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Upon a dispute over IPRs

By
sblaw
-
bien bản dân sự
Upon a dispute over IPRs, the right holder might initiate a civil lawsuit to the provincial or municipal people’s court to request for its settlement or application of the following remedies:

 

 To compel the infringing party to terminate the act of infringement;
 To compel the infringing party to make a public apology or correction;

 To compel the infringing party to perform its civil obligations;
 To compel the infringing party to pay damages;

 To compel destruction or compel the distribution or bringing into use for con-commercial purpose with regard to the goods, materials, raw materials and equipment mainly used for producing and trading IPR infringing goods (provided that this shall not prejudice the IPR holders’ capacity to exploit their rights).

 

CHART OF IPR INFRINGEMENT SETTLEMENT BY WAY OF CIVIL MEASURES

bien bản dân sự

(1) Right holder, representative of the right holder (Article 198 of the IP Law, Article 21, Article 22 of Decree 105/2006/NĐ-CP).
(2) Checking: (i) evidence proving the right holder status of the applicant, (ii) information about the suspected goods or in order to detect IPR infringing goods (Article 23, Article 24, Article 25 of Decree 105/2006/NĐ-CP).
(3) Clause 2, Article 167 of the Civil Procedure Code
(4) The Right holder is entitled to request the Court to apply provisional measures when (a) There is a threat of irreparable damage to the intellectual property right holder; (b) There is a threat of dispersal or destruction of goods suspected of infringing upon intellectual property rights and relevant evidence if they are not protected in time (Article 206 of the 2005 IP Law).
(5) The applicant must deposit an amount of money equal to 20% of the value of the shipment or 20 million dong (in case the value of the shipment cannot be identified) or a document of guarantee from a bank/credit institution (Article 208 of the IP Law)
(6) If the application for settlement of the infringement lacks some required documents, evidence and exhibits, the infringement settlement agency shall request the applicant for additional documents and evidence (clause 3, Article 27 of Decree 105/2006/NĐ-CP).
(7) If the requirements in points (2) and (3) above are not met (clause 4, Article 27 of Decree 105/2006/NĐ-CP, clause 1 , Article 168 of the Civil Procedure Code).
(8) To make a complaint to the Chief Justice of the Court which returned the Statement of Claim (Article 170 of the Civil Procedure Code).
(9) The Court shall accept the case when the plaintiff produces the Court a receipt of the court fee (clause 3, Article 171 of the Civil Procedure Code).
(10) 11), (12), (13) To be carried out during the preparation period for the court hearing (clause 2, Article 179 of the Civil Procedure Code).
(14) Within 1 month from the date of a decision to bring the case for trial (Point 13), the court must open the (first instance) court session; this time limit might be extended to 2 months in case there is a legitimate reason to do so (clause 3, Article 179 of the Civil Procedure Code).
(15) Within 15 days (from the date of the judgment by the first instance court), applicants including:
(i) litigants (the right holder, the defendant) or their representatives have the right to appeal against the judgment or a decision of the Court of first instance to petition the upper court to directly resolve the matter in accordance with the appellate proceedings (Article 243 Civil Procedure Code).

(ii) The director of the Procuracy of the same or immediately higher jurisdiction shall have the right to protest against a judgment or a decision of the Court of first instance to request to upper Court to directly resolve the matter in accordance with the appellate proceedings (Article 250 of the Civil Procedure Code).
(16) From the date of acceptance of a case, the appellate court shall issue one of the decisions referred to in points (11), (12), (13) above (clause 1, Article 258 of the Civil Procedure Code).
(17) A legally binding judgment or decision of the court (clause 1, Article 375 of Civil Procedure Code)

Source: http://iprenforcement.most.gov.vn/

Administrative procedures shall be taken against the organizations

By
sblaw
-
biện pháp hành chính
Administrative procedures shall be taken against the organizations and individuals committing one of the following acts of IPR infringement:

 

 Infringing IPRs and therefore causing losses to the author, owner, consumers or the public;

 Producing, importing, transporting or dealing in counterfeit goods under Article 213 of the IP Law or assigning others to do so;

Producing,importing, transporting, dealing in or storing marks, labels or other articles bearing counterfeit trademarks or geographical ndications; or assigning others to do so.

Upon detecting an organization or individual with an act of IPR infringement, the right holder might request the inspection agency or the market control authority, police, customs authority or the people’s committee to deal with that organization or individual.

 

*Upon detecting an act of IPR infringement, organizations, individuals and right holders have the right to request the Specialized Inspectorate or other agencies including the Market Control or People’s Committees for settlement.

