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Enforcement of IP rights in Vietnam

I. Overview of relevant legislation

The current laws on the protection of intellectual property rights ("IPR") consist of the following:

(i) Constitution of the Socialist Republic of Vietnam of 1992 ("Constitution").

(ii) Criminal Code 1999 ("Criminal Code").

(iii) Paris Convention on the Protection of Industrial Property, the Madrid Agreement for the International Registration of Trade Marks and the Patent Co-operation Treaty.

(iv) Agreement between The United States Of America and the Socialist Republic Of Vietnam on Trade Relations (effective as of December 2001)

(v) Civil Code effective as of 1 July 1996 ("Civil Code").

(vi) Governmental Decree No. 63/CP of October 24, 1996 detailing the regulations on industrial property as amended by Decree No. 06/2001/ND-CP dated I February 2001 ("Decree 63").

(vii) Governmental Decree No. 12/1999/ND-CP of 06 March 1999 providing for treatment of administrative violations relating to industrial property ("Decree 12") with reference to Ordinance on the Handling of Violations of Administrative regulations (1995).

(viii) Governmental Decree No. 54/2000/ND-CP dated 3 October 2000 on the Protection of Intellectual property rights upon Business Secrets, Geographical Indications, Trade Names and Protection of Rights against Unfair Competition Relating to Industrial Property ("Decree 54").

(ix) Government Decree 01/CP dated 3 January 1996 on sanctions against violations of administrative regulations in the field of trade

(x) Circular No. 3055/TT-SHCN dated 31 December 1996 issued by the Ministry of Science, Technology and Environment providing procedures for industrial property ("Circular 3055").

(xi) Circular No. 30/2003 dated 05 November 2003 issued by the Ministry of Science, Technology providing procedures for establishing IP rights of invention & utility solutions ("Circular 30").

(xii) Circular No. 30/2003 dated 05 November 2003 issued by the Ministry of Science, Technology providing procedures for establishing IP rights of design ("Circular 30").

(xiii) Circular No. 825/2000/TT-BKHCNMT dated 3 May 2000 providing for sanctions against administrative violations in the field of industrial property ("Circular 825") as amended by Circular No. 49/2001/TT-BKHCNMT dated 14 September 2001.

II. Objects protected under industrial property laws

II.1 Registered objects

Under Vietnamese laws, the following Industrial Property ("IP") objects may be protected by registration:

(i) Inventions (for both products and process) are protected by patent and are valid for 20 years from the filing date.

(ii) Utility solutions (for both products and process) are protected by patent and are valid for 10 years from the filing date.

(iii) Industrial designs are protected by patent for 5 years from the filing date, and are renewable twice for a period of five years each.

(iv) Trademarks are protected by a certificate of registration valid for 10 years from the filing date. They are renewable for unlimited periods of 10 years each.

Certain trademarks may be officially recognised as "well known" trademarks if they are used continuously for prestigious products or services, and as a result of which they have widespread recognition. Well known trademarks enjoy-better protection in Vietnam in terms of duration and infringement.

After successful completion of the procedures for official recognition, well-known trademarks are protected indefinitely without any need for renewal. Any confusing imitation of a well-known trademark, even in other languages and/or for other goods, may be deemed an infringement of that well-known trademark.

(v) Appellations of origin protected by a certificate of registration are valid forever.

The above objects are only protected after registration with, or recognition by the National Office of Industrial Property ("NOIP") under the Ministry of Science, Technology and Environment.

 

II.2 Unregistered objects

II.2.1 Automatic Protection

Automatic protection is provided in Decree 54 for the following objects:

(i) Business secrets;

(ii) Geographical indications;

(iii) Trade names; and

(iv) Rights against unfair competition relating to IP.


II.2.2 Criteria to maintain protection

These objects are protected if they satisfy certain criteria, and are protected for so long as certain criteria are maintained.

For business secrets: (i) it has to be uncommon business information; (ii) it has to be capable to create some advantage for its holder; and (iii) must be kept under secret.

For geographical indications: (i) there has to be information on the geographical origin of goods; and (ii) the quality, reputation or other characteristics of the goods are mainly due to the geographical origin.

For trade names: (i) there is a business title in the form of words with or without numbers; and (ii) it has to be capable of distinguishing this business from others operating in the same field.

Rights against unfair competition relating to IP prevent the illegal use of "commercial indications" of other parties or the appropriation/use of "investment achievements" of other parties. Under Decree 54:

  • "commercial indications" means the signs and information to provide commercial guidance to commodities and services, including trademarks, commercial names, business logos, business slogans, geographical indications, goods packaging designs, goods labels ...; and

  • "investment achievements" means the knowledge and information in the form of technologies, inventions, utility solutions, industrial designs, technical knowledge, business secrets ... obtained from financial or intellectual activities")

These objects can be protected against third parties only if the holders can prove that they satisfy all the relevant criteria.

III. IPR and infringement

III.1 Rights of IP owners

Article 796 of the Civil Code provides that owners of IP objects, excluding appellations of origin, have the-following rights:

(i) an exclusive right to the use of the IP objects, (b) a right to transfer the IP objects to another person for that ,person's use; and (c) a right to demand that the competent State authority compel any person who has infringed another person's property rights to cease such acts of infringement and compensate the holder of the IP for damages.

III.2 Infringement of IPR

Acts of infringement are defined in Article 805 of the Civil Code to include the following, if committed without the authorisation of the IPR owners:

III.2.1. Inventions/utility solutions:

(i) Making products under inventions/utility solutions that are protected in Vietnam;

(ii) Using, importing, advertising and circulating products which are manufactured under inventions/utility solutions that are protected in Vietnam; or

(iii) Applying methods which are protected in Vietnam as inventions/utility solutions.

III.2.2. Industrial designs:

(i) Making products under industrial designs that are protected in Vietnam; or (ii) Importing, selling, advertising or using products manufactured under industrial designs that are protected in Vietnam for commercial purposes.

III.2.3. Trademarks:

(i) Affixing a trademark, that is protected in Vietnam and owned by another person, or a similar trademark on the package of another person's product; or (ii) Importing, selling or offering a product affixed with a trademark, that is protected in Vietnam, on the Vietnamese market.

III.2.4. Business secrets:

(i) Illegal access to, or collection of, business secrets owned by the IPR holders,

(ii) Disclosing or using business secrets without the permission of the IPR holders;

(iii) Contravening contracts on confidentiality in order to access or collect business secrets; or

(iv) Illegally accessing or collecting business secrets from administrative bodies.


III.2.5. Geographical indications:

(i) Using any commercial indications that can be confused with protected geographical indications;

(ii) Using any commercial indications identical or similar to protected geographical indications for identical or similar or associated goods, even if accompanied with justifying words such as "method", "type", "kind", "adapted from" or similar words; or

(iii) Use of geographical indications for wine or hard liquor not originating from the indicated territories, even if accompanied with justifying words such as "type", "kind", "form", "adapted from" or similar words.


III.2.6. Trade names:

Use of commercial indications that are identical with or similar to protected trade names for identical or similar products/services causing confusion- about business entities, business establishments and/or business activities under those trade names.


III.2.7. Unfair competition:

(i) Using commercial indications to mislead people about business entities, business establishments, business activities, or goods and services; or

(ii) Misappropriating and using the investment achievements of other people without their permission.

III.3 Restrictions

IPR cannot be enforced against:

(i) prior users;

(ii) non-commercial users;

(iii) users within a means of transport while in transit, e.g. ship or plane .etc.

(iv) the circulation and/or use of products having been put in the market (including foreign markets) by the IPR holder, prior user or licensee.


IV. Legal action in the event of infringement

The owner-of the IP rights, a representative who is present in Vietnam, or an authorised IP agent may exercise the owner's rights. Where the owner wishes to enforce its rights, the appointment of an IP agent at the outset will enhance chances of success.

In cases of infringement, the following steps should be taken:

(i) obtaining the official conclusion of Vietnam Office of Intellectual property on the infringement of the owner’s trademark rights, patent rights, etc., is always the first step which should be done; (ii) Collect evidence (e.g, at selling places, in factories), since the onus of proof lies entirely with the owner of the IP rights; and (iii) Identify the infringer(s).

When samples of the infringing products have been collected and the infringer(s) identified, there are two possible approaches for further action: (a) Administrative action; or

(b) Court process.


IV.1 Administrative action

Administrative action aims at stopping the infringement, confiscating counterfeit goods and imposing other administrative sanctions against the infringer(s).

