly effective investigations and prosecutions against organized crime related to trademark and other Intellectual Property. It has also helped in eradicating the repeated crimes of manufacturing and trading of counterfeit goods, also on those goods which are infringing on IP rights, especially copyright, trademarks and geographical indications.

Related to the crime of manufacturing and trading in counterfeit and infringing goods, the new Penal Code 2015 has provided for new, lower thresholds:

Counterfeiting Goods:

The manufacturing and trading of counterfeited goods having values of approximately US$89 or above is enough in constituting the crime of manufacturing/trading in counterfeit goods.

Infringements Goods:

In the previous penal code, the act of intentionally infringing the rights protecting a trademark or geographical indication on “a commercial scale” was enough in constituting the violation of industrial property rights. But, it was difficult to enforce this provision because of the absence of guidelines on when an infringement was considered “on a commercial scale”.

The current Penal Code 2015 has eliminated the phrase “on a commercial scale” and provides the below-mentioned thresholds for the crime of violating industrial property rights.

  • the infringer gains an illicit profit of approximately US$ 445 or over;
  • the infringement has caused damage to the industrial property right holder of approximately USD890 or over; or
  • the infringing goods have a value of approximately US$ 890 or over.

The new Vietnam Penal Code 2015 is a welcome move for brand holders as it enhances the capability of brand holders in enforcing their trademark and Intellectual Property rights.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

Trademark Infringements: The big problems faced by foreign brands in Nepal

The government of Nepal is notorious for policy and procedural time wasting as far as providing services to businesses is concerned. The same has resulted in problems for businesses and industries to continue operating in Nepal. Among the several problems faced by them trademarks infringement of reputed foreign brands and multinational brands has become a major issue in recent years.

Going by the data of the Department of Industry (DoI), the government body falling under the Ministry of Industry which looks after the registration of industrial and intellectual property, 546 complaints of trademark violations has been registered till June 15, 2016 with most of the cases currently in the court. According to DoI, 90 disputes have so far been settled.

None the less, the sources reveal that the number of such cases can be as high as 1,200 with some of the cases continuing to go undecided for more than 15 years. Some of the trademark disputes include cases of Panparag, Dhara Oil, Rajanighandha, Havells, Pepsico and Kansai Nerolac, many of these are currently in court. Looking at these disputes it is clearly evident that most of the trademark infringement cases are of top Indian brands. Sources say that, these disputes have increased since 2003 after Nepal joined as a member of the World Trade Organisation (WTO). Experts point out that there is absence of proper policies and laws is the reason for the increasing number of trademark infringement cases.

As the current Design and Trade Mark Act, 2022 lacks clarity on security and registration of trademarks, among other things, the counterfeiting and theft of trademarks of globally recognized brands is on the rise, the experts say.

According to the Act, the ownership and rights are only established after the registration of trademarks in Nepal. “Using this provision, local companies here are registering and holding the trademarks of MNCs,” the expert says. According to the experts, this trend has been on the rise over the last decade.  There are several instances of registration of copied trademarks of Multi National Companies. When the true owners of the trademarks arrive in Nepal, they discover that their trademarks are already registered here by someone else.

The reasons for it are:

The wrong practice regarding the registration of duplicate or copied trademarks happens for several reasons. “The Market value of trademarks is the prime reason. A well recognized and established brand earns reputation and goodwill among the customers globally,” says the expert. This culture is increasing as the people involved are getting financial benifits. Those people who have got registered trademarks of foreign companies can bargain the ownership of the brands in Nepal.

Similarly, it is quite easy for the people involved in effortlessly accessing the already been established market by global reputed brands. The consumers usually do not purchase items or goods by going into the brand details. They are satisfied by buying items which look similar to original brands. “Many goods & items of globall brands are available in the local market without the registration of trademarks,” the expert says. Don’t care attitude of the true owners is also another reason for the increase in trademark infringement cases as they don’t register their trademarks in Nepal in time. The negligence of Department of Industry is also resulting in infringement of trademarks. “The department officials register the globally recognised trademarks without proper investigation of the ownership,”.

