Dec 11, 2023 (Newsletter Issue 10/23)New Circular Provides Additional GuidanceOn November 30, 2023, Vietnam’s Ministry of Science and Technology issued Circular No. 23/2023/TT-BKHCN detailing the implementation of some articles of the 2022 Intellectual Property Law (“IP Law”) and Decree No. 65/2023/ND-CP with respect to the establishment and protection of industrial property rights (“Circular 23”). Circular 23 took immediate effect upon issuance and provides further guidance and necessary clarifications for the implementation of the IP Law, which took effect on January 1, 2023.
For more details click here.Source: www.tilleke.com Sep 25, 2023 (Newsletter Issue 8/23)
New Decree Details the 2022 IP Law
On August 23, 2023, the Vietnamese government issued Decree No. 65/2023/ND-CP. It took immediate effect upon issuance and provides long-awaited, necessary guidance for implementation of the IP Law, which took effect on January 1, 2023. Some of the most critical provisions of Decree 65 include the following:
Establishment of Industrial Property Rights
Procedures for Establishment: The procedures for the establishment of IP rights are set out including the procedures related to PCT applications for inventions and Madrid applications for trademarks, and the (newly added) procedures related to Hague applications for industrial designs. The decree confirms that registration certificates can be issued in electronic form and in paper form. However, hard copy registration will only be issued under explicit request in the application.
Amendment: For amendment of a trademark specimen, only minor disclaimed elements can be removed, if such removal does not alter the distinctiveness of the registered mark. The documents required for amendment of trademark registration are simplified.
Assignment: New provision are added regarding the limitation to the transfer of trademark rights that may cause confusion as to the properties or origin of the goods bearing the trademark.
Opposition: While both oppositions and third-party opinions can be submitted against national applications, there is no opposition procedure under the Decree for Madrid applications designating Vietnam. Only the third party opinion scheme is available for the application’s examination, as a source of reference.
Enforcement of Industrial Property Rights
Determination of Acts, Nature, and Extent of Infringement: Amendments are introduced to the definition of acts conducted on the internet considered as infringement in Vietnam with greater specificity. The grounds to determine the factors constituting infringement have been extended to include the Extract of the National Registrar of Industrial Property.
Determination of Damage: Detailed grounds for the determination of property damage and moral damage are provided.
Process of Handling IP Infringement: The handling of infringing goods is now implemented either upon the decision of the relevant authorities or upon the request of the owner of the IP rights. This brings an additional avenue for action, rather than the implementation of such measures solely at the discretion of the authorities.
Procedure for Control of Imported and Exported Goods Related to Industrial Property: Specific details are added regarding the authority, order, and procedures for proactively suspending customs procedures of goods that show clear signs of infringement.
Assessment of Infringement: New regulations on the procedure of conducting IP assessment (expert opinion).
Source: www.tilleke.com
Aug 25, 2022 (Newsletter Issue 12/22)Significant Changes to IP LawOn 16 June 2022, Vietnam's National Assembly approved a comprehensive revision of Vietnam's IP Law ("Amended IP Law"). This represents a significant change to Vietnam's IP Law, affecting 80 of 222 articles and introducing 12 new articles. Apart from a few provisions, the Amended IP Law will take effect on 1 January 2023.
The most significant changes are outlined below:
Introduction of protection of sound marks / inclusion of ground for refusal
Sound marks are among the signs that can be protected as trademarks. They must be capable of being presented in graphic representations.
Article 73.7 was supplemented to include ground for refusal of sound marks that comprise “copies [in whole or part] of copyrighted works”, unless the consent of the copyright owners is obtained.
Definition of well-known mark modified
The definition of a well-known mark has been modified to “widely known by the relevant sectors of the public in the territory of Vietnam”. Further, the well-known status must be acquired before the filing date of a later trademark to serve as grounds for refusal of such later mark. The recognition of a trademark as well-known might be determined based on either several or all of the eight criteria indicated in Article 75.