The owner cannot enforce IP rights himself, but may request the competent authority of the State to enforce the protected rights. For these reasons, the owner of IP rights must report in writing the case of infringement to the following bodies:

(i). National Office of Intellectual Property ("NOIP") under the Ministry of Science, Technology for "conclusion of infringement". This is not provided by law as necessary for the enforcement of IPR, but since NOIP is in charge of formulating IPR (from receiving applications to examination and granting of protection titles), its conclusion that there has been an infringement is decisively important for the elimination of infringement. In cases of uncertainty, the enforcing bodies often base their actions on the conclusion of NOIP.

(ii). Local inspectorate of science; technology and environment.

(iii). Local Market Management Office ("MMO"). MMO is established in each province to keep order in the markets. It is empowered to apply enforcing measures, such as listing, seizing, confiscating and destroying counterfeits or infringing products. MMO can also impose administrative fines upon infringers.


MMO is the most helpful body to which the owners of IP rights often resort to for enforcement of their rights, when they have collected evidence and identified the infringers.

(iv). Local Economic Police ("LEP"). Like MMO, LEP exists in each province to prevent economic crimes. If the owners cannot collect evidence and identify infringers, they can resort to LEP for investigation and collection of evidence. Like MMO, LEP may apply measures and impose fines upon infringers. LEP is involved in rather large and complicated cases, and the cost of involving the LEP is much higher than MMO. For this reason, IP owners often prefer to use MMO for enforcement of their IP rights.

(v). Ministry or local people's committee supervising the infringing enterprise.

(vi). Customs offices in provinces or cities in case of imported/exported goods.

(vii). Infringer(s).

In cases of clear infringement (i.e. the infringing object is identical and the infringer has been identified):

Upon receiving a written report from the owner with sufficient evidence, NOIP will issue a notification to the infringer confirming the ownership of the object and requiring the cessation of infringing activities. The Inspectorate, MMO, LEP or people's committees may confiscate counterfeit goods and impose other administrative sanctions against the counterfeiters.

With improved awareness of the public on IPR, nowadays the owners in large cities like Hanoi and Ho Chi Minh City may directly contact the infringer and local authority in charge of IP, to demand that the infringements cease.


In cases of doubtful infringement (where the infringing object is only similar to the protected object):

In this case it is necessary to examine the extent of similarity. If the infringing object is officially recognised as distinctive from the protected one, then there is no ground for further action. The official conclusion of NOIP in this regard is decisively important. If NOIP concludes that the infringing object is confusingly similar to the protected one, the owner of the infringed object will have a legal basis for requesting MMO or other enforcing authorities to take appropriate measures and impose appropriate fines.

If the infringing object is identical to the protected object but the infringer(s) cannot be identified, then sanctions may still be imposed on the sellers of infringing goods.

These administrative actions can stop the infringement and may result in confiscation or destruction of the infringing products, and the imposition of fines upon the infringers. However, such actions do not resolve the issue of compensation for damage, which only the court can determine.


IV.2 Court process

Legal proceeding may be commenced, in addition to the administrative sanctions, to seek compensation for damage caused by infringement.

A foreign holder of IP rights in Vietnam may commence court proceedings in either the People's Court of Hanoi or Ho Chi Minh City. It is advisable to choose the People's Court of Ho Chi Minh City if the infringer is located in Ho Chi Minh City or the southern provinces, and the People's Court of Hanoi if the infringer is located in Hanoi or the northern provinces.

Although the laws provide for administrative and court actions to be pursued independently, it is advisable to pursue administrative action before commencing legal proceedings. Given that IP cases are relatively new to the Vietnamese judiciary, the observations, comments or conclusions of specialised agencies (such as NOIP) are considered persuasive.

To date there has been only a small number of IP infringement cases brought to court in Vietnam. The majority of cases have been settled through administrative action, because the administrative procedures take much less time and effort. The competent administrative authorities are better educated in IP matters, so they settle cases faster and in a more satisfactory manner. Courts generally take more time, and the judges depend upon the comments of administrative bodies before making a judgement. The single advantage of the courts is that they can settle the issue of compensation, although the courts often fail to decide upon the calculation of "actual damages" of "intangible" property.

This means that court process takes considerably more time and effort than administrative procedures, for an outcome which is not better. It is hoped that, along with the development of the IP system and harmonisation with the global system, Vietnamese courts will gain more experience in dealing with IP rights, enforcement in general, and compensation for damage of intangible property in particular.

V. Possible sanctions and remedies

V.1 Administrative sanctions

Decree 12 provides for the following civil sanctions to be imposed on infringers of IPR:

(i) a warning for unintentional violations, or minor first-time violations with extenuating factors;

(ii) fines of up to VND 100 million (approximately US$6,700), depending on the nature and seriousness of the violations;

(iii) suspension or withdrawal of business licence; or

(iv) confiscation of the exhibits and/or violation means.


Remedies provided for in Decree 12 are:

(i) compulsory removal of violating elements on goods or business facilities, or compulsory rectification of false information,

(ii) compulsory destruction of violating articles of inferior quality that may cause damage to human health; or

(iii) compulsory compensation for damage caused by administrative violation (by mutual agreement or not more than VND 1 million (approximately US$67.00).

Temporary seizure of exhibits and violating means are also provided for in Decree 12 as a provisional measure for enforcement of IPR.

 

The following enforcement authorities are empowered to decide the above sanctions and remedies:

(i) People's committees at provincial and district levels;

(ii) Inspectorate of science, technology and environment;

(iii) Police, at the district level,

(iv) Customs, at the border gate level, and

(v) Market management office, at the provincial level.


Administrative procedures have proven to be very effective at present, and is the reason why most IP cases are settled by administrative authorities.


V.2 Criminal sanctions

Article 171 of the Criminal Code of Vietnam provides, in addition to administrative sanctions, penalties of up to 3 years' imprisonment for infringement of IPR. If the infringer is convicted of production and/or trade of counterfeiting goods, a longer term of imprisonment, or even capital punishment, may be applied pursuant to Articles 156, 157 and 158 of the Criminal Code.


VI. Parallel imports and enforcement of IPR

VI.1 Legalisation of parallel imports in Vietnam

Parallel imports refers to the practice of importing goods from a foreign market, where those goods have been legally produced and marketed.

The Civil Code does not appear to contain provisions which explicitly legalise parallel imports. However, Article 805 of the Civil Code and Article 9.1 (g) of Decree 12 provide clearly that the import of protected articles, without the permission of the owner, is considered an infringement of IPR. Some exceptions are provided in Article 803 of the Civil Code, where the circulation and use of products which have been marketed by the owner or other entitled persons are not to be considered as an infringement.

The first time Vietnam dealt with parallel imports thorugh IP legislation was in May 2000 when Circular 825 was issued. Article 8.1(d) of Circular 825 provides that the use or conduct of commercial activities (import, sale, storage for sale, offer for sale, advertisement for sale) without permission of the owner, in respect of protected articles which have been put by the owner into market (including foreign market) are considered exceptions to infringement, and therefore are not subject to administrative sanctions.

A further development occurred in February, 2001, with the implementation of the amended Decree 63. This widened the interpretation of Article 803 of the Civil Code, by providing that the concept of "market" included "foreign market". With this amendment, Vietnam recognised the concept of "international exhaustion" of IPR.

 

VI.2 Ramifications of parallel imports on enforcement of IPR

Legalisation of parallel imports makes IPR enforcement much more complicated against sellers of infringing goods.


MMO, LEP and inspectorates are hesitant to take action because of parallel imports. The majority of counterfeits in Vietnam are imported and offered for sale in shops. Evidence of this is collected through the purchase of counterfeits. Shop keepers where counterfeits are found will nearly always refer to parallel imports to justify their sale of counterfeits.

In these circumstances, the most important point to note is that to allege a violation of IP laws, it is also necessary to prove that the articles were not parallel imports, i.e. one must prove that the articles were illegally put into the foreign market before being imported into Vietnam. This may be difficult to establish, since it is hard for the IP rights holder in the importing country to collect evidence in the exporting country where exports are, as a rule, encouraged by local authorities.

With the legalisation of parallel imports, legally imported goods (including counterfeits) are "immune" from possible allegations of infringements of IPR.

Given these problems, one recommended legislative measure would be to shift the burden of proof from the IPR holder to the seller of suspected imported counterfeits. In such a case, the seller would be required to prove that the goods were parallel imports, otherwise the seller would be subject to sanction.