The Legal Weaknesses

The weak legal provision in Nepal is giving a fertile arena for malpractice regarding the trademarks registration. According to the Patent, Design and Trade Mark Act of 2022 counterfeiting and using of already registered trademarks is illegal. But, the law is weak when it is about punishment. According to the existing legal provisions, DoI can fine up to Rs 100,000 and seize related items from those people which are involved in trademark violations. “However, there are few instances in the past where people were punished for such deeds,” expert says, adding, “A well known case is the infringement of trademark of Goldstar brand shoes when the involved people were slapped with hard punishments.”

Inability to Reform Existing Law

The reason for trademark disputes directly relates to inability of Nepal in the formulation of policies with respect to the Paris Convention for the Protection of Industrial Property. In 2001, Nepal became a signatory of the landmark global deal. It constitutes definite provisions for protection of trademarks.  Even the international treaty was signed fifteen years back, the existing Act has not yet been amended or reformulated inline by the government.

The central agenda of this International treaty was the provision of protection to trademarks and services in Nepal. The popular trademarks are protected under the article 6bis of the treaty  without having to register in the signatory countries. Irrespective of this, the famous trademarks are suffering, due to the lack of appropriate legal provisions. On this, Senior Advocate, Sushil Kumar Pant argued that  “It clearly shows that our government and lawmakers either do not know the importance of these international treaties or are totally ignoring the significance of the conventions signed by the country,” at the law firm Jurist and Company. He also pointed out that the reasons for this are corrupt practices and dishonesty prevailing in the bureaucratic and political levels which hinders the formulation of policies to implement such essential international conventions.

Nepal has been given extension thrice for the implementation of the convention but it has already missed it twice. It missed the first deadline in 2006 thereafter it was provided the extension for the duration of 2007-2015. Again after missing it, now the country is provided with the extension upto 2021 for updating and reformulating its existing law.

Author: Shilpi Saxena, Jr. Patent Associate at Khurana & Khurana Advocates and IP Attorneys can be reached at shilpi@iiprd.com.

Design Registration in Vietnam

TYPES OF DESIGNS:

  • Industrial Design: An industrial design means a specific appearance of a product embodied by three-dimensional configurations, lines, colors, or a combination of these elements.
  • Layout-Design: A layout-design of semiconductor integrated circuit (hereinafter referred to as layout-design) means a three-dimensional disposition of circuit elements and their interconnections in a Semi-conductor integrated circuit.

PROCEDURE FOR DESIGN REGISTRATION:

Step 1: Filing:

  • Who may apply: Article 86 and 89:
  • Authors who have created inventions with their own efforts and expenses
  • Organizations or individuals who have supplied funds and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties.
  • Foreign nationals residing permanently
  • Foreign organizations having a production or trading establishment
  • Non-resident foreign nationals or organizations not having a production or trading establishment shall apply through a lawful representative.
  • Documents required: Section 100
  • Declaration for registration in the prescribed form
  • Documents, samples and information identifying the invention
  • Power of attorney (if applied through representative)
  • Documents evidencing the registration right if such right is acquired by another person
  • Documents evidencing the priority right, if it is claimed
  • Vouchers of payment of fees and charges
  • A copy of the first application certified by the registration office
  • Requirements of application:
  • Documents identifying an industrial design registered for protection
  • Description and a set of photos or drawings of such industrial design.
  • The description must consist of a section of description and a scope of protection of such industrial design.
  • The section of description of an industrial design must satisfy the following conditions:
  • Fully disclosing all features expressing the nature of the industrial design and clearly identifying features which are new, different from the least different known industrial design, and consistent with the set of photos or drawings.
  • Where the industrial design registration application consists of variants, the section of description must fully show these variants and clearly identify distinctions between the principal variant and other variants.
  • Where the industrial design stated in the registration application is that of a set of products, the section of description must fully show features of each product of the set.
  • The scope of protection must clearly define features which need to be protected, including features which are new and different from similar known industrial designs.
  • The set of photos and drawings must fully define features of the industrial design.
  • Filing Date: Article 108:
  • All applications shall be received by the State administrative authority.
  • The filing date shall be the one on which the application is received by the state administrative authority.
  • First to file: Article 90:
  • Where two or more applications are filed by several people to register industrial designs identical with or insignificantly different from each other, protection may only be granted to the valid application with the earliest date of priority or filing date among the applications that satisfy all the requirements.
  • Filing fees:
  • Filed in paper form without digital database of the whole content of the application: 180 thousand VND.
  • Filed in paper form with digital database of the whole content of the application: 150 thousand VND.
  • Filed online: 100 thousand VND.