Reduction of time limit for expired mark to be used to refuse later marks
The time limit for an expired mark to be used to prevent a later-filed trademark from being protected has been shortened to three instead of five years.
Suspension of examination procedures of trademarks during cancellation or invalidity proceedings
Under the Amended IP Law, applicants are entitled to request Vietnam’s IP Office to halt trademark examination procedures of their marks to wait for the outcome of the related non-use cancellation or invalidation proceedings.
“Bad Faith” is officially available as ground for opposition and invalidation
The Amended IP Law recognizes the act of “bad faith” as an independent legal ground to oppose and invalidate a trademark application or registration.
New grounds to refuse pending trademark and for termination/invalidation of registered marks
- Refusal: Two more grounds to refuse pending applications have been added:
(i) the use of the name of a plant variety that has been or is being protected in Vietnam if such sign is registered for goods that are a plant variety of the same or similar species or a product of the same species harvested from plant varieties; and
(ii) the use of names and images of characters or figures in works covered by copyright protection of others that were widely known before the filing date of the application.
- Termination: Two more grounds for termination of the validity of a registered trademark have been added:
(i) such registered trademark has become the common (generic) name of goods or services bearing that registered trademark; and
(ii) the use of a protected trademark by the owner of the trademark or by a person authorized by the owner misleads consumers as to the nature, quality, or geographical origin of the goods or services.
- Invalidation: Two new legal grounds for invalidating a registered trademark have been added:
(i) a registered trademark may be partly or entirely cancelled if the applicant for that trademark is ruled to have bad faith; and
(ii) the revision or modification of a trademark application has broadened or changed the nature of the originally filed trademark.
More detailed reasons to refuse three-dimensional trademarks
The Amended IP Law provides additional grounds and clarifies the grounds for refusal of three-dimensional trademarks.
Parallel procedures of trademark opposition and third-party opinions
The Amended IP Law introduces a new mechanism allowing a third party to oppose a trademark application, in addition to share written opinions during the examination procedures. The opposition can be filed within five months from the date of publication of the trademark application.
For more information, please click here Source: www.tilleke.com Oct 08, 2020 (Newsletter Issue 16/20)IP Office No Longer Collects Fees under Madrid ProtocolWIPO informs that they received a communication from the Office of Viet Nam withdrawing the notification made by Viet Nam under Rule 34(2)(b) of the Regulations under the Madrid Protocol (“Regulations”).
Consequently, as from September 1, 2020, the Office of Viet Nam no longer collects and forwards to WIPO the fees due under the Madrid Protocol and its Regulations.
For more information, please click hereSource: www.wipo.int Jul 23, 2020 (Newsletter Issue 12/20)
Official Fees Reduced Temporarily
On May 26, 2020, in response to the COVID-19 pandemic, Vietnam’s Ministry of Finance issued Circular No. 45/2020/TT-BTC on the reduction of fees for registration of foreign QR codes as well as certain industrial property fees. Accordingly, the industrial property fees listed in Section A of the schedule promulgated with Circular No. 263/2016/TT-BTC of the Ministry of Financeare temporarily reduced by 50% from May 26 until the end of 2020, returning to the old levels on January 1, 2021.
Specifically, the following fees are subject to the 50% reduction:
- Filing fees for applications (including divisional applications and converted applications);
- Fees for requesting an extension of time to respond to the IP Office’s notifications;
- Fees for issuance of protection titles;
- Fees for issuance of certificates of recordal of IP license agreements;
- Annuities for patents for inventions/utility solutions and renewal fees for trademark registration certificates and patents for industrial designs;
- Fees for late payment of annuities/late filing for renewal;
- Fees for requests for invalidation/termination of protection titles;
- Fees for issuance of IP agent practicing certificates, publication and recordal into National Registry.
The range of fee savings is about USD 2 to USD 9.