[Về đầu trangTop]

Questionnaire to Vietnam Patent Law


1. Is your country a member of any of the following patent-related Treaties and/or Convention

Agreement on Trade-Related Aspects of Intellectual Property Rights (1994, Marrakesh).


The Paris Convention


European Patent Convention


The Patent Cooperation Treaty (PCT)


Strasbourg Agreement Concerning the International Patent Classification


The Budapest Treaty

World Intellectual Property Organization

Others (please specify)

_______________________________________________________________


2. If not, is your country scheduled to be a member state of any patent-related Treaties and/or Conventions, in particular, The Patent Cooperation Treaty (PCT)?

- Vietnam has adopted the International Patent Classification, but is not a member of the Strasbourg Agreement;

- Vietnam is scheduled to be a member state of the Agreement on Trade-Related Aspects of Intellectual Property Rights (1994, Marrakesh)


3. Are there any bilateral Agreements relating to the protection of invention patent into which your country has entered? If yes, please provide us with names of the other countries.

(1) Agreement between the United States Of America and the Socialist Republic of Vietnam on Trade Relations - Chapter II (Intellectual Property Rights); and

(2) Agreement between the Government of the Socialist Republic Of Vietnam and The Swiss Federal Council On the Protection Of Intellectual Property and on Co-Operation In the Field Of Intellectual Property


4. When was the current invention patent law of your country enacted or revised, if any? Please provide us with the copy of the English version or translation of the current invention patent law of your country.

- The Civil Code(1996)-Part 6-Chapter II;

- Decree No. 63/CP of the Government (1996) providing Detailed Regulations and Guidelines for implementing the provisions of the Civil Code on Industrial Property; as amended by Decree No. 06/2001 of the Government (2001)



5. Are there any legislations or regulations relating to invention patent protection in your country, other than the Patent Act? If so, please provide us with a copy of the English version or translation of such legislation or regulations?.

(1) Circular No. 30/2003 dated 05 November 2003 issued by the Ministry of Science, Technology providing procedures for establishing IP rights of invention & utility solutions ("Circular 30")

(2) Guidelines No. 308/DK of the National Office of Industrial Property on requirements of the applications for industrial property.


6. What are the government agencies in charge of the invention patent registration in your country?

The National Office Of Intellectual Property (NOIP)


7. Scope of Invention Patent Protection


7.1 Definition


Invention means (Article 782 of the Civil Code) a technical solution which is new on a worldwide basis, involves an inventive step and is applicable in socio-economic areas.

A utility solution is defined as technical solution which is new on a worldwide basis and applicable in socio-economic areas. A utility solution may be a device, process or a substance.


Process means: Definition is not available

Product means: Definition is not available

Improvement of process or product means: Definition is not available


7.2 What are the patentable subject matters under your invention patent law?

An invention may be, or may relate to, a product (device or substance), a process or the use of a known product (device or substance) and/or a process in order to perform a new function.


7.3 Under your invention patent law, is it possible to obtain a patent from invention relating to plant or animal? If not, is there any sui generis law relating to protection of plant or animal in your country?

  • It is impossible to obtain a patent from inventions relating to plants or animals and there is no sui generis system relating to the protection of animals.

  • There is a sui generis system relating to the protection of plants, namely:

Decree No. 13/2001 ND-CP on protecting new plant varieties, signed by the Prime Minister on April 20, 2001 which took effect on May 05, 2001, and its implementing regulations - Circular No. 119/2001 dated December 21, 2001 guiding the implementation of the above Decree No. 13/2001.

In case that you have specific law for protection of plant or animal, please provide us with general information, requirements and a copy of the English legislation.

General information on protection of plant in Vietnam:

Vietnam applies the sui generis system for the protection of plant varieties, which conforms with article 27.3(b) of the TRIPS Agreement concerning the norms for the protection of plant varieties, which permits three options: by patents, by an effective sui generis system, or by any combination thereof.

Vietnamese plant variety protection law protects new plant varieties (including agricultural and forest plant varieties) in Vietnamese territory, which are:

(i) included in the list of protected genera and species of plants issued by the Ministry of Agriculture and Rural Development (MARD);

(ii) distinctive;

(iii) uniform;

(iv) stable;

(v) commercially new; and

(vi) designated by denominations which enable the variety to be identified and distinguished from every denomination that designates a common known variety of the same plant species.

The term of protection is 20 years for new plant varieties and 25 years for new woody plants, from the date of the grant of rights.

7.4 What are the unpatentable subject matters under your invention patent law?

  • Scientific Theories;

  • Methods and systems of economic management;

  • Methods and systems of education, teaching and training;

  • Animal training methods;

  • Language systems, information systems, system for document classification and arrangement;

  • Designs and planning schemes for construction, projects for regional development and planning

  • Technical solutions merely concerning the shape of products for aesthetic purposes without technical characteristics;

  • Signs, diagrams and symbols

  • Computer programs, integrated circuits

  • Animal varieties

  • Methods of disease prevention, diagnosis and treatment for human being and animals

  • Processes which are essentially biological (except for micro-biological processes) for producing animals and plants

7.5 What are the criteria for invention patent protection under your law?

(i) Novelty (on a worldwide basis)

(ii) Inventive step (Utility solutions must not meet this criterion)

(iii) Applicability

(i) Novelty: An invention, or a Utility Solution is considered new if,

  • prior to the filing date or, where appropriate, the priority date of the patent application, the invention or utility solution was not described in the earlier domestic patent applications for the invention and/or the earlier domestic patent applications for the utility solution; and

  • the invention or utility solution has not been disclosed in Vietnam and/or abroad in such a way as to permit the realization of that invention or utility solution.

The disclosure of an invention or a utility solution such that it becomes part of the State-of-the-Art may take place in three ways, namely, (i) publications in tangible form, (ii) oral disclosure, and (iii) disclosure by use.

There is a grace period of six (6) months for excusing the disclosure which has been committed by the other(s) without the authorization of the person(s) having the right to file the patent application for invention or utility solution, or his predecessor in title.

Patent documents and information sources

  • Patents and pending applications for patent in Vietnam and abroad;

  • Abstract of Patent applications published in the Official Gazettes in Vietnam and abroad;

  • Non-patent documents: scientific and technical books, periodicals, films, tapes, CD-ROM's;

  • Mass media;

  • Scientific and technical reports, texts, lessons etc.;

  • Exhibitions.

Patent searches:

  • The patent examiners themselves conduct novelty searches, and if necessary, they can apply to the WIPO for state-of-the-art search services.

  • In general, a final search report is the combination of the search provided by the WIPO's services and the search conducted by examiner with the documents which are available at the NOIP.

(ii) Inventive step

Note - Utility Solutions must not meet this criteria.

An invention is considered as involving an inventive step if,

  • it is the result of a creative work; and

  • having regard to the prior art relevant to the patent application claiming the invention, it would not have been obvious to a person having ordinary skill in the art.

(iii) Applicability

An invention or utility solution is considered applicable if it can be made or used under existing technological conditions or in the future.

 

8.Filing Procedures

If registration of patent is required in your country, please let us have the following details:

8.1 Eligible applicant


What are qualifications that an entitled applicant for invention patent must have to enable filing an application for invention patent in your country?

The right to file an application for patent belongs to:

  • The inventor(s) or his successor(s) in title; or

  • The employer, when the invention is made in execution of a commission or an employment contract in the absence of contractual provisions to the contrary.

  • The right to apply for patents is also granted to foreign applicants in accordance with the international treaties to which Vietnam is a party or on a basis of the principle of reciprocity.


8.2 Documents required for filing


What are the minimum documents required to be filed in order to obtain a filing date?

Documentation required for filing a National Patent Application

A Power of Attorney from the Applicant, if the patent application is filed through a patent agent. The Power of Attorney should accompany the patent application at the time of filing. A faxed copy is acceptable provided that the original be submitted within three months from the filing date; Please note that this document must be signed by the Applicant if the Applicant is a natural person, or by the officer entitled to represent the Applicant if the Applicant is a legal entity and affixed by the corporate seal of such an entity (if any). Notarization and or Legalization are not required.