CHART OF IPR INFRINGEMENT SETTLEMENT BY WAY OF ADMINISTRATIVE MEASURES

biện pháp hành chính

(1) Right holder, representative of the right holder (Article 198 of the IP Law, Article 21, Article 22 Decree 105/2006/NĐ-CP).
(2) Checking: (i) evidence proving the right holder status of the applicant, (ii) information about the suspected goods or in order to detect IPR infringing goods (Article 23, Article 24, Article 25 of Decree 105/2006/NĐ-CP).
(3) If the application for settlement of the infringement lacks some required documents, evidence and exhibits, the infringement settlement agency shall request the applicant for additional documents and evidence (clause 3, Article 27 of Decree 105/2006/NĐ-CP).
(4) If the requirements in points (2) and (3) above are not met (clause 4, Article 27 of Decree 105/2006/NĐ-CP).
(5) Article 23 of Decree 106/2006/NĐ-CP
(6) (6) When the application for infringement settlement is not filed with the right authority (i.e. it falls within the settlement jurisdiction of another agency), the agency that receives such application shall provide guidelines to the applicant as which agency he/she should file the application with or shall forward the application to the agency with settlement jurisdiction (clause 2, Article 27 of Decree 105/2006/NĐ-CP).
(7) If there is a dispute over or complaint about the right holder, protectability, or scope of IPR protection, the agency that receives the application for infringement settlement shall guide the applicant to complete procedures to request for settlement of the complaint or resolution of the dispute at the competent agency within 10 days from the day such disputes arises (clause 5, Article 27 of Decree 105/2006). As long as the final conclusion is made by the agency authorized to settle the complaint/dispute, the competent person shall be responsible to rule upon the act of infringement (clause 4, Article 26 of Decree 106/2006/NĐ-CP) (if an industrial property right is infringed upon) (Decree 47/2009/NĐ-CP and Decree 57)
(8) Clause 1, Article 25 of Decree 41/2005/NĐ-CP
(9) Inspection term (Article 48 of the Law on Inspection, Article 41 of Decree 41/2005/NĐ-CP)
(10) Article 55 of the 2002 Ordinance on Dealing with Administrative Offences as revised in 2007 and 2008
(11) Article 56 of the 2002 Ordinance on Dealing with Administrative Offences as revised in 2007 and 2008
(12) Article 64 of the 2002 Ordinance, Article 24 of Decree 128/2008/NĐ-CP as revised in 2007, 2008
(13) Article 66, Article 66a of the 2002 Ordinance on Dealing with Administrative Offences
(14) Organizations and individuals liable for an administrative penalty (Article 118, Article 119 of the Ordinance on Dealing with Administrative Offences).
(15) The complainant has the right to appeal or initiate an administrative lawsuit at the court (clause 1 (d), Article 17 of the Law on Complaints and Denunciations).
(16) Under a Decision for Complaint Settlement for the 1st and 2nd time or under a court judgment (clause 6, clause 8; Article 38, cause 2 (points g and i), Article 45 of the Law on Complaints and Denunciations, Article 20 of Decree 136/2006/NĐ-CP), clause 17.2 of Resolution 04/2006/NQ-HĐTP,clauses 2(a) and 2(b), Article 64 of the Ordinance on Procedures for Settlement of Administrative Disputes.
(17) The Right holder, the respondent has the right to call upon IPR examination during the settlement process (clause 2 Article 40 of Decree 105/2006/NĐ-CP).
(18) (18) The agency authorized to call upon examination during the settlement of an IPR infringement case (clause 1, Article 40 of Decree 105/2006/NĐ-CP, Article 200 of the IP Law).
(19) If an act of infringement contains a sign of a criminal, the agency that receives the application shall forward the case to the competent agency for investigation and initiation of a criminal lawsuit (Article 62 of the Ordinance on Dealing with Administrative Offences).
If there is no sign of a criminal but a sign of an administrative offence, the proceeding performing agency (under the criminal procedures) must forward the case file to and request the competent person to impose an administrative penalty on that act (Article 63 of the Ordinance on Dealing with Administrative Offences).

Source: http://iprenforcement.most.gov.vn/

IPR ENFORCEMENT MEASURES

By
sblaw
-
so do

 IPR ENFORCEMENT MEASURES

To protect the intellectual property rights (IPR), a Right holder might exercise the right to self-defend or request the enforcement agency to deal with acts of IPR infringement by way of civil remedies, administrative measures or criminal punishments, or might request the application of import/export control measures to discover, prevent or deal with importations and exportations of right infringing goods.

CHART ON THE RELATIONSHIPS BETWEEN ENFORCEMENT MEASURES

sodo(1)

 

1. The relationship between (1) civil remedies and (2) administrative measures, (3) criminal punishments and (4) control of IPR-related imports/exports:

– If the IPR infringing party is currently subject to an administrative penalty or a criminal punishment, the right holder or the aggrieved organization or individual might initiate a lawsuit against the infringing party at the court to ask for damages.
– Upon the application of the measure of control of IPR-related imports and exports, if the customs authority finds out any IPR infringing goods, the customs authority shall notify this to the right holder for him to exercise the right to initiate a civil lawsuit with the Court or file a request with a relevant agency for an administrative penalty (in this case, the right holder still have the right to initiate a lawsuit with the court to ask for damages).
2. The relationship between (2) administrative measures and (3) criminal punishment and (4) measure of control of IPR-related imports/exports:

