Category Archives: Asia

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.

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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.

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).

Trade Mark Filing in Vietnam

Vietnam became a member of the TRIPS agreement on January 11th, 2007. Vietnam has a commendable intellectual property (IP) framework which includes several multilateral agreements and other relevant bilateral trade agreements. Having regard to the pace and growth of local and global economy, Vietnam enacted the Law on Intellectual Property Rights in 2005. The law provides protection to major IP rights in Vietnam: industrial property rights which include Patents, Design and Trade Marks; Copyright and rights in plant varieties. In addition to Intellectual Property Law of 2005, there exist other laws that govern other issues related to IPR, such as the 2004 Law on Competition and the 2005 Civil Code, along with precedents, circulars and notifications by respective authorities guiding IPR implementation in Vietnam.

INTELLECTUAL PROPERTY LAW, 2005

TRADE MARK FILING PROCEDURE:

2

Step 1: Filing:

  • Who may apply: Article 87 and 89:
  • Individuals
  • Organizations
  • 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: Article 105:
  • .Documents, samples, information identifying the mark claimed for protection in a mark registration application shall include:
  1. a) Samples of the mark and list of goods or services bearing the mark;
  2. b) Rules on using collective mark or Rules on using certification mark.
  • Description of sample in order to clarify its elements and meaning.
  • 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 marks identical with or confusingly similar to each other, in respect of identical or similar goods or services, 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:
  • Fee for application filed in paper form without digital database of the whole content of the application: 180 thousand VND
  • Fee for application filed in paper form with digital database of the whole content of the application: 150 thousand VND
  • Fee for application filed online: 100 thousand VND
  • Additional fee for each product/service in excess of six: 30 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.
  • 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.
  • Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 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: 300 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 marks shall be valid up to 10 years from the date of filing. Their validity commences on the date of grant of protection.
  • It can be renewed indefinitely for consecutive terms of 10 years.
  • Rights accruing after registration: Article 123:
  • 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):
  • Affixing the protected mark to goods, packages of goods, means of business or supplying services and communicating papers in business activities;
  • Circulating, or offering, advertising, storing for sale of, goods bearing the protected mark;
  • Importing goods or services bearing the protected mark.
  • The use of a trade name means the conduct of any acts for commercial purposes by using it to name oneself in business activities, expressing it in transaction documents, shop-signs, products, goods, and packages of goods and means of service and advertisements.
  • 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).
  • Fee for granting a Certificate for trademark registration: 120 thousand VND.

FEW IMPORTANT PROVISIONS PERTAINING TO TRADE MARK:

TRADEMARKS:

Article 4: Interpretation of terminologies:

  • Trademark is any sign used to distinguish goods or services of different organizations and individuals.
  • Trade name is a designation of an organization or individual used in business to distinguish the business entity bearing such designation from other business entities acting in the same field and area of business. The area of business stipulated in this paragraph shall be the geographical area where business entity has business partners, clients or reputation.

PART III of the law provides industrial property rights.

Section 4 dictates the protection requirements for marks. The concerned provisions are as under:

Article 72. General requirements for marks eligible for protection:

This Article stipulates the basic prerequisites of a mark to be able to seek protection:

A mark shall be eligible for protection if it meets the following conditions:

  1. Visible sign – form – letters, words, pictures, figures – including three-dimensional figures or a combination thereof, represented in one or more colors;
  2. Capable of distinguishing goods or services of the mark owner from those of others.

Article 73. Signs not protected as marks:

This Article provides for the exceptions. It states that the following signs shall not be protected as marks:

  1. Signs identical with or confusingly similar to the national flags, national emblems;
  2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless permitted by such agencies or organizations;
  3. Signs identical with or confusingly similar to real names, alias, pen names or images of leaders, national heroes or famous persons of Vietnam or foreign countries;
  4. Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations which require that their signs must not be used, except where such seals are registered as certification marks by those organizations;
  5. Signs liable to mislead, confuse or deceive consumers as to the origin, functional parameters, intended purposes, quality, value or other characteristics of the goods or services.

Article 74. Distinctiveness of marks:

The most important characteristic of a mark is its distinctiveness or uniqueness. The IP law of Vietnam has one whole Article dedicated to the meaning of the term, and its limitations. Since the exceptions are clearly stated, no chance is left to vagueness or ambiguity.

  1. A mark shall be considered as distinctive if it consists of one or several easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and is not those signs provided for in paragraph 2 of this Article.
  2. A mark shall not be considered as distinctive if it is signs falling under one of the following cases:

a) Simple devices and geometric figures; numerals, letters, or words of uncommon languages, except for signs having been widely used and recognized as a mark;

b) Signs, symbols, pictures or common names in any language of goods or services that have been widely and often used and are common knowledge;

c) Signs indicating the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the goods or services, except for signs having acquired distinctiveness through use before the filing of mark registration applications;

d) Signs describing the legal status and activity field of businesses;

dd) Signs indicating the geographical origin of the goods or services, except for signs having been widely used and recognized as a mark or signs registered as collective marks or certification marks as provided for in this Law;