  • A Notarized Deed of Assignment from the Inventor(s) to the Applicant or a contract of employment, if the Applicant and the Inventor(s) are not the same. The Deed of Assignment should accompany the patent application at the time of filing. A faxed copy is acceptable provided that the original be submitted within three months from the filing date;

  • A copy of the specification, drawings, claims and abstract in Vietnamese;

  • A certified copy of the priority document and the Vietnamese translation thereof, if Paris Convention priority should be claimed; This document can be lodged within three months from the filing date.

  • Information: name, address and nationality of the Applicant and Inventor(s).

Documentation required for entering the National Phase of a PCT Application:

A Power of Attorney from the Applicant; This document can be lodged within 34 months from the earliest priority date. Please note that this document must be signed by the Applicant if the Applicant is a natural person, or by the officer entitled to represent the Applicant if the Applicant is a legal entity and affixed by the corporate seal of such an entity (if any). Notarization and/ or Legalization are not required.

  • A Notarized Deed of Assignment from the Inventor(s) to the Applicant, if the Applicant is different from the Applicant having filed the Priority Application; This document can be lodged within 34 months from the earliest priority date.

  • A Vietnamese translation of the Specification, claims (if amended, both as originally filed and as amended), any text matter of drawings, abstract (required at filing);

  • The International Preliminary Examination Report and the annexes thereto, if any (required at filing);

  • Information: name, address and nationality of the Applicant and Inventor(s).


 

9.1 Specification

9.1 Unity of application


What is the scope of an invention which may be included in a single application defined under your patent law? Please show us specific sample of such invention scope. How should an applicant determine such scope of invention? Are there any criteria?

  • As stipulated by Vietnamese patent law, the application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept as well as being unified in respect of purpose of use (Article 11.2 of Decree No. 63).

  • Example of combinations of different categories of claims:

(i) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product, and an independent claim for a use of the said product, or

(ii) in addition to an independent claim for a given process, an independent claim for an apparatus or means specifically designed for carrying out the said process, or
(iii) in addition to an independent claim for a given product, an independent claim for a process specially adapted for the manufacture of the said product and an independent claim for an apparatus or means specifically designed for carrying out the said process .


9.2 Form of a specification


What are the requirements for a content of specification? Please provide us with information on how to prepare such description.


The specification must completely disclose the claimed technical solution. Information given in the description must be disclosed in such a manner that based on which a person skilled in the art can carry out said solution. The description must clarify the novelty, inventive step and applicability of the technical solution.

The specification must include the following:

(i) International Patent Classification Index (under the Strasbourg Agreement),

(ii) Title of the invention: The title shall be short and precise

(iii) Technical field to which the invention relates

(iv) Background Art

(v) Summary of the invention

(vi) Brief description of the drawings, if any

(vii) Detailed description of the invention

(viii) Example(s) for carrying out the invention

(ix) Advantageous effects of the claimed solution with reference to the background art

9.3 Claims

What should an applicant take into consideration about scope of claims and number of claims at the time of filing an application?

  • The scope of claims must be completely supported by the description;

  • Claims shall be clear and the meaning of the terms of a claim should, as far as possible, be clear from the wording of the claim alone for a person skilled in the art;

  • Any inconsistency between the description and claims should be avoided;

  • Each claim relates only to one subject-matter;

  • Claims shall not contain references to the description or drawings, except where absolutely necessary

  • There is no limit to the number of claims

  • A fee must be paid for independent claims only

  • Independent claim shall contain all the essential features of the invention; dependent claim must include all the features of the independent claim to which it refers and features concerning specific forms of that invention


9.4 Drawings


Is it acceptable to use informal drawings at the time of filing an application?

It is not allowable to use informal drawings at the time of filing an application

What are the requirement of drawings to be filed with the Patent Office?

(i) Drawings shall be executed in lines and strokes which are: durable, black, sufficiently dense and dark, uniformly thick and well-defined without colorings

(ii) The drawings shall be expressed according to the method of perpendicular projections;

(iii) The scale is given only on a drawing when it is necessary to have the scale in order to clarify the solution nature as defined in the description of the solution;

(iv) Cross-sections shall be indicated by oblique hatching which should not impede the clear reading of the reference signs and leading lines;

(v) The proportion of the drawings and the clarifying degree shall be expressed so as to be able to differentiate details in the drawings when photocopying with a 2/3 size reducing degree.

(vi) The drawings shall not contain text matter except a short word, when absolutely indispensable to clarify the drawings, such as "water", vapour", "open", "closed", "section on AB". Any words used in the drawings shall be so placed that, if translated, they may be pasted over without interfering with any lines of the drawings.


What should an applicant take into consideration in preparing the drawings for the application to be filed in your country?

Reference signs not mentioned in the description shall not appear in the drawings, and vice versa; and

The drawings shall not contain text matter except a short word, when absolutely indispensable to clarify the drawings


Could the drawings limit the scope of claim for a patent right?

No, the drawings can not limit the scope of a claim for a patent right


9.5 Abstract


Is the abstract necessary to be filed in an application in your country? If necessary, are there any provisions and requirement for preparing the abstract under your patent law?

Yes, it is necessary. The abstract shall be a brief summary (no more than 150 words) of the disclosure as contained in the description, the claims, and any drawings; The abstract may contain the chemical formulae for the invention relating to substance.


Could the abstract limit or affect the scope of claim for a patent right?

No, the abstract can not limit or affect the scope of a claim for a patent right


9.6 Classification

How the classification system is defined under your patent law?

There is no provision under Vietnamese patent law for defining the classification system. In practice, Vietnam adopts the International Patent Classification (IPC) but is not an official member of the Strasbourg Agreement


10. Proceedings after filing


10.1 Preliminary examination


Is there any provision on preliminary examination under your patent law? If yes, how long does it take from filing an application to the preliminary examination?


A patent application is automatically examined as to form. The examination as to formal conditions must be completed within three months from the filing date. If the formalities are met, a Notice of the acceptance as to complying with the formal conditions will be issued to confirm the filing date and application number.


10.2 Pre-grant publication


Is there any provision on publication of patent application before examination? If yes, how long does it take on average for an application to be published? What is the period of pre-grant publication?

All national patent applications are published for purposes of opposition in the 19th month counted from the priority date unless:

  • a request for an earlier publication is filed. In this case, the patent application will be published within one month from the date of filing the request.

  • a request for examination as to substance is filed before the date on which the patent application is accepted as to form. In this case, the patent application will be published within one month from the date of acceptance as to form.

  • a request for examination as to substance is filed after the date of acceptance as to form, but within 18 months after the priority date. In this case, the patent application will be published within one month from the date of filing the request.

PCT applications entered in the Vietnam National Phase are published in the second month from the date of acceptance as to form.


10.3 Amendment to the application

Whether and when does an applicant have an opportunity to make an amendment? What is the period for submitting the amendment?

An amendment can be made at any time during the examination as to substance.

In addition to the above, after having examined the patent application, an Examiner should send a Notice of result of the examination of patentability to the applicant:

  • if the patent application need to be amended or corrected, the applicant will have two months for the amendment or correction.

  • if the patent application is rejected due to not meeting the criteria for obtaining protection, the applicant will have two months for responding to the Office's action.


Is it allowed to amend a claim so as to broaden the scope of claim?


According to provision 16.4 of Circular No. 3055, the patent application can not be amended in such a way that it extends beyond the scope of protection and changes the nature of the subject-matters as defined in the application.


Is it allowed to add a new matter?

It is not allowed to add a new matter


What should an applicant take into consideration for amendment in addition to the above matter?

A fee for amendment is required


10.4 Request for examination


Is there any provision on examination of application under your invention patent law? If yes, how long is the period for making a request for examination?


Request for examination as to substance must be submitted by the applicant or a third party within 42 months from the priority date if the application is filed for an invention patent, or 36 months from the priority date if the application is filed for a patent for utility solution. If it is not so made, the patent application is deemed to be withdrawn.



What are the documents to be filed with your Patent Office? If the applicant submit the examination filed in other country, would it promote the examination of the application filed in your country?

  • A request for examination must be filed with the National Office Of Intellectual Property

  • Result(s) of examination of corresponding application(s) filed in industrially developed countries with substantive examination systems, such as the USA, EP countries, Japan, Russia, etc., would promote the examination process in Vietnam.

How long is the period from making a request for examination to the start of examination, the period from the start of examination to first official action or to the decision to grant a patent, and the period from the official action to the decision of final rejection?

  • The substantive examination must be completed within twelve (12) months counted from (a) the date of the request for examination if the request is filed after the date of publication of the patent application or (b) from the publication date if the request is filed before publication of the patent application. Therefore, the examination commences immediately for the above case (a). In case (b), the examination commences from the publication date of the application.

