Category Archives: Vietnam

Amendments in Intellectual Property Laws in Vietnam

Much awaited fourth amendment to the IP laws of Vietnam finally comes into force today i.e. on January 15, 2018. Circular No. 16/2016/TT-BKHCN (also called Circular No. 16), which was issued on June 30, 2016 by the Ministry of Science and Technology of the Government of Vietnam  which amends as well as supplements a number of articles of Circular No. 01/2007/TT-BKHCN (also called Circular 01). The amended circular no. 16 is a critical guidance document for implementing of IP laws in Vietnam. These amendments as already discussed are effective from January 15, 2018.

The amended circular will have a major impact on the Intellectual Property practice  followed in Vietnam as it modifies almost 49 out of 67 points present in the currently followed circular no. 1. Further, these modifications will resolve certain issues and concerns and align the IP laws of Vietnam with International IP system. The modifications mostly apply on the examination procedures conducted by National Office of Intellectual Property (NOIP) of Vietnam related to Patents, Trademarks, copyrights, Designs and other IPR. These provisions will also create favorable conditions for applicants for obtaining IP rights in Vietnam.

Below mentioned are some of the important amendments and supplements provided by the Circular no. 16 related to examination process of Patents, Trademarks and Designs.

1. General Regulations

1.1 Office Action response timings: Point 13.6.a and Point 15.7.a.i (All these points are present in Circular no. 1)

  • The time frame to respond to an office action concerning Formality Examination will now be 2 months instead of 1 month.
  • The timeframe to respond to an office action concerning substantive examination will now be 3 months instead of 2 months.
  • The deadline for the payment of registration fee will be 3 months instead of 1 month.

These deadlines may once be extended for a similar period. These amendments to the   above mentioned deadlines seems to be a more practical time frame for the applicants as compared to previous practice.

1.2 Appeals and their settlements: Point 22.1.c
The amended circular no. 16, has specifically provided that addition of new facts/details in application will not be accepted at the appeal stage. However, on the request made by the Applicant or appellant, NOIP may reexamine such new facts/details.. The amended circular allows the appeals settlement body to seek opinions of independent experts if the appealed case has a degree of complexity.

1.3 Points 15.7.b and 9.3-5: Decisions on Refusal
In circular no. 16, on getting a decision of refusal after substantive examination, the applicants can overcome the same by submitting new facts/details which were not considered in the examination and the NOIP may consider withdrawing the decision of refusal. The applicants do not have to lodge an appeal against the decision of refusal.

There is an alternative for overcoming decisions of refusal that are issued after considering responses to office actions regarding substantive examination. Instead of lodging an appeal, if the applicant submits new details (which have not yet been considered in the examination) which can affect the examination results, the NOIP will consider withdrawing the decision on refusal. In previous circular it was not the case.

1.4 There are few more general regulations in the amended circular no. 16 such as:

  • Excuses for missing deadlines as provided under Points 9.3-5 which explains force majeure event and Objective obstacles that are few excuses that NOIP considers while considering the late submissions. This will reduce the scope of delays in such procedures.
  • The NOIP has been provided the time period of one month from the receipt date of the request for notice of invalidation or termination, to send such notice to the right holder as has been provided under Point 21.3.a of the amended circular which
  • The new provisions makes it impossible for the right holder to revive their applications that they have withdrawn, thus making the whole procedure, a very substantial one rather than the old casual procedure.[Point 17.5.b]
  • The provision of the amended circular sets out the obligation on NOIP to inform the Opposing party of the examination results of the concerned application which was not practiced by the NOIP till now.

2. Key changes related to examination of Patents and Utility Models

2.1 Points 27.4 and 27.5: Deadlines for PCT applications to enter Vietnamese National Phase
In the old circular 1, PCT applications were allowed to enter national phases within 37 months by paying an extra fee. However, in the amended circular, the time limit for entering the national phase for PCT applications is strictly 31 months.

2.2 Point 25.1.a(ii): Deadline for requesting examination

The deadline to request for examination is 42 months from the priority/filing date for patent applications for invention and 36 months from the priority/filing date for Utility Models. these  deadline can be  extended by 6 months only when the Applicant provides sufficient evidence of some events such as “force majeure event” or “objective obstacle”.

2.3 Amendments relating to specification [Point 17.1.c], features of function or purpose [Point 25.5.d(i)] and annuity payment [Point 20.3.a], etc are also included in the said circular with regard to the Patents and Utility Model.

3. Key changes related to examination of Trademarks

3.1 Rights to object to disclaimers – Point 15.7.a (iii)

The amended circular no. 16 provides applicants the rights to object to disclaimers of NOIP of an/some element(s) of the mark if they do not agree with it. The applicants can file an objection within three months from the notification date. The old circular however was silent on this issue.

3.2 Response to office action regarding international application – Point 41.6.d

In cases where, the Madrid application is rejected by NOIP, the applicant, through the amended circular has a three-month period to respond to the provisional refusal by NOIP, and then 90 days to appeal the decision on refusal, whereas, the old practice only provided fro a period of 90 days to appeal such rejection by NOIP. Thereby, providing a higher chance for Madrid applicants to overcome a refusal than for national marks.

3.3 There are few other amendments related to Trademarks such as:

  • Recognition of well-known marks [Point 42.4] : The amended circular lays that a mark can be recognized as a ‘Well-known mark’ through the settlement of enforcement or opposition/examination of a trademark that is identical/confusingly similar to the concerned mark.
  • Organizations entitled to register certification marks and collective marks: Point 37.5a and 37.5b : The modified circular expressly clarifies the type of organizations that can register collective marks, which was not mentioned in the earlier circulars.

4. Key changes related to examination of Designs

4.1 Definition of product – Point 33.2.b

The amended circular introduces a new definition of a product: “A product is understood as an object, device, equipment, means, or part for assembling or integrating these products, manufactured by industrial or handicraft methods, having a clear structure and function, circulated independently.” This definition is given to exclude intangible products such as “Graphical User Interface” since it is considered a product but cannot be considered a design and have also resulted in a narrow list of products that can be patentable This can be a bit of disappointment to the Applicants.

4.2 Specification in design applications – Point 17.1.c

A specification is needed to describe the appearance and features of a design in words at the time of filing, but this specification is not included in the granted certificate for the design, which results in few concerns on the validity of the specifications. In the amendments, there is a provision that an amendment must not go beyond the specification and set of figures/photos makes the role of the specification more important and therefore design specifications should be prepared with caution.

4.3 Few other amendments relating to Designs were also introduced such as, amendment to granted patent [Point 20.1.b(iv)], Renewal of design patents [Points 20.4.d, 33.2.a, and 33.5.dd(iv)]. Further, although the amended circular has provided for first to file principle, but it has failed to clear its stance on such principle as it is silent on the priority dates in case where the filing dates of the conflicting applications are same.

The amendment has been made keeping in mind the scenario of present practice followed in Vietnam and what kind of changes can help the law on Intellectual Properties be efficient in the country. Thus, the lawmakers have very logically amended the concerned circular as well as complied with the International Standards.

The amended circular No. 16/2016/TT-BKHCN, w.e.f January 15, 2018 will have a significant impact on IP practice in Vietnam and will provide a synchronization between IP laws in Vietnam and the IP laws practiced internationally.

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

 References:

[1] https://www.most.gov.vn/vn/Pages/ChiTietVanBan.aspx?vID=28856&TypeVB=1

[2] http://www.noip.gov.vn

[3] Key Changes in Amended Circular 01

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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.