e) Signs not being integrated signs which are identical with or confusingly similar to a registered mark in respect of identical or similar goods or services on the basis of a registration application having earlier filing date or earlier priority date, as applicable including applications filed under international treaties to which the Socialist Republic of Vietnam is party;

g) Signs identical with or confusingly similar to another person’s mark having been widely used and recognized in respect of the similar or identical goods/services as before the filing date or the date of priority, as the case may be;

h) Signs identical with or confusingly similar to another person’s mark already registered in respect of identical or similar goods or services the Mark registration Certificate of which has been terminated for no more than 5 years, except where the ground for such termination is non-use of the mark as provided for in subparagraph d paragraph 1 Article 95 of this Law;

i) Signs identical with or confusingly similar to another registered person’s mark recognized as well-known in respect of the goods or services that are identical with or similar to those bearing the well-known mark; or in respect of dissimilar goods/services if the use of such marks may prejudice the distinctiveness of the well-known mark or the registration of such signs is aimed at taking advantage of goodwill of the well-known mark;

k) Signs identical with or similar to another person’s trade name having been used if the use of such signs is likely to cause confusion to consumers as to the source of goods or services;

l) Signs identical with or similar to a geographical indication being protected if the use of such signs is likely to cause mislead consumers as to the geographical origin of goods;

m) Signs identical with or containing geographical indications or being translated from the meaning or transcription of the geographical indication being protected with respect to wines or spirits if such signs have been registered for use with respect to wines and spirits not originating from the geographical area bearing such geographical indication;

n) Signs identical with or insignificantly different from another person’s industrial design having been protected on the basis of an industrial design registration application with filing date or priority date earlier than those of the mark registration application.

Section 5: This section stipulates the protection requirements for trade names:

Article 76. General requirements for trade names eligible for protection

A trade name shall be eligible for protection if it is capable of distinguishing the business entity bearing such trade name from other business entities acting in the same field and locality of business.

Article 77. Subject matters not protected as trade names

Designations of State agencies, political organizations, socio-political organizations, social organizations, socio-professional organizations or those entities who are not engaged in business activities shall not be protected as trade names.

Article 78. Distinctiveness of trade names

Similar to marks, conditions for distinctiveness have been laid down for trade names as well.  A trade name shall be considered as distinctiveness if it meets the following conditions:

  1. To consist of a proper name, except where it has been widely known as a result of use;
  2. Not to be identical with or confusingly similar to a trade name having been used earlier by another person in the same field and locality of business;
  3. Not to be identical with or confusingly similar to another’s mark or a geographical indication having been protected before the date it is used.

Trademark Law Bangladesh: An Abridgment

Bangladesh is a signatory to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement under the World Trade Organization (WTO), which came into force in 1995. TRIPS aim at harmonizing the intellectual property laws with most of the world. Hence, all the signatories of the agreement have a uniform IP law subject to minor modifications as allowed by the agreement. Bangladesh being in its transitional period complies with TRIPS to a larger extent (not fully compliant with international IP regime) and still in its process of harmonizing with TRIPS policy. Let’s take a sneak peek into the functionality of IP laws in Bangladesh in relation to the various sections prominently referred to from The Trademark Act, 2009:

The Trademarks Act, 2009:

Meaning of Trademark:

A trademark is any symbol, word, number, phrase, design, or any combination thereof which is used to identify the source of goods or services. The Trademarks Act, 2009 defines the term in Section 2(8). It provides for the following classification of marks:

  • Registered Trademark
  • Mark
  • Certification Trademark

A trademark is:

  • a registered trademark or a mark used in relation to goods so as to indicate a connection in the course of trade between the goods and the person having the right as proprietor to use the mark;
  • a mark used in relation to a service so that it leads to the indication that the person has the right to use the mark in the course of trade as a proprietor;
  • a mark used or proposed to be used (in future) in relation to any service or goods indicating a connection, between the goods and the person having the right, either as proprietor or as registered user (permitted user), to use the mark.

A trademark is generally used to identify the source for goods or services. Bangladesh has adopted the 9th Edition of NICE classification of goods and services. Hence, there are total 45 classes of goods and services, out of which 1-34 are goods, and 35-45 are services.

Procedure for Registration:

There are various steps involved in the procedure for registration:

Step 1: FILING OF APPLICATION – SECTION 15

  • Any person claiming to be the proprietor can file an application for registration of a mark used or proposed to be used.
  • The person(s) shall file separate application for each class of goods or services.
  • The application must be filed at the Head office or any branch of the Trademark Registry having territorial jurisdiction over the principal place of business. If the person does not carry on business in Bangladesh, the application must be filed in the office having territorial jurisdiction over the place mentioned in the address for service in Bangladesh.
  • Requirements:
  • Name of the Applicant(s)
  • Address and Nationality
  • Specification of goods
  • Fees: 3500 taka
  • Form- “TM-1”.

Step 2: ACCEPTANCE – SECTION 15

  • The Registrar may accept the application absolutely and go ahead with further process.
  • He may refuse to accept the application recording the grounds of refusal.
  • He may conditionally accept the application, i.e. subject to amendments, modifications, conditions or limitations.