Source: www.tilleke.com
Dec 05, 2019 (Newsletter Issue 17/19)Accession to Hague Agreement on International Registration of Industrial DesignsOn September 30, 2019, Vietnam deposited with WIPO its instrument of accession to the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
The instrument of accession was accompanied by the following declarations:
– the declaration referred to in Article 5(2)(a) of the 1999 Act, whereby an international application designating Viet Nam shall contain a brief description of the characteristic features of the design, pursuant to Article 5(2)(b)(ii);
– the declaration referred to in Article 5(2)(a) of the 1999 Act, whereby an international application designating Viet Nam shall contain a claim for protection of the design, pursuant to Article 5(2)(b)(iii), in compliance with the common form: “Application for overall protection for industrial design(s) as shown and described”;
– the declaration referred to in Article 11(1)(b) of the 1999 Act, whereby the legislation of Viet Nam does not provide for the deferment of the publication of an industrial design;
– the declaration referred to in Article 13(1) of the 1999 Act, whereby, in accordance with the legislation of Viet Nam, only one independent and distinct design may be claimed in a single international application, except that:
(i) designs that are the subject of the same international application must belong to the same set of composition of items and conform to a requirement of unity of design, unity of use or accompaniment of each other in use, or
(ii) a design may be accompanied by single or multiple options that are variations of that design and which must conform to a requirement of unity of design and be insignificantly different from that design;
– the declaration as required under Article 17(3)(c) of the 1999 Act, specifying that the maximum duration of protection provided for by the legislation of Viet Nam in respect of industrial designs is 15 years;
– the declaration referred to in Rule 9(3) of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement, whereby, where the product which constitutes the industrial design is three-dimensional, a perspective view of the industrial design is required; and
– the declaration for the application of level three of the standard designation fee, under Rule 12(1)(c)(i) of the Common Regulations.
In accordance with Article 28(3)(b) of the 1999 Act, the 1999 Act and the declarations made will enter into force, in respect of Vietnam, on December 30, 2019.
For further information, please check hereSource: www.wipo.int Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. Registration Viet Nam has notified WIPO in accordance with new Rules 27ter(2)(b) and 40(6) of the Common Regulations, which entered into force on February 1, 2019.
According to the said notification:
- new Rule 27bis(1) of the Common Regulations, providing for the possibility to file a request for division, is not compatible with the law of the Contracting Party and does not apply to it; and,
- the law of the Contracting Party does not provide for the merger of registrations of a mark.
As a result, the Office will not present to WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Jan 30, 2018 (Newsletter Issue 2/18)
Significant Amendments in IP Laws
The fourth amendment to the IP laws of Vietnam comes into force 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 IP laws in Vietnam. These amendments are effective from January 15, 2018.
The amended circular has 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 general regulations and trademarks:
1. General Regulations
- Revision of time limits for filing response to Office Action
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.
- Appeals and their settlements
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 re-examine 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.
- Decisions on Refusal
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.
2. Key changes on trademarks
- Rights to object to disclaimers of the NOIP within three months from the notification date
- Response to office action regarding international application
In cases where, the Madrid application is rejected by NOIP, the applicant, has a three-month period to respond to the provisional refusal by NOIP, and then 90 days to appeal the decision on refusal.
- Recognition of well-known marks
through the settlement of enforcement or opposition/examination of a trademark that is identical/confusingly similar to the concerned mark.
- The modified circular expressly clarifies the type of organizations that can register collective marks, which was not mentioned in the earlier circulars.
Source: Khurana & Khurana Advocates and IP Attorneys, India
Jan 11, 2017 (Newsletter Issue 1/17)
Official Fees Increased
The Ministry of Finance of Vietnam has issued a Circular (No. 263/2016/TT-BTC) stipulating the official fees to be collected by the National Office of Intellectual Property of Vietnam (NOIP) for industrial property-related activities with effect from January 1, 2017. These fees will apply to patent, utility solution, industrial design, trademark, geographical indication and integrated circuit layout design applications received by the NOIP.