  • In view of the above, the period from the start of examination to first official action or to the decision to grant a patent will be 12 months.

  • The period from the official action to the decision of final rejection is a minimum of two months counted from the date of the Office's action in case the applicant fails to respond to the Office's action.


What should an applicant take into consideration for responding to the official action?

  • Do not fail to make a timely response to the Office's action. Otherwise, the application is deemed to be withdrawn or will be rejected.

  • The most helpful supporting document in favour of the claimed invention would be a patent granted abroad.


10.5 Unity of invention


How and when can the applicant file a divisional application?

The applicant can file a divisional application at any time during an examination process of the application. The divisional application will have the benefit of priority right of the earlier application.


10.6 Opposition to a patent application

How long is the period for filing an opposition to an invention patent application after the publication? Is it possible to extend the period for filing the opposition to the patent application?

  • Under current patent regulations, any time after publication and before completion of the examination as to substance, any third party may file a notice of opposition with the Vietnamese National Office Of Intellectual Property (NOIP).

  • It is impossible to extend the period for filing the opposition to the patent application

Is it possible for an applicant to submit an amendment to the opposition? Is it possible to extend this period?

If the grounds of the opposition are affirmed, the opposition is admissible. In this case, the Examiner sends a Notice concerning the opposition to the applicant and the applicant has a two-month period to reply or submit an amendment to the opposition. This period is extendible.

Is it possible for an applicant to submit the examination result of a corresponding application filed in a foreign country together with a written reply to the opposition?

Yes, It is possible


Could the opponent have an opportunity to traverse the applicant’s argument and amendment made in response to the opposition?

No, the opponent can not.


In the case where the decision has been made that the grounds of the opposition are affirmed, what would it mean legally? Would that patent application be cancelled? If so, can the applicant restore the patent rights and how?

In a case where the grounds of the opposition are affirmed, the Examiner sends a Notice concerning the decision of rejection to the patent application. It means that the patent application is cancelled unless the applicant submits an appeal as permitted by law (see the answer to 10.7)


In a case where the decision has been made that the grounds of opposition are not affirmed, what would it mean legally? Should a request for examination be filed after such a decision?

In the case where the decision has been made that the grounds of opposition are not affirmed, the examination as to substance will be conducted by the Office upon receiving a request for examination filed by the Applicant.


What should an applicant or an opponent take into consideration about the opposition?

  • It's not imperative for the examiner to inform the opponent of the results of the opposition and the opponent has no chance to appeal to the NOIP's Decision concerning the opposition

  • An applicant may submit an appeal to the NOIP's Decision based on the opposition.


10.7 Appeal

Is the appeal against the Examiner’s decision of final rejection permitted under your patent law? What is the period for filing the appeal? Whom will the appeal be filed with?

The appeal against the Examiner's decision of final rejection is permitted under Vietnamese patent law. Appeals can be made upon:

  • rejection of an application as to formalities;

  • refusal to grant a patent; or

  • invalidation of a previous patent.


A first appeal must be filed with the NOIP within 90 days of the date of said decision. The NOIP must examine and settle the matter within 30-45 days of receiving the appeal.

If dissatisfied with the final decision of the NOIP, the applicant may file a second appeal to the Minister of the Ministry of Science and Technology (MOST), or an appeal action can be taken before the competent administrative court.

  • If the applicant decides to file a second appeal with the Ministry of Science and Technology, the second appeal should be made within 30 days of the date of the final decision of the NOIP or within 30 days of the deadline of settling the first appeal and the Minister of MOST must issue a decision within 45-60 days of the date of receiving the appeal petition and no further appeal to the courts is possible


What are the features of the appeal system under your patent law?

Please see the above answer

How long is the period from filing the appeal until receiving the result of the appeal in general?

In practice, it can be from 180 days or more

10.8 Post-Grant Publication

Is there any provision on publication of patent application after a grant of patent?

According to article 31 of Decree No. 63, granted patents are published in the Industrial Property Gazette.



11. Maintenance Fees


What is the term of patent protection?

  • A patent for invention shall expire 20 years after the filing date (international filing date in case of PCT-derived applications, and actual national filing date in case of National applications).

  • A patent for utility solution shall expire 10 years after the filing date.


Please let us know how to pay the maintenance fee to maintain the patent right under your patent law.

  • Under Vietnamese patent law, the maintenance fee (annuity) is paid only when the patent is granted to the patent application, and the Patentee should pay the annuity through a Vietnamese Industrial Property Agent. The first annuity must be paid on the date of grant of patent.

  • Payment of the succeeding annuities must be made within the six-month period prior to the anniversary of the grant date (due date). If any annuity is paid later than the above prescribed period (but not later than 6 months from the due date), the patentee shall have to pay an extra fee amounting to 10% of the said annuity for each month overdue.


Do you have any grace period for payment of the fee? If yes, how long is the period? Is there any surcharge on late payment of the fee?

There is a grace period for payment of the maintenance fee(annuity), as stipulated in provision 70 of Circular No. 30: no later than 6 months from the due date, and the patentee shall have to pay an extra fee amounting to 10% of the said annuity for each month overdue.


What should the patent owner take into consideration about payment of maintenance fee?

In order to avoid having to pay any extra fee, the patent owner should pay the maintenance fee by the due date.


12. Licensing and Assignment of Patent


12.1 Licensing of Patent


a) Is a patent owner entitled to grant a license to another person?

A patent owner is entitled to grant a license to another person.


b) If so, is a patent license agreement required to be recorded or registered with a government office? If so, which government office is responsible?

A patent license agreement is required to be recorded with the National Office Of Industrial Property


c) What kinds of documents are required for such proceedings? Is there any document to be notarized or legalized by the government office? (Please send us the forms of such documents, if any)


The following documents are required for recordal with the NOIP:

(i) two copies of the License Agreement certified by a Notary Public and a Vietnamese translation of the License(Legalization is not necessary);

(ii) a notarized Power of Attorney (our form enclosed) from the Licensor or Licensee


In addition, the following information and provisions, among others, are compulsory and must be included in the Agreement:

- The names (surnames) and full addresses of the Licensor and Licensee;

- The basis for transferring the license (the title of protection already granted to the Licensor or the exclusive license agreement);

- The scope of the License, which includes:

  • The type of license (exclusive/non-exclusive);

  • The object of the license determined by the restrictions on the right to use (the protected acts of use) and the restrictions on the industrial property object (the volume of protection of the industrial property object);

  • The territorial restriction (the Vietnamese territory);

  • The duration (the duration of protection of the industrial property object).

- The license consideration;

- The rights and obligations of each party, including corresponding obligations;

- The conditions for the amendment, termination or invalidation of the agreement;

- The method of settling complaints and disputes;

- The signing date and place;

- The signatures of the parties or their authorised representatives, together with the names and titles of the signatories and certification of the signatures.

d) What is the outcome of failure to record or register a patent license agreement with the government office?

Failure to record a patent license agreement may bring about the consequenses as follows:

  • The use of the patented invention by the Licensee is deemed not legitimate;

  • A fine of up to 5,000,000 VND (approximately $US 400.00) will be imposed on the parties concerned due to unfulfilling the recordal obligation


e) Is there any provision on a compulsory license under your patent law? If yes, please let us have the requirements, regulations and procedures of the compulsory license.

Article 802 of the Civil Code provides the provisions on non-voluntary (compulsory) licenses on the following cases:

(i) the patented invention/utility solution is not worked or is insufficiently worked in the country;

(ii) the owner of the patent has received a demand from the requesting person to obtain a contractual license, but the requesting person has been unable to obtain such a license on reasonable terms and within a reasonable time without receiving justified grounds from the owner of the patent; and

(iii) The working of the patented subject-matters is considered necessary to meet the demands of national defence, security, public health or any other vital public interest


Notes:

  • As stipulated by Decree No. 06/2001 providing changes and additions to the Decree No. 63/CP:

- the above provision (i) of Article 802 is not to apply before the expiration of a period of four years from the date of filing of the patent application or three years from the date of the grant of the patent, whichever period expires last;and

- A person who is obliged to comply with compulsory licensing has the right to require the suspension of validity of that compulsory licensing where a circumstance leading to that compulsory licensing terminates and there is no possibility of re-occurrence, provided that the suspension of validity does not cause damage to a person who has been provided with a compulsory licence.