Step 2: Examination:

  • The application shall be examined within 1 month from the filing date (Article 119).
  • Formal Examination: Article 109:
  • To verify the formal validity of the application, an examination process shall be conducted.
  • Substantive Examination: Article 119:
  • 6 months from the date of publication of the application. If a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication
  • Invalidity in the following circumstances:
  • The applicant does not fulfil the requirements of formality;
  • The subject matter of the application is not eligible for protection;
  • The applicant does not have the right to registration;
  • The application was filed in contrary to the mode of filing;
  • The applicant fails to pay the fees and charges.

Step 3: Acceptance/ Refusal:

  • The application for registration may be accepted with or without amendments.
  • Until the notice of refusal by the State administrative authority, the applicant shall have the following rights:
  • To make amendment or supplement to the application;
  • To divide the application;
  • To request for recording changes in name or address of the applicant;
  • To request for recording changes in the applicant as a result of assignment under the contract, as a result of inheritance, bequest, or under a decision of an authority;
  • Any amendment or supplement to an industrial property registration application must not expand the scope of the subject matter disclosed or specified in the application and must not change the substance of the subject matter claimed for registration in the application and shall ensure the unity of the application.
  • Fee for amending applications, including for request of supplement, separation, assignment, change (per each amendment/ application): 120 thousand VND.
  • Refusal: Article 117:

Refusal to register an application may be on the following grounds:

  • The subject matter claimed in the application does not fulfil the protection requirements;
  • The application satisfies all the conditions for the issue of a protection title but is not the application with the earliest filing date or priority date as in the case referred to in Article 90.1 of this Law.
  • The application falls within the cases referred to in Article 90.1 of this Law but a consensus of all the applicants is not reached.
  • The State administrative authority shall serve a notice of an intended refusal to grant a Protection Title, in which the reasons are clearly stated with a set time limit for the applicant to oppose to such intended refusal.
  • The State administrative authority shall serve a notice of the refusal to grant a Protection Title if the applicant has no objection or has unjustifiable objection to such intended refusal.

Step 4: Publication:

  • Article 110: An industrial property registration application which has been accepted as being valid by the State administrative authority shall be published in the Industrial Property Official Gazette.
  • An industrial design registration application shall be published within 2 months as from the filing date or the priority date, as applicable, or at an earlier time at the request of the applicant.
  • Principal information on a layout-design registration application and the protection title for a layout design shall be published within 2 months as from the grant date of such protection title.
  • Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 thousand VND.
  • The application for registration shall be examined as to its substance within 6 months from the date of its publication.
  • Charge for substantive examination of application (for each alternative) – without information searching charge: 300 thousand VND.
  • Additional charge for internationally classifying of industrial design (each class: 100 thousand VND.