Step 3: ADVERTISEMENT – SECTION 17

  • After the conditional or absolute acceptance of the application, the Registrar may advertise the application in the prescribed manner along with the prescribed fees.
  • If there are any corrections in the application under Section 19, it will be advertised again after such correction to the satisfaction of the Registrar.
  • Form- “TM-9”
  • Fees- 1000 taka.

Step 4: OPPOSITION – SECTION 18

  • Within 2 months from the date of advertisement of the application, any person may oppose the same by serving due notice to the Registrar via form TM-5 along with the prescribed fees (2000 taka).
  • He shall, within 1 month from the date of receipt of the notice, serve a copy of the same to the applicant.
  • Thereafter, the applicant shall file a counter within 2 months from the date of receipt of such notice to him via form TM-6 and the prescribed fees (1500 taka). If a counter is not filed, the application shall be deemed to have been abandoned.
  • The Registrar shall serve a copy of such counter to the opponent.
  • All the evidences upon which the applicant and opponent rely shall be submitted in the prescribed time and manner to the Registrar, and they shall be granted an opportunity of being heard if so desired upon application via form TM-7 or TM-23 along with prescribed fees (1000 taka).
  • The Registrar, after following due process of opposition shall decide whether to accept, conditionally accept, or reject the application.
  • Notwithstanding anything contained in the Act, the opposition proceedings must be wound up/ concluded in 120 working days.

Step 5: REGISTRATION – SECTION 20

  • If the application is accepted or not opposed or the notice period of opposition has expired, or it has been opposed and the decision is in favour of the applicant, the trademark shall be registered by the Registrar.
  • The applicant shall be issued a certificate of registration with the seal of the trademark registry.
  • Such certificate shall be issued within 150 working days from the date of filing of application.
  • The duration of the trademark shall be of 7 years, and can be renewed by paying the prescribed fees, from time to time.
  • The Registrar may renew the registration of the trademark for 10 years from the date of expiration of original registration or the last renewed registration on application by the applicant.

It takes around 24-36 months to get a trademark registered in Bangladesh in a smooth case.

Workflow:

1

Rights conferred by Registration:

Registration of a trademark confers the following rights under Section 25:

  • Exclusive right to use the trademark in relation to those goods and services for which it has been registered.
  • Obtain relief against infringement of the same in accordance with the Act.

It also provides that no person except the registered proprietor/ owner of the trademark shall use the same in respect of the goods and services for which it is registered under the Act, without the consent of the registered owner.

The Act, just like Indian law, also incorporates the common law remedy of “Passing Off’ in its Section 24. It provides that no infringement action be instituted for an unregistered Trade Mark. Secondly, nothing in the Act shall be deemed to affect the right of action against any person for passing off goods or services of another person and any other related remedies.

Infringement:

Section 26 deals with the Infringement of Trademarks. Usage by a person other than a registered proprietor of the identical or similar trademarks, the Trade Mark deemed to be infringed. On the other hand, Section 27 deals with the acts that do not amount to infringement. Lawful user, permitted use, etc. are provided in the section.

Assignment and Transmission:

The Act, in Chapter V, comprehensively provides for assignment and transmission of a registered trademark by the registered proprietor, with or without the goodwill (Section 34).  An unregistered trademark shall not be assignable or transmissible except along with the goodwill of the business concerned (Sec 35) under certain circumstances provided in the same section, it can be assigned or transmitted without the goodwill. Moreover, Section 38 incorporates assignment and transmission otherwise than in connection with the goodwill with conditions of fulfillment attached.

Offences and Penalty:

Section 71 firstly discloses the meaning of applying trademarks and trade descriptions, and secondly Section 72 mentions the circumstances when the Trade Marks are falsified or falsely applied. The penalties under the Act are as under:

  • Section 73: Penalty for falsifying or falsely applying Trademark: Imprisonment may extend to 2 years, but not less than 6 months, and/or fine which may extend to 2 lac taka, but not less than 50 thousand taka. For a second or subsequent conviction, the imprisonment would range from a minimum of 1 year to 3 years, and/or fine extendable up to 3 lac taka, but not less than 1 lac taka.
  • Section 74: Penalty for selling goods to which a false trademark or trade description is applied: Imprisonment for a term up to 2 years, and/or fine. For a second or subsequent conviction, imprisonment for a term up to 3 years, and/or fine.
  • Section 76: Penalty for falsely representing a trademark as registered: Imprisonment for a term up to 1 year, but not less than 6 months, and/or fine up to 1 lac, but not less than 50 thousand taka.
  • Section 77: Penalty of improperly describing a place of business as connected with the Trademarks office: Imprisonment for a term which may extend to 1 year but not less than 6 months, and/or with fine which may extend to 1 lac taka but not less than 50 thousand taka.
  • Section 78: Penalty for falsification of entries in the Register: Imprisonment for a term which may extend to 1 year but not less than 6 months, and/or fine, which may extend to taka 1 lac (84,600 INR approx.) but not less than 50 thousand taka.