– In the process of settlement of acts of right infringement, if there is any sign of a crime of IPR Infringement, the enforcement agency by administrative measures must transfer the dossier to the competent criminal proceeding agency for handling.
– In the case, the IPR infringing party was sued, prosecuted or liable for a decision to be brought out to trial according to criminal proceedings, but later the investigation or the case was suspended, if such as of right infringement contains a sign of an administrative violation, the proceeding performing agency shall transfer the dossiers of the violation to and request the enforcement agency for settlement.
– When applying the measure of control of IPR-related Imports/exports, if the Customs authority detected any IPR infringing goods, the Customs authority will notify this to the right holder for the right holder to request the Customs authority to deal with the act of importing/exporting infringing goods (in case of detecting IPR counterfeit goods, the Customs authority has the right to immediately impose an administrative penalty thereon).
3. The relationship between (3) measure of control of IPR-related imports/exports and (4) criminal punishment

There is no direct relationship between (3) measures of control of IPR-related imports/exports and (4) criminal punishments. The measure of control of IPR-related imports/exports shall be taken at the request of the right holder, upon detection of infringing goods, the Customs authority will take administrative measure to handle (if the right holder requests, except where IPR counterfeit goods are detected, the Customs authority has the right to take administrative measure to deal with immediately such good). During the review process to determine the applicable penalty, if there is any sign of an IPR infringement offence, the Customs authority shall transfer the case file to the competent criminal proceeding agency to deal with the act by criminal punishment.
ROLE OF IP EXAMINATION, IP AGENTS, AND RIGHT ESTABLISHMENT AGENCIES IN IPR ENFORCEMENT

 

1. ROLE OF IP EXAMINATION

IP examination plays a role to assist IPR enforcement forces in assessment and making conclusions of the following:
– Legal status, the protectability of IPR subject matter, and the scope of protected IPRs;
– The determination of evidence to identify the loss;
– The determination of the right infringement elements, infringing goods/services, the factors that serve as the basis to determine the value of the protected IPR subject matter, and the infringing party;
– The possibility to prove the right holder status, to prove the infringement, infringing goods or possible counter-proof of the documents and evidence used in the dispute or infringement.
The IP Examination conclusion of the examination organization or examiners is one of the sources of information/documents of references for the enforcement agencies to conclude whether or not an act of IPR infringement is committed.
A request for examination can be made by the right holder, relevant organizations and individuals and the enforcement agencies when necessary.
Examination activities shall be carried out by the eligible organizations and individuals that meet the practising conditions as prescribed by law.
2. ROLE OF IP IP AGENTS

IP agent is a type of services provided by organizations or individuals in order to protect, on behalf of the right holder, the legitimate rights of IPR holder and is responsible for providing evidence or information about the act of the infringement of the IPR right whose holder is being represented by them, and for clarification before enforcement agencies of the content relating to the request for settlement.
3. ROLE OF RIGHT ESTABLISHMENT AGENCIES:

The role of a right establishment agency: the State management agency on IPR (The National Office of Intellectual Property, the Copyright Office, Office of plant variety protection) is not to directly implement IPR enforcement measures, but to act as technical agencies, in many cases these agencies will provide comments to help enforcement agencies to make csonclusions of whether or not an act of IPR infringement exists.
The provision of technical comments is carried out in the same manner like IP examination but by the right establishment agency and only an enforcement agency has the right to seek for comments from these agencies. The right establishment agency shall not provide its technical comments to the right holder or other relevant organizations and individuals.

Source: http://iprenforcement.most.gov.vn/

Vietnam Trademark Introduction

By
sblaw
-
Vietnam Trademark Introduction

Trade marks are eligible for protection under Vietnamese law provided that these are visible signs in the form of letters, words, drawings or images including holograms, or a combination of these, represented in one or more colours.

In Vietnam three-dimensional signs (shapes) can be registered as trade marks, but trade marks based on sound and smell are not recognised.

The law also provides a number of circumstances under which a mark is not eligible for protection.

Vietnam is an official member of the Madrid Protocol and party to the Paris Convention for the Protection of Industrial Property.

Industrial Design in Vietnam

By
sblaw
-
Industrial Design in Vietnam

(1) Filing the application

In order to obtain right for industrial design in Viet Nam,you must file the application for granting an industrial design patent,directly or by mail,to the National Office of Intellectual Property of Viet Nam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Organizations,individuals of Viet Nam,foreign individuals permanently residing in Viet Nam and foreign organizations and individuals having a production or trading establishment in Viet Nam may file applications for an industrial design patent either directly or though a lawful representative in Viet Nam.

Foreign individuals not permanently residing in Viet Nam,foreign organizations and individuals not having a production or trading establishment in Viet Nam shall file applications for an industrial design patent through a lawful representative in Viet Nam.

The first-to-file principle

Viet Nam has adopted the first-to-file system,i.e. where two or more applications are filed by many different parties for protection of the same design,the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date,the industrial design patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement,all these applications shall be refused for the grant of the industrial design patent.