Step 5: Protection Title:

  • Article 93 stipulates the validity of the protection titles:
  • It is valid throughout the territory of Vietnam.
  • The registration of Designs shall be valid up to 5 years from the date of filing. Their validity commences on the date of grant of protection. It may be renewed for two consecutive terms of 5 years each.
  • Certificates of registered semiconductor integrated circuit layout-designs shall each have a validity starting from the grant date and expiring at the earliest date among the following:
  • The end of 10 years after the filing date.
  • The end of 10 years after the date the layout-designs were first commercially exploited anywhere in the world by persons having the registration right or their licensees.
  • The end of 15 years after the date of creation of the layout-designs.
  • Rights accruing after registration: Article 122 and 123:
  • Moral Rights:
  • To be named as authors in industrial designs or layout designs.
  • To be acknowledged as authors in documents in which industrial designs or layout designs are published or introduced.
  • Economic rights:
  • Owners of industrial designs or layout designs are obliged to pay remuneration to their authors, unless otherwise agreed by the parties.
  • Minimum level of remuneration:
  • 10% of the profit amount gained from the use of industrial designs or layout designs.
  • 15% of the total amount received by the owner in each payment for licensing of an industrial design or layout design.
  • To use or permit others to use the industrial property object in accordance with Article 124 and Chapter X of the law (Transfer of rights: Assignment and Licensing):
  • Use of an industrial design means the performance of the following acts:
  • Manufacturing products with appearance embodying the protected industrial design.
  • Circulating, advertising, offering and stocking for circulation products mentioned
  • Importing products mentioned a
  • Use of a layout-design means the performance of the following acts:
  • Reproducing the layout-design; manufacturing semi-conductor integrated circuits under the protected layout-design.
  • Selling, leasing, advertising, offering or stocking copies of the protected layout-design, semiconductor integrated circuits manufactured under the protected layout-design or articles containing such semi-conductor integrated
  • Importing copies of the protected layout-design, semi-conductor integrated circuits manufactured under the protected layout-design or articles containing such semi-conductor integrated circuits.
  • To prohibit others from using the industrial property object in accordance with Article 125 (Right to prohibit others from using industrial property objects).
  • To dispose of the industrial property object in accordance with Chapter X of this Law (Transfer of rights: Assignment and Licensing).

Patent Filing Procedure: Vietnam

Step 1: Filing:

  • Who may apply: Article 86 and 89:
  • Authors who have created inventions with their own efforts and expenses
  • Organizations or individuals who have supplied funs and material facilities to authors in the form of job assignment or hiring unless otherwise agreed by the involved parties.
  • Foreign nationals residing permanently
  • Foreign organizations having a production or trading establishment
  • Non-resident foreign nationals or organizations not having a production or trading establishment shall apply through a lawful representative.
  • Documents required: Section 100
  • Declaration for registration in the prescribed form
  • Documents, samples and information identifying the invention
  • Power of attorney (if applied through representative)
  • Documents evidencing the registration right if such right is acquired by another person
  • Documents evidencing the priority right, if it is claimed
  • Vouchers of payment of fees and charges
  • A copy of the first application certified by the registration office
  • Requirements of the registration application:
  • Description of the invention, along with scope of protection
  • The scope of protection must be described in the form of technical combinations which are necessary and sufficient to identify the scope of rights to such inventions, and compatible with the description and drawings (if any)
  • Abstract, disclosing the principal features
  • Fully and clearly disclosing the nature of the invention to the extent that such invention may be realized by a person with average knowledge in the art
  • Briefly explaining the accompanied drawings, if any
  • Clarifying the novelty, inventive step and susceptibility of industrial application of the invention
  • Filing Date: Article 108:
  • All applications shall be received by the State administrative authority.
  • The filing date shall be the one on which the application is received by the state administrative authority.
  • First to file: Article 90:
  • Where two or more applications are filed by several people to register the same invention, protection may only be granted to the valid application with the earliest date of priority or filing date among the applications that satisfy all the requirements.
  • Vietnam is a member of PCT, hence international applications are also accepted.
  • Filing fees:
  • Filed in paper form without digital database of the whole content of the application: 180 thousand VND.
  • Filed in paper form with digital database of the whole content of the application: 150 thousand VND.
  • Filed online: 100 thousand VND.
  • PCT filing, excluding fees and charges collected by the international bureau: 500 thousand VND.