  • Other cases for non-voluntary (compulsory) licenses: dependent patents

12.2 Assignment of Patent


a) Is a patent assignable?

A patent is assignable


b) If so, is an assignment of patent required to be recorded or registered with a government office? If so, which government office?

An assignment is required to be recorded with the National Office of Industrial Property


c) What kinds of documents are required for such proceedings? Is there any document to be notarized or legalized by the government office? (Please provide us with the forms of such documents, if any).


For recordal of patent assignment, the following documents are required:

(i) Two original Deeds of Assignment duly signed by authorized representatives of both parties and certified by a Notary Public; a Vietnamese translation thereof;

(ii) Original Letter's patent of the assigned patent; and

(iii) Notarized Powers of Attorney from the Assignee and Assignor (our forms enclosed)


In addition, the following information and provisions, among others, are compulsory and must be included in the Assignment:

- The name (surname) and full address of the Assignor and Assignee;

- The basis for the Assignment (The patent has been granted to or transferred to the Assignor);

- The object of the Assignment (the whole ownership right over the whole volume of the protection of the industrial property object);

- The Assignment consideration;

- The rights and obligations of each party

- The conditions for the amendment, termination or invalidation of the Assignment;

- The method of settling complaints and disputes;

- The signing date and place;

- The signatures of the parties or their authorised representatives, together with the names, titles of the signatories and certification of signatures.


Notes:

  • As stipulated by Vietnamese Patent Law, a request for recordal of a Patent Assignment should be filed with the NOIP within 60 days from the date of signature of the Assignment.

  • The name and address of the Assignor indicated in the Deed of Assignment must be exactly the same as those shown in the Letter’s Patents and the Patent application.

d) What is the outcome of failure to record or register a patent assignment agreement with the government office?

  • A patent assignment will not be enforceable

  • A fine of up to 5,000,000 VND (approximately $US 400.00) will be imposed on the parties concerned due to unfulfilling the recordal obligation



13. Scope of the legal rights of patent owner


13.1 What are the legal rights of patent owner under your patent law?

In accordance with article 796 of the Civil Code, Decree No. 63 - Chapter IV, the legal rights of a patent owner are as follows:

  • Exclusive right to use of patented subject-matters, namely:

- Making patented products;

- Using patented process;

- Exploiting patented products

- Circulating; advertising for sale; offering for sale; storing for sale of patented products or product manufactured by patented process;

- Importing patented products or product manufactured by patented process;

  • The right to transfer the right to use industrial property subject-matters

  • The right to request the handling of a third party having infringed upon industrial property rights

In addition, the ownership of an invention, or utility solution can be inherited or transferred to other persons


13.2 When is a patent considered infringed? If there is an imitation of patent before a grant of patent, will it be considered as an infringement under your patent law?

Any unauthorized person which,

  • makes, uses, sells, imports or advertises the patented product; or

  • uses a patented process or makes, uses, sells, imports or advertises the product directly obtained through the patented process,

will be deemed to have violated the exclusive rights of the owner of the patent.

With reference to an imitation of patent before a grant of patent, the following should be taken into account:

(i) The prior user status: if the user has been using an imitation patent before the filing date of the patent application, a prior user status can be obtained, as stipulated by the law. In this case, the patent owner may not request that any measure be taken or take legal action against, and temporary rights of patent owner in respect of the prior user, provided that the extent and volume of such exploitation shall not be enlarged. Such right cannot be assigned or transferred, except for transfer of the entire right of prior user together with the business establishment where the prior use was carried out.

(ii) Temporary right of the applicant: within the period from the publication date of a patent application to the grant date, the Applicant has a temporary right to notify the person who has started any activities referred to in the above paragraph after the publication date that (1) a patent application for the invention in the name of the Applicant has been filed, and (2) if patent is granted, his activity will be deemed as an infringement of the patent owner's right. For case (2), the patent owner is entitled to request compensation from any unauthorized user only in the case where the user continues the use, notwithstanding notice having been given after a patent is granted.


13.3 How do you interpret the scope of claim? Is there any provision on doctrine of equivalents or the like to be applied for determination of infringement?

  • Under Vietnamese patent law, the scope of claim is interpreted by the wording of the claim. The description is used only for clarifying claims.

  • There is a provision on the doctrine of equivalents to be applied for determination of infringement: Provision 7.3 of of Circular No. 825/2000 providing detailed guidelines on Decree No. 12/1999 providing Penalties for Administrative Violations in the field of Industrial Property, which was amended by Circular No. 49/2001.


13.4 What is the direct infringement under your patent law? Please give us example.

The following cases are considered direct infringement if any unauthorized person:

  • makes, uses, sells, imports or advertises the patented product; or

  • uses a patented process or makes, uses, sells, imports or advertises the product directly obtained through the patented process,


13.5 What is the contributory infringement under your patent law?

There are no provisions in Vietnamese patent law concerning contributory infringement.


13.6 Are there any patent infringement exemptions? What are the infringement exemptions?

There are patent infringement exemptions, as stipulated by law, as follows:

  • The use is not for commercial purposes;

  • the use of products which are put in the market, including international markets, by Patent Owners, Licensee, persons provided with compulsory licenses and persons having the prior use status;

  • the use of Patented Devices Forming Part of Vessels, Aircraft, or Land Vehicles, when such vessels, aircraft or vehicles temporarily or accidentally enter the territory of Vietnam.



13.7 What are the legal measures against infringement on patent?


Civil measures


Injunctive Relief. Upon clear evidence that any person has infringed or is going to infringe the patent owner’s right, the patent owner may apply to the Court for an injunction. If so, when can an application for such injunctive relief be filed?

Before a complaint is filed with the Court.

At the time the complaint is filed with the Court.

After the complaint is filed with the Court.

Claims for damages


If so, how to prove damages?


Degree of severity of damages

Loss of sale

Loss of royalty

Loss of projected sale

Amount of sale by infringer

Expenses necessary for enforcement of the patent owner’s right

Others

_________________________________________________________


What are the legal procedures against infringement on patent?

If a patent owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.

Complaints are lodged with People's High Courts of the provinces, towns or cities.

  • Where one of the parties to the action is a foreigner, the case must be filed with the People's High Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity or other parties may reside. The foreigner plaintiff can choose whether to file in Hanoi or Ho Chi Minh City.

Complaints must be submitted personally or through a domestic representative in the case of foreign entities.

The complaints must be accompanied by (i) documentary evidence of the ownership of the infringed patent and (ii) proof of infringement.

A patent owner-plaintiff may claim for injunction, damages.


Criminal measures

What are the criminal penalties against the infringer?

Article 171-Criminal Code:

(a) The penalty of a fine from VND20 million ( 1400USD) to VND200 million ( 14,000 USD) or re-education without detention of up to two years shall be imposed on any person who, for commercial purposes, appropriates or uses an other's protected industrial property objects illegally involving serious consequences, punishable by administrative or criminal penalties for the same violations;

(b) The penalty for the same crime in especially serious cases is from six months to three years in prison

Additional Penalties: Additional penalties include a fine of no less than VND5 million and no more than VND100 million ( 300 USD-6,000USD), confiscation of both the means of production and sale or infringing goods, as well as the goods themselves or prohibition from undertaking the duty or practicing a profession for a certain period of between one and five years.


What are the legal procedures against infringement in patent?

A patent owner may petition for criminal actions to be brought against an infringer pursuant to Article 126 of the Criminal Code.

The Police generally initiate investigations upon a patent owner's formal complaint.

  • The patent owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed patent and its business interest and locations, as well as the names of the alleged infringers and the nature of the infringing act.

  • If sufficient evidence is found, the police can then open investigations and the public prosecutor will indict alleged infringers for crimes of infringement before the court.

Cases are brought before the People's High Court of the province, city or town.

  • If one or both parties are foreign, the case can only be filed before the People's High Court of Hanoi or Ho Chi Minh City.

Decisions of the People's High Court may be appealed to the Supreme Court, the highest and final court.


13.8 Which government office can a patent owner go to enforce against a patent infringement in your country?

 

The Intellectual Property Office: For obtaining the NOIP's official conclusion on the infringement of the patent owner rights

The Intellectual Property Court

The Police Office

The Attorney-General Office

The Customs Office

Others: The Market Management Bureau, IP Inspectors within the Ministry of Science, Technology (MOST)

[Về đầu trangTop]  

Using decree no. 54/2004/nd-cp for protecting your trademark

1. Introduction

a.   What is Decree 54?