Accordingly,it is advisable to file an application for an industrial design patent as soon as possible after the design was invented and not to make the design public before filing the application.

(2) Formality examination

An application for an industrial design patent filed with the NOIP shall be subject to formality examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination,if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP,the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

(3) Notification of the formality examination result

Before the expiration of the time limit above,the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

  • For a valid application,the NOIP shall send to the applicant a notice on acceptance of valid application.
  • For an application failing to meet formal requirements,the NOIP shall send to the applicant a notice of intended refusal to accept valid applications,clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of one month from the date of notification for the applicant to give opinions or correct errors;

(4) Refuse to accept the valid application

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit,the NOIP shall send a notice on its refusal of the application and,upon the applicant’s request,refund the paid fees and charges for jobs to be done after the formality examination. vApplicants and all organizations and individuals having rights and interests directly related to the decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal,NOIP shall issue a notice of acceptance or rejection of such complaint,clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about decisions or notices concerning the application for an industrial design patent (the 1st complaints) by the NOIP such decisions or notices,if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP,the complainant or person having rights and interests directly related to the decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled,or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology,such complainant or person may initiate a lawsuit at court.

(5) Publication of the application

Within 2 months as from the date the application is accepted as formally valid,it will be published in the Industrial Property Official Gazette for oppositions and comments of third parties. Applicant shall pay a fee for such publication.

(6) Substantive Examination

The purpose of substantive examination of design applications is to assess the eligibility of objects claimed in the application under the requirements and corresponding protection scope. An examination will be carried out by examiners of the NOIP within 6 months from the date of publication.

If the applicant,in the course of substantive examination,corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP,the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.

(7) Notification of substantive examination results

On the date of expiration of the time limit for substantive examination of an application at the latest,the NOIP shall send to the applicant one of the following notices:

  • A notice on its intended refusal to grant an industrial design patent,clearly stating the reason(s) for refusal and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements(the applicant may request prolongation of the above time limit),if the object claimed in the application fails to satisfy the protection conditions;
  • A notice on its intended refusal to grant an industrial design patent,clearly pointing out errors and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to justify or correct errors (The applicant may request prolongation of the above time limit),if the object claimed in the application satisfy the protection conditions but the application still contains errors;
  • a notice on its intended grant of an industrial design patent and request the applicant to pay the fee as referred to in the Item (9),if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit;

(8) Notification of refusal

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit,the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners,the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.

(9) Notification of intention to grant an industrial design patent and request to pay fee

If examiners judge that the application fulfills the requirements,NOIP will issue a notification of its intention to grant the industrial design patent and request to pay fee for the issue of an industrial design patent to the applicant.

(10) Issue the Industrial design patent

Within 10 days after applicants pay fully and on time the prescribed fees and charges,the NOIP shall carry out the procedures for granting the industrial design patent.

(11) Entry into the National Register of Industrial Property and publication of the industrial design patent

The Industrial design patent shall be recorded in the National Register of Industrial Design and the decision on granting the patent design shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after the applicant pays a publication fee.

Source: https://www.aseanip.org/IP-in-ASEAN/Design

Patent Examination Procedure in Vietnam

By
sblaw
-
Patent Examination Procedure in Vietnam

Applicants should be aware of the examination process a patent going through the National Office of Intellectual Property of Viet Nam (NOIP). This process is begun with the filing of a patent application with NOIP and completed by granting a patent.


(1) Filing the application

In order to obtain the patent right in Viet Nam, you must file the application for granting a Patent (for Invention and for Utility solution separately), directly or by mail, to the National Office of Intellectual Property of Viet Nam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Organizations, individuals of Viet Nam, foreign individuals permanently residing in Viet Nam and foreign organizations and individuals having a production or trading establishment in Viet Nam may file applications for a patent either directly or though a lawful representative in Viet Nam.

Foreign individuals not permanently residing in Viet Nam, foreign organizations and individuals not having a production or trading establishment in Viet Nam shall file applications for a patent through a lawful representative in Viet Nam.

Besides, foreign applicants can also obtain a patent right in Viet Nam by filing an international application which designates or selects Viet Nam through the PCT system. Applicant must carry out procedures for registration of an invention under the PCT’s provisions at NOIP within 31 months from the international filing date or from the priority date, if the priority right is claimed in the application.


The first-to-file principle

Viet Nam adopts the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same invention, the patent may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions for the grant of patent and having the same earliest priority or filing date, the patent may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a patent.

Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.


(2) Formality examination

A patent application filed with the NOIP shall be subject to formal examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.


(3) Request for correction and amendment

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

  • For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.
  • For an application failling to meet formal requirements, the NOIP shall issue a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal and set a time limit of one month from the date of notification for the applicant to give opinions or correct errors;


(4) Refuse to accept the valid application

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.

The applicant and all organizations and individuals having rights and interests directly related to decision may lodge complaints with the Director General of NOIP or initiate a lawsuit at court if they disagree with this decision within 90 days from the date the person having the right to complaint receives the notice of this decision.