Step 2: Examination:

  • The application shall be examined within 1 month from the filing date (Article 119).
  • Formal Examination: Article 109:
  • To verify the formal validity of the application, an examination process shall be conducted.
  • Substantive Examination: Article 119:
  • 12 months from the date of publication of invention. If a request for substantive examination is filed before the date of application publication, or from the date of receipt of a request for substantive examination if such request is filed after the date of application publication
  • Invalidity in the following circumstances:
  • The applicant does not fulfil the requirements of formality;
  • The subject matter of the application is not eligible for protection;
  • The applicant does not have the right to registration;
  • The application was filed in contrary to the mode of filing;
  • The applicant fails to pay the fees and charges.

Step 3: Acceptance/ Refusal:

  • The application for registration may be accepted with or without amendments.
  • Until the notice of refusal by the State administrative authority, the applicant shall have the following rights:
  • To make amendment or supplement to the application;
  • To divide the application;
  • To request for recording changes in name or address of the applicant;
  • To request for recording changes in the applicant as a result of assignment under the contract, as a result of inheritance, bequest, or under a decision of an authority;
  • Any amendment or supplement to an industrial property registration application must not expand the scope of the subject matter disclosed or specified in the application and must not change the substance of the subject matter claimed for registration in the application and shall ensure the unity of the application.
  • Fee for amending applications, including for request of supplement, separation, assignment, change (per each amendment/ application): 120 thousand VND.
  • Refusal: Article 117:

Refusal to register an application may be on the following grounds:

  • The subject matter claimed in the application does not fulfil the protection requirements;
  • The application satisfies all the conditions for the issue of a protection title but is not the application with the earliest filing date or priority date as in the case referred to in Article 90.1 of this Law.
  • The application falls within the cases referred to in Article 90.1 of this Law but a consensus of all the applicants is not reached.
  • The State administrative authority shall serve a notice of an intended refusal to grant a Protection Title, in which the reasons are clearly stated with a set time limit for the applicant to oppose to such intended refusal.
  • The State administrative authority shall serve a notice of the refusal to grant a Protection Title if the applicant has no objection or has unjustifiable objection to such intended refusal.

Step 4: Publication:

  • Article 110: An industrial property registration application which has been accepted as being valid by the State administrative authority shall be published in the Industrial Property Official Gazette.
  • An invention registration application shall be published in the 19th month as from the filing date or the priority date, as applicable, or at an earlier time at the request of the applicant.
  • Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 thousand VND.
  • The application for registration shall be examined as to its substance within 6 months from the date of its publication.
  • Charge for substantive examination of application (for each group of six products/services) – without information searching charge: 420 thousand VND.

Step 5: Protection Title:

  • Article 93 stipulates the validity of the protection titles:
  • It is valid throughout the territory of Vietnam.
  • The registration of Patent shall be valid up to 20 years from the date of filing. Their validity commences on the date of grant of protection.
  • Rights accruing after registration: Article 122 and 123:
  • Moral Rights:
  • To be named as authors in invention or utility patents
  • To be acknowledged as authors in documents in which inventions are published or introduced.
  • Economic rights:
  • Owners of inventions are obliged to pay remuneration to their authors, unless otherwise agreed by the parties.
  • Minimum level of remuneration:
  • 10% of the profit amount gained from the use of invention
  • 15% of the total amount received by the owner in each payment for licensing of an invention
  • To use or permit others to use the industrial property object in accordance with Article 124 and Chapter X of the law (Transfer of rights: Assignment and Licensing):
  • Manufacturing the protected product
  • Applying the protected process
  • Exploiting utilities of the protected product or the product manufactured under the protected process
  • Circulating, advertising, offering, stocking for circulation the product
  • Importing the product
  • To prohibit others from using the industrial property object in accordance with Article 125 (Right to prohibit others from using industrial property objects).
  • To dispose of the industrial property object in accordance with Chapter X of this Law (Transfer of rights: Assignment and Licensing).