Viet Nam (VN)
06-04-2010 (Newsletter Issue 11/10)
New Law on Trade Names Passed
The Vietnamese government has passed a new law to regulate the company registration procedure and prohibit a company from using, as its name, a trade name, trademark and/or geographic indication belonging to another entity.
The new law, which also includes a new mechanism to resolve trade name disputes, is effective 1st June 2010.
12-07-2009 (Newsletter Issue 1/09)
Official Fees Increased
On June 19th, 2009, the National Assembly of Vietnam passed the Law on amendment to a number of articles of the Law on Intellectual Property (Law 2009). Law 2009 will come into effect from January 1st 2010. There were several changes to copyright and related rights.
With regard to industrial property rights, the Law 2009 clarifies the "first to file" principle: In Law 2005, there was no clear guideline on what to do when one person submits more than one application for the same invention; or registers several marks that are identical or similar to the extent there might be confusion when they are used for identical or similar products or services. This matter is settled by Law 2009. Accordingly, if several registration applications are submitted by one person in order to register identical marks used for identical products or services, a protection title shall be granted based on the valid application with the earliest priority or filing date among the applications which satisfy all conditions for the grant of a protection title.
Law 2009 states that administrative penalties may be applied upon the occurrence of acts of infringement of intellectual property rights which cause damages to the author or the holder of intellectual property rights (or customers of the community); the notification to defaulting party is no longer required (Article 211.1.b).
To protect domestic providers of intellectual property representation, Law 2009 affirms that foreign law firms practicing in Vietnam are prohibited from providing these services. Law 2009 also requires more conditions applied to organizations providing intellectual property assessment services and individuals practicing intellectual property assessment (Article 154.1).
Legal basis is the Intellectual Property Law 2009 in force since January 1st, 2010.
All trademarks registered in South Viet Nam before April 30th, 1975, are not protected in present Viet Nam.
Viet Nam is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours, three-dimensional forms and any combination of the mentioned signs. Slogans are registrable as trade marks in Vietnam provided they are distinctive either inherently or upon proof of acquired distinctiveness.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, trade names and titles of establishment.
The application is filed at the National Office of Intellectual Property.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A power of attorney is necessary.
Notarisation and/or legalisation of PoA is no longer required.
Foreign applicants do not need a domestic registration.
Vietnam follows the "first-to-file" principle.
The application for trademark registration will undergo following steps: a formality examination will be done within one month from the filing date. If the application is accepted as to the formalities, the application data will be published in the Official Gazette of Industrial Property. This shall be done within two months from the date of acceptance as to formality. Within the following 9 months, the application will undergo a substantive examination as to make a decision of refusal or grant of the protection by the trademark office. During this time, any third party may file an official opposition. On average, the time frame for obtaining trademark registration in smooth cases is approx. 12 months from the date of filing.
After grant of Trademark Registration Certificate, the mark shall be published in the gazette.
Applications may be opposed at any time after the publication date and before issuance of the registration certificate.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
12 months from publication in the WIPO Gazette
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from registration or has not been used later for 5 consecutive years, cancellation actions may be filed. If a mark has not been used for 5 years and no cancellation action is taken against it, then, in principle, the mark is protected.
The fee for filing, examination and publication of a trademark application in one class for up to 6 items of goods/services is USD 37.00 (approx. EUR 26.00 EUR). Each further class in the same application is USD 31.00 (approx. EUR 22.00 ) and each extra item of goods/services exceeding 6th is USD 7.00 (approx. EUR 5.00).
Grant of registration and publication of registered mark for one class is USD 21.00 (approx. EUR 15.00 ) and USD 6.00 (approx. EUR 4.00 ) for each further class in the same application.
Trademark Licence Agreement
In Viet Nam a licence agreement has to be in writing. It is not permitted to license the use of unregistered trademarks. The parties can freely agree upon the terms of such an agreement, provided that its terms are not restricted by law and are not contrary to public morals. Licences may be exclusive or non-exclusive. The sale of a registered trademark automatically terminates the licence. The term of a trademark licence agreement may not exceed the validity of the licensed trademarks. The licensing contract must not contain provisions that unreasonably restrict the rights of the licensee.
There are provisions in law for a voluntary recordal of a licensee, but a licence agreement becomes effective against third parties only upon registration with the National Office of Intellectual Property of Viet Nam. There is no time frame for a recordal. It is required to renew the recordal of the trademark licence agreement when the licensed trademarks are renewed.
The Vietnamese Law requires that a trademark licence agreement must be in writing and contain the following mandatory terms:
1. The names and addresses of the licensor and the licensee
2. The reasons for the licence
3. Whether the licence is exclusive or non-exclusive
4. The scope of the licence and any limitations, including territorial limitations
5. The terms of the agreement
6. Royalty payments
7. The rights and obligations of the licensor and the licensee
If a trademark licence agreement is to be registered with the relevant authorities, an official form has to be completed. No further documents are required for a recordal.
A trademark licence agreement becomes effective and enforceable against third parties upon its recordal with the National Office of Intellectual Property of Viet Nam. Recorded licences are published in the Industrial Property Gazette.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. The registered user is entitled to call upon the registered proprietor to institute proceedings for trademark infringement. If the registered proprietor refuses or neglects to do so the registered user may institute proceedings for infringement in his own name, depending on the agreement between the parties. The licensee is not required to cite the proprietor as co-defendant in any such proceedings, unless the agreement provides otherwise.
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
|Word Mark Search (availability)
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We would like to thank the following law firms for their assistance in updating the information provided:
Pham & Associates, Hanoi, Viet Nam
Russin & Vecchi, Ho Chi Minh City, Viet Nam
Baker & McKenzie Vietnam Ltd., Hanoi, Viet Nam
Russin & Vecchi, Ho Chi Minh City, Viet Nam