Within 10 days from the date of receipt of a complaint about the decision of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about the decision concerning the patent application (the 1st complaints), if the complaint is not settled or complainants disagree with complaint-settling decisions of the NOIP, the complainants or persons having rights and interests directly related to the decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate lawsuits at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate lawsuits at court.


(5) Publication of the Patent Application

The patent application accepted as valid shall be published by the NOIP in its Industrial Property Official Gazette in the nineteenth (19) month from the date of priority or the filing date in case the application has no date of priority or within two (2) months after being accepted as a valid application, whichever is later for oppositions and comments of third parties.

Applicants shall pay a fee for such publication.

Patent applications under the Patent Cooperation Treaty (PCT) shall be published within two (2) months from the date it is accepted as a valid application and enters the national phase.

Patent applications containing a request for earlier publication shall be published within two (2) months from the date the NOIP receives that request or the date it is accepted as a valid application, whichever is later.

(6) Request for the Substantive Examination

An substantive examination of the application will be carried out only for which the applicant or a third party has filed a request for examination and paid the examination fees within 42 months as of the filing date or the priority date, as applicable, and the time limit for making request for substantive examination of an patent application involving a request for a utility solution patent shall be 36 months counting from the filing date or the priority date, as applicable.

Where no request for substantive examination is filed within the time limit mentioned above, the invention registration application shall be considered having been withdrawn at the expiration of that time limit.


(7) The Substantive Examination

The purpose of substantive examination of patent applications is to assess the patentability of objects claimed in the application under the requirements and corresponding protection scope. A substantive examination will be carried out by examiners of the NOIP within 12 months from the date of receiving the request for substantive examination.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.


(8) Notification of the Substantive Examination Results

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

  • a notice on its intended refusal to grant a patent, clearly stating the reason(s) for refusal, possibly guiding the change of the protection scope and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements (The applicant may request prolongation of the time limit), if the object claimed in the application fails to satisfy the protection conditions.
  • a notice on its intended refusal to grant a patent, clearly pointing out errors and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to justify or correct errors. (The applicant may request prolongation of the time limit), if the object claimed in the application satisfies the protection conditions but the application still contains errors.
  • or makes reasonable justifications within the time limit abovea notice on its intended grant of a patent and request the applicant to pay the fee as referred to in the Item (10), if the object claimed in the application satisfies the protection conditions or makes reasonable justifications within the time limit above.


(9) The Decision of Refusal

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.


(10) Request to pay fee

As mentioned in the Item (8), if the patent is granted, the NOIP shall request the applicant to pay the fee for the grant of a patent, the fee for notification of the patent grant decision, the registration fee and the fee for maintenance of the first year’s validity of the patent.


(11) Issue the Patent

Within 10 days after applicants pay fully and on time the fees and charges, the NOIP shall carry out the procedures for granting the patent for the invention.


(12) Entry into the National Register of Industrial Property and publication of the patent

The Patent shall be recorded in the National Register of Inventions and the decision on granting the patent shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicants pay a publication fee.

Note:

(i) As from the date an patent application is published the Industrial Property Official Gazette until prior to the date of decision on the grant of a patent, any third party shall have the right to present opinions to the NOIP in relation to the grant or refusal of the patent in respect of the application. Such opinions must be given in written form and be accompanied by materials or must specify the source of information used for proving.

(ii) The time limit for re-examination of patent applications shall be equal to two thirds of, and in complicated cases extendable up to, the time limit for initial examination.

(iii)“PCT applications” include: (a) applications containing a claim for the protection in Viet Nam and filed in any member countries of the PCT, including Viet Nam (PCT applications designating or selecting Viet Nam); (b) applications filed in Viet Nam and containing a claim for the protection in any member countries of the PCT, including Viet Nam (PCT applications originating from Viet Nam).

Source: https://www.aseanip.org/IP-in-ASEAN/Patent-and-Utility-Model/Viet-Nam

Trademark Vietnam

By
sblaw
-
registering trademark for foreign company in Vietnam

(1) Filing the application

The application for a mark registration must be filed directly or by mail, to the National Office of Intellectual Property of Viet Nam (NOIP) or its brand offices in Ho Chi Minh City or Da Nang.

Organizations, individuals of Viet Nam, foreign individuals permanently residing in Viet Nam and foreign organizations and individuals having a production or trading establishment in Viet Nam may file applications for a mark registration either directly or though a lawful representative in Viet Nam.

Foreign individuals not permanently residing in Viet Nam, foreign organizations and individuals not having a production or trading establishment in Viet Nam shall file applications for a mark registration through a lawful representative in Viet Nam.

Foreign applicants can obtain a mark registration in Viet Nam by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) which designates Viet Nam through the Madrid Agreement or the Madrid Protocol or both of them.