          Decree 54 (fully writing as Decree No. 54/2004/ND-CP) is a legal documents   issued on October 3, 2000 by the Vietnamese Government, governing the protection of industrial property right of a number of industrial property objects which were not protected in Vietnam previously, such as trade secrets, geographical indications, trade names and the protection of antiunfair competition related to industrial property

          Before the promulgation of Decree 54, Vietnam had only the mechanism for protecting against the infringement of traditional industrial property objects, such as patents, utility solutions, industrial designs, trademarks, and appellations of origin of goods. Furthermore, this mechanism is mainly based on the ground that the State shall grant protection right after owners completed registration procedures at the State competent authority. The fact has shown that such protection mechanism is not satisfied enough to prevent the infringement of industrial property right under various unfair forms causing damages to customers, especially the infringemet on the real owners , objects not have been registered or not required registration. Therefore, the promulgation of Decree 54, pertaining in pacticular the provision on anti-unfair competition related to industrial property shall impotantly contribute to the completion of Vietnamese legal system on industrial property in general, and on IP in particular, and concurrently make the enforcement of IP right in Vietnam more stronger to protect more effectively legitimate owners, manufacturers and consumers. Decree 54  took effect from October 18, 2000.

  

b. Which subjects shall be governed by Decree 54?  

          If you are one amongst the following subjects, your legitimate right and interests as to trade names, trade secrets, and geographical indications shall be protected by Vietnamese laws in accordance with Decree 54. At the same time, you also have right to fight against any industrial property- related unfair acts competitors:

        -   Vietnamese organizations and individuals conducting business activities within the territory of Vietnam; - Foreign organizations and individuals conducting business activities within the territory of Vietnam;

        -  Organizations and individuals in the countries being a member of Paris Convention without business activities in Vietnam;

        -    Organizations and individuals having no business activities in Vietnam, but their industrial property right are property recognition and protection, to which Vietnam is a party or a signatory;

        - Organizations and individuals having no business activities in Vietnam but in the countries and/or territories which have, together with Vietnam, accepted the principle of reciprocity in the industrial property protection of each, s organizations and individuals.

 

c. Principal contents of Decree 54

        Decree 54 provides general principles on the condition for the establishment of industrial property rights, the contents of such right, and the duration of protection of right as to trade names, geographical indications, and trade secrets, and generally stipulates the acts constituting the infringement, the prescription for taking actions against the infringement, and general principles for dealing with such infringements.

 

        According to Article 5 of Decree 54, the industrial property right as to trade names, trade secrets and geographical indication shall be automatically established when satisfying the conditions stipulated by the law for each of these objects without instituting any registration procedures at the State competent authorities. The length of  protecting duration shall be depened on the time maintaing the condities based on which the rights to the corresponding object are established. The owners of the said objects are entitled to request for an intervention by the competent authorities to stop the infringement and pay compensation for damages. The prescription for exercising the protection right is one year from the date of detecting the infringement, but not exceeding three years from the date on which such infringement is occurred.

 

2.Protection of industrial property rights with respect to trade names under Decree 54.

 

a. Definition

 

In other countries

         Trade names are protected as a main industrial property objects under their nation laws. Internationally, “trade name” is understood as any designated name ( it may be a company ,s owner, a pen name, an invented name or an abbreviated name of a company, etc.) which serves to identify and distinguish an enterprise and its business activities from those of other enterprises. While trademarks are used for distinguishing products to which they are adhered, trade name are used for distinguishing enterprises, and could be descriptive or clearly indicate the nature or the field of activities of the enterprises bearing that trade name, for example, Chien Thang Garment Company, Viet Tien Garment Company, ANZ Bank, etc. Trade name are concurrently deemed useful information sources for consumers indirectly indicating the quality of goods manufactured or services supplied by those enterprises. Therefore, protection of trade names by legal measures is for the interest of both business enterprises and consumers. The principle characteristic of trade name protection is to prevent enterprises to use, concurrently similar to those of other enterprises, helping consumers avoid misleading.

In Vietnam

        A trade name protect able under Decree 54 is the name of an organization or individual used in their business activities, being able to distinguish that of other enterprises in the same fields of business. That protectable name needs to be only a combination of letters, with or with or without numerals and pronounceable. This means that abbreviation words such as EMS, DHL, IBM or AIA etc., being able to distinguish enterprises may be protected as a trade name. Therefore, the definition of “ trade name” in Vietnam in the same as in other countries.

 

b. Unprotectable trade names.

       The following names shall not be protected in Vietnam as trade names:

        -   Name of administrative agencies, political organizations, sociopolitical, social organizations, socio-professional organizations or non business related subjects;

        - Names used for exerting the function of trade name, but are incapable of distinguishing subjects of business enterprises in the same fields;

        - Trade names that cause confusion with other s , prior used trade names in the same locality and in the same business fields, or cause confusion with others , trademarks protected before such trade names are used.

 

c.  Details of industrial property rights with respect to trade names.

       Owners of industrial property rights as to trade names are organizations or individuals conducting business activities under those trade names. They have the rights to:

       -used such trade names to introduce themselves in business activities, or displaying them on transaction papers, signboards, products, goods packaging and in advertisements;

       -transfer trade names under contracts or bequeath them to others, provided that, the transfer must be conducted together with the entire business establishments and activities under those trade names;

       -request the State competent authority to stop the third parties , infringement of pay compensation for damages.

 

d.Protection of trade names in Vietnam

        Industrial property rights as to trade names shall be automatically occurred when trade names meet the above-mentioned conditions without registration with the NOIP. Protection of trade names is to prevent the use of any commercial indication ( including information, trademarks, business symbols, business slogans, etc.) which is identical or confusingly similar to trade names which are protected for the same kind of similar goods or services, causing confusion as to business subjects, business establishments or business activities under such trade names.

 

3.  Applying Decree 54 in protection of trademarks

 

        The application of Decree 54 in protection of trademarks means in the nature the application of provision on the protection of industrial property related anti-unfair competition in Chapter IV of this Decree.

 

a. Acts being deemed unfair competition related to industrial property under Decree 54

 

In Vietnam, the following kinds of acts shall be deemed unfair competition:

The first kind

         This includes the use of commercial indications causing misleading to the awareness, and information about business subjects, business establishments, business activities, goods and/or services for the purposes of;

         -   Taking advantage of the prestige and reputation of other entities to their business and production;

         - Damaging the prestige and reputation of other entities; or

         -   Causing confusion on origin, methods of production, functions, quality, quality or other characteristics of goods and/or services to consumer in the awareness and selection of goods, services or in their business activities.

“ Commercial indication” are understood as signs and information which serve as commercial instructions on business of goods and services including trademarks, trade names, business logos, business slogans, geographical indication, packaging designs and goods labels.

Use of commercial indications means:

          -  Affixing commercial indication on goods, goods packaging, service means, transaction papers, and adverting tools;

-Selling goods bearing commercial indications;

- Advertising goods bearing  commercial indications;

-  Storing  goods bearing  commercial indication; or

-  Importing  goods bearing  commercial indications.

Thus, any individual or entity conducting one of the above-specified acts to mislead the awareness and information about business activities, goods and/ or  services, or taking advantage of your prestige, or aiming at damaging others , prestige or reputation, or causing confusions to the consumers on origin, functions, characteristics of goods, etc. Shall constitute unfair competitions in industrial property.

The second  kinds

           This includes possession and use of others investment results without their agreement.

The term “ investment results” is understood as knowledge or information in the forms of technology, inventions, utility solutions, industrial designs , technical know-how or trade secrets to conducts activities without permission of owner(s) to provide services, do business, store or import products.

However, Decree 54 dose not clearly stipulate when and how an act shall be deemed seizing possession of investment results.

 

 

b.  Dealing with unfair competition in industrial property

          Where your interests are damaged or in danger of being damaged due to above-mentioned acts of competitors, you are entitled to request the State competent authorities to:

-force infringers stop their acts;

-request infringers pay compensation for damages caused by their unfair competition;

-apply administrative measures; and/or

-apply criminal measures ( if applicable).

 

c.Proving responsibility

         When requesting the intervention of the State competent authorities, you are responsible for proving with the State authorities the unfair competition acts of competitors and the actual damages occurred to be cccurred to your right and interests.