As of January 1, 2017, the official fee for filing a trademark application is VND 1,000,000 for one class for up to 6 items of goods/services. Each further class in the same application is VND 880,000 and each extra item of goods/services exceeding 6th is VND 170,000. The fee for registration is VND 120,000 and the fee for publication is VND 240,000 (for one class for up to 6 items of goods/services).
Source: Spruson & Ferguson, Singapore and Daitin & Associates Co., Vietnam
Jun 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.
Source: www.pham.com.vn
Dec 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).
The legal basis is the Intellectual Property Law 2005, in force since 1 July 2006, as firstly revised under Law No. 36/2009/QH12, in force since 1 January 2010, secondly revised under Law No. 42/2019/QH14, in force since 14 January 2019, and continued to be revised under Law No. 07/2022/QH15 which took effect on 1 January 2023, except for provisions on sound marks that was effective on 14 January 2022, and provisions on protection of testing data for agricultural chemicals that will be effective as of 14 January 2024.
All trademarks registered in South Vietnam before April 30th, 1975, are not protected in present Vietnam.
Vietnam is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. Vietnam follows the "first-to-file" principle. However, the existing trademark law protects unregistered trademarks if the mark is recognised as a well-known mark.
Nice classification, 12th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, devices, combinations or shades of colours, three-dimensional forms, any combination of the mentioned signs and sound signs represented in graphic trademarks are registrable as trade marks in Vietnam provided they are distinctive either inherently or upon proof of acquired distinctiveness and non-descriptive.
The following types are registrable as trademarks: trademarks, service marks, collective marks, certification marks, well-known marks, trade names, sound marks.
The application is filed with the Intellectual Property Office of Vietnam (IP Vietnam).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A power of attorney (PoA) is necessary.
Notarisation and/or legalisation of PoA is no longer required.
Foreign applicants do not need a domestic Registration of Business. But a local IP agent is required.
Foreign applicants do not need to have a trademark of the same name at home before filing one in Vietnam.
The application for trademark registration will undergo the following steps: A formality examination will be conducted within one month from the date of receiving all the required documents. 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 9-12 months, the application will undergo a substantive examination as to make a decision of refusal or grant of protection by IP Vietnam. During this time, any third party may submit a written opinion against the grant of protection. Opposition must be filed within 5 months from the publication date of the trademark application and before the issuing date of a decision on the grant of protection. On average, the time frame for obtaining trademark registration in smooth cases is approx. 12-15 months from the date of filing. However, the actual time for substantive examination is 18-30 months. So, the time for obtaining trademark registration in smooth cases is approx. 21-36 months from the date of filing.
After the grant of the Trademark Registration Certificate, the mark shall be published in the Gazette and recorded in the National Register of Industrial Property.
National:Applications may be opposed at any time after the publication date and before the issuance of the registration certificate.
From 1 January 2023, under the amended IP Law of 2022, any third party is entitled to proceed with an opposition proceeding before IP VIETNAM within 5 months from the publication date of the trademark application. Another way to oppose the trademark registration is through the third party’s observation which can be filed at any time during the pendency of the application.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the filing date of the application.
The registration is indefinitely renewable for a period of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is VND 1,000,000 for one class for up to 6 items of goods/services. (Official charge for filing application: VND 150,000/application; Fee for publication of application: VND 120,000/application; Fee for trademark search for the substantive examination process: VND 180,000/class of goods or services; Fee for examination: VND550,000/class of goods or services).
Each further class in the same application is VND 730,000 and each extra item of goods/services exceeding 6th is VND 150,000.
The fee for registration is VND 120,000 and the fee for publication is VND 120,000 for the first class and VND 100,000 for each additional class.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Grace Period for Trademark Renewal
Trademark Licensing
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Jan 25, 2024
KENFOX IP & Law Office, Hanoi, Vietnam