The first-to-file principle

Viet Nam has adopted the first-to-file system, i.e. where two or more applications are filed by many different parties for registration of the same mark, the registration may only be granted to the valid application with the earliest priority or filing date among applications that satisfy all required conditions; where there are two or more applications satisfying all the conditions and having the same earliest priority or filing date, the registration may only be granted to a single application out of these applications under an agreement by all applicants. Without such an agreement, all these applications shall be refused for the grant of a mark registration.

Accordingly, it is advisable to file an application for a patent as soon as possible after the invention and not to make the invention public before filing the application.

Formality examination

An application for a mark registration filed with the NOIP shall be subject to formality examination for evaluating its validity.

The time limit for formality examination of an application is one (1) month from the filing date. In the course of formality examination, if the applicant corrects or supplements documents on his/her own initiative or upon the request of the NOIP, the time limit for formality examination may be prolonged for a period of time during which documents are corrected or supplemented.

(2) Request for correction and amendment

Before the expiration of the time limit above, the NOIP shall complete the formality examination of applications and send notices on examination results to applicants.

  • For a valid application, the NOIP shall send to the applicant a notice on acceptance of valid application.
  • For an application failing to meet formal requirements, the NOIP shall send to the applicant:

a notice of intended refusal to accept valid applications, clearly stating reasons and setting a time limit for the applicant to correct errors or to object such intended refusal andset a time limit of one month from the date of notification for the applicant to give opinions or correct errors.


(3) Refuse to accept the valid application

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application and, upon the applicant’s request, refund the paid fees and charges for jobs to be done after the formality examination.

Applicants and all organizations and individuals having rights and interests directly related to decision may lodge a complaint with the Director General of NOIP or initiate a lawsuit at court if they disagree with the decision within 90 days from the date the person having the right to complaint receives the notice.

Within 10 days from the date of receipt of a complaint about the notice of refusal, NOIP shall issue a notice of acceptance or rejection of such complaint, clearly stating the reason(s) for rejection.

Upon the expiration of the time limit for settlement of the complaint about the decision or notice concerning the application for mark registration (the 1st complaints) by the NOIP, if the complaint is not settled or the complainant disagree with complaint-settling decisions of the NOIP, the complainant or person having rights and interests directly related to those decision may further lodge their complaints (the 2nd complaints) to the Minister of Science and Technology or initiate a lawsuit at court within 30 days from the date of expiration of the time limit for settlement of the 1st complaint if by that date the 1st complaint is not settled, or from the date the person having the right to complaint receives or knows about the decision on settlement of the 1st complaint. Upon the expiration of the time limit for settlement of the 2nd complaint above or if the complainant disagree with complaint-settling decisions of the Minister of Science and Technology, such complainant or person may initiate a lawsuit at court.


(4) Publication of the application

Within 2 months as from the date the application is accepted as formally valid, it will be published in the Industrial Property Official Gazette for oppositions and comments of third parties. Applicants shall pay a fee for such publication.


(5) Substantive Examination

The purpose of substantive examination of mark applications is to assess the eligibility of objects claimed in the application under the requirements and corresponding protection scope. An examination will be carried out by examiners of the NOIP within 6 months from the date of publication.

If the applicant, in the course of substantive examination, corrects or supplements documents or makes justifications on his/her own initiative or upon the request of the NOIP, the time limit for substantive examination may be prolonged for a period of time during which the applicant does so.


(6) Notification of substantive examination results

On the date of expiration of the time limit for substantive examination of an application at the latest, the NOIP shall send to the applicant one of the following notices:

  • a notice on its intended refusal to grant a mark registration, clearly stating the reason(s) for refusal and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to give opinions and satisfy the requirements. (the applicant may request prolongation of the above time limit), if the signs claimed in the application fails to satisfy the protection conditions;
  • a notice on its intended refusal to grant a mark registration, clearly pointing out errors and setting a time limit of two (2) months from the date of issuance of the notice for the applicant to justify or correct errors. (the applicant may request prolongation of the above time limit), If the signs claimed in the application satisfy the protection conditions but the application still contains errors;
  • a notice on its intended grant of a mark registration and request the applicant to pay the fee as referred to in the Item (9), if the signs claimed in the application satisfy the protection conditions or the applicant satisfactorily corrects errors or makes reasonable justifications within the time limit above.


(7) Notification of refusal

If the applicant to whom the NOIP has sent a notice on its intended refusal of the application fails to correct errors or unsatisfactorily corrects errors or makes no opposition or makes unreasonable opposition to the intended rejection within the set time limit, the NOIP shall send a notice on its refusal of the application.

When dissatisfaction is in the decision of refusal of examiners, the applicant may appeal against the decision of refusal with Director General of NOIP or initiate lawsuits at court in accordance with procedures mentioned in the item (4) above.


(8) Notification of intention to grant a mark registration and request to pay fee

If examiners judge that the application fulfills the requirements, NOIP will issue a notification of its intention to grant the mark registration and request to pay fee for the issue of a mark registration to the applicant.


(9) Issue the Mark Registration Certificate

Within 10 days after applicant pays fully and on time the prescribed fees and charges, the NOIP shall carry out the procedures for granting the Mark Registration Certificate.