 

d. Applying Decree 54 in protection of trademarks

          Infringement in trademarks is mainly related to the “ use of commercial indication” in order to mislead the customers , awareness and information about business subjecst, business activities, goods or services. Normally, any use of commercial indications or any sign causing confusion with registered trademarks within protection duration or unregistered trademarks being recogized by the NOIP as well known marks shall constitute acts of infringement of industrial property rigths with respect to trademarks. Such acts are regulated by relevant regulations of the Civil Code, Decree 63/CP, Circular 3055 and other related regulations such as Decree 12/1999/ND-CP dated March 6, 1999 on sanctions against administrative violations in industrial property sector, inter-ministerial Cirular 10 guiding the implementation of Directive 31/TTg of the Prime Minister on combating against production and business of counterfeit goods, ect.

Meanwhile, protecting anti-unfair competition in trademarks is carried out irrespectively of whether the trademarks are rigistered or not, but based on the dishonesty or unfairness of the infringer. Thus Decree 54 could be mentioned as an useful legal mean to protect unregistered trademarks in Vietnam.

If an infringement of a trade marks is occurred while the trademarks has not been actually used by owner in the Vietnamese market within a permitted time limit ( not exceed 5 consecutive years), or if the infringement is unintentional due to the lack of information and laws understanding, the following factors shall be taken into account:

- The trademark owner and the infringer are conducting business activities in the same sectors in the Vietnamese market;

- The trademark owner has been using honestly the trademarks in business activities for a certain duration in the Vietnamese market;

- Goods or services bearing the owner ,s trademarks have good quality and reputation in the market; and

-The infringer intentionally uses “ commercial indications” causing confusion with the owner ,s  trademark  aiming  to lower owner ,s reputation, or to take advantage of the owner ,s prestige and reputation.

Thus, in order to protect your trademarks based on Decree 54, owners should be responsible for proving the unfair competition atcs with the competent authorities. The following factors should be indicated by the owner:

- his goods or services are popular and reputable in the marks;

-the commercial indications which are being used cause confusion to the customers;

-the act the infringer is intentional and aimed at taking advantage of the owner ,s reputation, or at damaging the owner ,s prestige and reputation; and

- the actual damages caused, or to be caused due to the unfair competition.

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   Protecting Trade Names and Trademarks under the new Vietnam Intellectual Property Law - Rising legal circumstances

          Since the new Law on Intellectual Property of Vietnam has come into effect from 1 July 2006, foreign and Vietnamese enterprises are now paying special attention to provisions on intellectual property, especially provisions relating to commercial activities. This Paper is intended to provide certain comments on forms and criteria for protecting tradename and trademark under the New Law.

 

Difference, coincidence and inter-dependability of tradenames and trademarks

 

          Firstly, let’s revisit the definition of a trademark and a tradename referred to in the Law. By the Law, a trade name is defined as “the name of an organization or individual used in business activities in order to distinguish the business entity bearing such trade name from other business entities in the same business sector and area”, whereas, trademark is defined as “a sign used to distinguish goods or services of different organizations or individuals”. From this, we can see immediately the difference as well as the coincidence between a trade name and a trademark. In particular, a trade name is a name and a mark is a sign. From one point of view, a trade name is normally perceived in Vietnam as bearing full name of a company (as provided for in the Enterprise Law, the full name of a company comprises of the following elements: name of that company and legal type of that company, being: limited or Joint stock, etc.,) as indicated in the business licence and a trademark is considered as being a name of a product or service offered to the public by an enterprise. That is the difference. However, from another point of view and in certain circumstances where a trade name and a sign can be the same as an enterprise uses its name (not full name) for the enterprise sign to distinguish its goods or services from other entities. Thus, in this case, can a trade name be understood as the full enterprise name as indicated in the business licence? This has not yet been clearly defined in guiding decrees and as a result, this might lead to occurrence of disputes in the future. The fact is that the name of an enterprise is normally perceived by consumers in a short form of full name, for example: Dong Tam, Trung Nguyen, etc and few people know the full name of that enterprise and this will cause debates in the future regardless of whether or not functional bodies have the same perception or understanding of that name. Thus, under relevant regulations, it is essential to take into account the consumers’ understanding and perception of the names of organizations.

 

Another difference is that a trade name can be automatically protected if it meets all of the criteria as regulated without completing registration procedures (Article 6.3 of Decree 103/2006). However, a mark must be filed (except well-known marks) and will be examined as to form and then as to substance. To some extent, the scope of protection of a trade name is considered to be narrower than the scope of protection of a mark (across Vietnam territory), however, to some circumstances where the protection of a trade name and a mark is considered the same. Specifically, a trade name will only be protected within a business area and under the Law a business area has been defined as “the geographical area in which a business entity has its partners, customers or reputation”. Hence, there will be disputes in the future and occurrence of new legal events when determining a restricted or larger business area (the issues are to be discussed later in the following section).

 

          Inter-dependability of a trade name and a trademark can be seen under criteria stipulated in terms of distinctiveness of the trade name and trademark. A trade name and/or a trademark which is required to be protected must be distinguishable. Under Article 74.2(k) of the Law on Intellectual Property, “a mark is to be deemed to be indistinctive if it is identical with or similar to another person's trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services”. On contrary, Article 78.3 of the Law on Intellectual Property provides that “a trade name can only be considered to be distinctive if it is not identical with or confusingly similar to another person's mark or a geographical indication which was protected before the date of use of such trade name”. Such inter-dependability will cause a new legal issue to be arisen in the future and should be predicted in advance by enterprises in commercial activities.

 

Certain legal circumstances

          From the above facts and the existing situation of business registration at Planning and Investment Offices, I would like to present the following issues: Determining what is a trade name of an enterprise is considered as an easy task but difficult one.

         

          It never happens where enterprises have their full names coincident in business registration certificate/license (in terms of private names, supplements and types) in the same city but it can happen in other locations because we do not have a central body specialized in issuing business registration certificates and thus we do not have an uniform database. Furthermore, there is no link or connection of databases of Planning and Investment Offices in Vietnam. However, where enterprises only have different names in terms of legal type and supplements (for example, foodstuff trading, agricultural processing, etc) but coincidence in private names which have occurred in the same location. Dealing with those disputes is found to be very difficult because of lack of clear regulations. If enterprises have different business areas, it is easy to deal with the disputes arising from such coincidence, however, what happen in the current economic development condition if:

  1. Enterprises operating in diversified areas.

  2. Large or diversified corporations which take use of their reputation to squash other small sized enterprises (which unluckily have coincident names) in other locations.

 

and other circumstances where attention should be made in respect of:

  1. A regulation stipulated that a mark is deemed to be indistinctive if it is identical with or similar to another person's trade name currently in use will cause difficulties for protection if the trade name is defined as having the scope of protection in accordance with the business area (narrower than the scope of protection of mark). Thus, which ground a functional body will rely on to determine the business area of the trade name. This regulation may be used by parties to drive future disputes. For example, that regulation can be used to invalidate the protected mark. If this happens, it will impose an overloaded work on functional bodies and if it happens the resolution of the dispute will be delayed and therefore resulting in ineffective execution of the law.

  2. Assuming that a trade name is only reputable in a certain geographical area, whether or not will the effectiveness of a mark being protected be caused to be terminated respective of such area. There have not yet been any regulations stipulating this issue.

  3. How to determine a trade name to serve as a basis for invalidation of the effectiveness of a mark being protected is still a vague issue. As mentioned above, the name of an enterprise referred to in the business registration certificate can only be different in terms of type, complements but still coincide with each other in terms of specific name.

  4. Currently, for examination of trademark applications, Intellectual Property Office cannot yet apply regulations relating to trade names clearly due to lack of too many conditions (not having an uniform database, not having a legal basis to determine trade names, business areas, reputation, etc). If possible, the application of such regulations may prolong the examination time (running counter the resolution time). However, dependability of a trade name and mark as referred to above is still applied (as stipulated in the Law) and this is the regulation where enterprises should take into account and apply flexibly to commercial disputes (including foreign enterprises).

 

          From the circumstances referred to above, any protection forms also have their own disadvantages. The problem is that there are two Laws stipulating tradename/company name in Vietnam (Law on Intellectual Property and Enterprise Law) and inter-dependability of tradenames and trademarks as stipulated in Law on Intellectual Property. When an enterprise fully understands these problems and apply them flexibly, the legitimate rights and interests of the enterprise will be protected on a proper and sustainable basis.

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