(10) Entry into the National Register of Industrial Property and publication of the Mark Registration Certificate

The Mark Registration Certificate shall be recorded in the National Register of Marks and the decision on granting the mark registration shall be published by the NOIP in the Industrial Property Official Gazette within two (2) months from the date of issuance and after applicant pays a publication fee.

For the international mark registered through the Madrid system, the NOIP shall, if accepted for protection, issue and publish a decision on acceptance for protection of an internationally registered mark in its Industrial Property Official Gazette. At the request of an internationally registered mark owner, the NOIP issues a certificate of protection in Viet Nam of the internationally registered mark.

Note:

(1) For an application for international mark’s registration designating Vietnam, the NOIP shall conduct the substantive examination of the application according to the procedures applicable to mark registration application filed directly with the NOIP. Within 12 months after the International Bureau issues the notice, the NOIP shall make a conclusion on protectability of the mark.
(2) Procedures for mark international registration applications originating in Vietnam: the procedures for processing mark registration applications will also apply to the processing of mark international registration applications at the NOIP.
(3) Rights to well known marks are protected and belong to proprietors of those marks without any registration procedures. If a well-known mark is recognized according to civil procedures or under a recognition decision of the NOIP, that well-known mark shall be recorded in the list of well-known marks kept at the NOIP.
(4) As from the date an trademark registration application is published the Industrial Property Official Gazette until prior to the date of decision on the grant of a Mark registration Certification, any third party shall have the right to present opinions to the NOIP in relation to the grant or refusal of a Mark registration Certification in respect of the application. Such opinions must be given in written form and be accompanied by materials or must specify the source of information used for proving.

Source: https://www.aseanip.org/IP-in-ASEAN/Trade-Mark/Viet-Nam

Vietnam trademark quotation

By
sblaw
-

Question: My company needs filling application trademark on Vietnam. Can you send me a quotation?

Thank you very much!

Answer: Thank you very much for your email regarding the subject matter. Regarding your enquiries concerning the subject matter, we would like to advise you on the procedure and our fee schedule in relation to the trademark registration proceeding in Vietnam as follows:

1. FEE SCHEDULE

In Vietnam, multi-class application is applicable. The basic fees are calculated based on the number of class of goods/services (G/S) in each application as well as the number of products designated in each class in the application.

2.  PROCEDURE AND TIMELINE

The duration of a trademark application is around 14-18 months – from the filing date to the actual receipt of the registration.

The pricess involves these stages:

(1) formal examination and publication in the Gazette (3 months);

(2) examination as to substance (9 months) and

(3) issuance of registration certificate of the registered mark (2 months). Kindly note that the term for registration process in practice normally takes up to several months longer due to the workload of the NOIP and the slow examination process by the NOIP’s examiner.

 3.  REQUIRED DOCUMENTS AND INFORMATION

–       Name and address of the Applicant;

–       List of Goods/Services;

–       Specimen of the applied mark;

–       An original Power of Attorney which is simply signed by the Applicant (our form in attachment) (Please be informed that a scanned/faxed copy of the Power of Attorney is acceptable upon filing provided that the original copy is submitted within 01 month from the filing date).

We hope the above is of your assistance. Should you have any inquiry, please do not hesitate to contact us. We look forward to hearing from you very soon.

Ordinance on Procedures for the settlement of Administrative Cases, 1996:

By
sblaw
-
Ordinance on Procedures for the settlement of Administrative Cases, 1996:

The Ordinance on Procedures for the settlement of Administrative Cases was passed on May 21, 1996 and came into force on July 1, 1996. It was amended in 2006 by the new Ordinance on Procedures for the settlement of Administrative Cases.

The Ordinance provided for general principles concerning the administrative proceedings and procedures in courts in order to settle administrative cases. Although the former Ordinance did not contain specific provisions over intellectual property rights, it also applied to such disputes.

Criminal Code, 1999:

By
sblaw
-
Criminal Code, 1999:

The 1st Criminal Code of Vietnam including provisions on intellectual property is the Criminal Code passed on December 21, 1999 that came into force on July 1, 2000.

The Criminal Code, 1999 included several provisions on intellectual property. First of all, infringements upon copyrights and their consequences are explained in article 131. According to this article, infringers of copyrights shall be sentenced to a fine of from 2 million to 20 million dong or to a non-custodial sentence (maximum 2 years). In case of organized crimes or of recidivism however, infringers shall be submitted to a custodial sentence (between 6 months and 3 years).

Then on counterfeiting, articles 156 to 158 explains consequences on manufacturing and/or trading fake goods. Penalties go from 6 months to 20 years imprisonment, depending on what was counterfeited, on its value, on its consequences… Under articles 157 and 158, life imprisonment and capital punishment can also be required if the crime resulted in particularly serious consequences.

When it comes to industrial property finally, articles 170 and 171 respectively foresee penalties in two cases. The first one is for “breaching the regulations on the granting of industrial property protection deeds”, which is submitted to a non-custodial sentence (maximum 3 years) or to a custodial sentence from 6 months to 3 years. If the crime is committed in an organized manner, caused particularly serious consequences or was committed more than once however, the sentence shall be from 2 to 7 years imprisonment.

The second one is for “infringing upon industrial property rights”. Normally, infringers shall be sentenced to a fine (between 20 million and 200 million dong) or to a non-custodial sentence of two years maximum. In case of organized crime, recidivism or particularly serious consequences, the infringer shall expose himself to a 6-month to 3-year custodial sentence.

Science and Technology Law, 2000:

By
sblaw
-
Science and Technology Law, 2000:

The Law on Science and Technology was passed on June 9, 2000 and came into force on January 1, 2001. The aim of this law is to regulate scientific and technological organizations and activities.

A few articles of the law contain specific provisions about intellectual property. Firstly, article 2-8 explains that the term “scientific and technological services” also refers to intellectual property and technology transfer, and so the law applies to intellectual property related activities.

Then, article 8 strictly prohibits infringements upon intellectual property rights, along with illegals transfers of technology and illegal information disclosure.

Article 13 is about scientific and technological organizations’ tasks, stipulating that such organizations are able to conduct activities related to intellectual property.

The rights of scientific and technological organizations are defined by article 15. Under article 15-3, organizations are enabled to contribute to the capital of intellectual property rights related to scientific and technological activities. The same article (15-4) also assures them the right to get their intellectual property rights protected.

Plus, article 26 is devoted to the copyrights and ownership rights deriving from scientific and technological activities. According to this article, the performance of a scientific and technological task by organizations and/or individuals leads to its ownership. In the same way, should an organization and/or individual carry out a scientific and technological work, he will be considered the author. Article 26-4 makes clear that authors of scientific and technological works are entitled to the same rights that organizations enjoy for intellectual property rights.

Finally, article 49-5 of the law provides for the State management to secure the protection of the intellectual property rights related to science and technology.

Customs Law, 2001:

By
sblaw
-
Customs Law, 2001:

The Customs Law was passed on June 29, 2001, came into force on January 1, 2002 and was amended in June 2005.

The section 5 of the Customs Law is devoted to intellectual property. It contains 3 articles (articles 57, 58 and 59) setting up the conditions of the customs procedures completion’s temporary postponement for intellectual property rights. Article 57 explains in which case a temporary postponement can be requested to the Customs office, that is to say when the holder of an intellectual property right thinks he is victims of an infringement upon this same protected right.

He has however to satisfy the conditions of article 58 to obtain the postponement. Thus, the holder of the intellectual property right has to send a written request to the Customs office along with evidences of the ownership and of the infringement. Article 58 finally provides that enquirers shall pay a security deposit to the Customs office to prevent wrong requests of postponement.

Ordinance on Handling of Administrative Violations, 2002:

By
sblaw
-
Ordinance on Handling of Administrative Violations, 2002:

 

The Ordinance on Handling of Administrative Violations was passed on July 2, 2002 and came into force on October 1, 2002. It was amended in 2008 by the new Ordinance on Handling of Administrative Violations. The Ordinance foresees general provisions in case of administrative violations and also regulates the special case of intellectual property infringements. Resorting to administrative procedures rather than suing the infringer to court is indeed sometimes regarded as faster and more effective.

When it comes in particular to intellectual property rights, articles 10 and 14 d) are to be considered. Article 10 concerns the prescription period for sanctioning an administrative violation related to intellectual property rights. According to this article then, the holder of an intellectual property right has two years to start an administrative procedure from the day the administrative violation began.

Fort its part, article 14 d) of the Ordinance provides for penalties in the special case of an administrative violation of an intellectual property right. The infringer may be fined up to 100 million dong in such case.

Criminal Procedure Code, 2003:

By
sblaw
-
Criminal Procedure Code, 2003:

The Criminal Procedure Code was passed on November 26, 2003 and came into force on July 1, 2004.

It provides general processes and procedures for the institution of legal proceedings, investigation, prosecution and enforcement of criminal judgments. Even if it does not contain any special provisions for intellectual property, it is applicable to it.

Civil Procedure Code, 2004:

By
sblaw
-
Civil Procedure Code, 2004:

The Civil Procedure Code was passed on June 15, 2004, and came into force on January 1, 2005. It provides processes and procedures for the settlement of civil affairs and the enforcement of civil judgments.

More precisely, when it comes to intellectual property, articles 25-4, 29-2 and 34-1 of the Civil Procedure Code are of special interest. Firstly, article 25-4 provides that civil disputes concerning either intellectual property or technology transfer fall under the Courts’ jurisdiction.

Secondly, article 29-2 foresees that commercial disputes arising from business or trade over intellectual property or technology transfer also fall under the Courts’ jurisdiction.

Finally, the Civil Procedure Code provides that Vietnamese people’s courts of district have no jurisdiction concerning intellectual property or technology transfer. Article 34-1 foresees indeed that such cases shall be judged by Vietnamese people’s courts of provinces.

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