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Lawyer SBLAW has joined the IPR roundtable at American Center, Diamond Plaza, HCMC.

By
sblaw
-

Lawyer Nguyen Tien Hoa, parter of SBLaw has joined the IPR roundtable at American Center, Diamond Plaza, HCMC.

As part of the series of activities to celebrate the 20th anniversary of U.S.-Vietnam diplomatic relations, Associate Justice of the U.S. Supreme Court Ruth Bader Ginsburg has visited Vietnam and accompanied by her daughter, Dr. Jane Ginsburg, a professor at the Columbia University School of Law

IPR roundtable was hosted by the US Consulate General and attended by over 10 IP lawyers and members of the HCMC Intellectual Property Association and Intellectual Asset Management Club. This roundtable provided a forum to talk about recent IPR success stories, challenges, and opportunities for joint collaboration to address IPR enforcement. The United State Patent and Trademark Office’s Regional Attaché for Southeast Asia, Peter Fowler, facilitated the roundtable.
After the roundtable, an IP network between participants has been created.

Photo of IPR roundtable

11880500_878035802286252_4874025374793689202_n

Vietnam trademark registration

By
sblaw
-
Vietnam trademark registration

Question: Hello SB Law,

My company is contracting some factories in Binh Duong Province to make products (travel accessories, luggage, ect), and my company wants to file a trademark registration in Vietnam.
Can you tell me more about the trademark registration process, and how long does it take, and much would it cost?
Again thank you for your time.

Answer: Thanks for your following letter. As the leading IP firm in Vietnam, it is our pleasure to provide us the service with affordable fee and qualified service.

In order to help us to provide our fixed quotation, could you provide us the full list of your products or services bearing under your trademark?

We look forward to hearing from you soon.

Vietnam jurisdiction of settling the infringement action.

By
sblaw
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settling the infringement action

According to the Decree No. 99/2013/NĐ-CP of Government dated August 29, 2013 providing for Sanctioning of Administrative Violations in Industrial Property, the following authority state bodies have the jurisdiction in settling the IP infringement action in Vietnam:

–          Inspector in the field of science and technology;

–          Inspector in the field of information and communication;

–          Market Surveillance;

–          Vietnam Customs;

–          Police;

–          Provincial- and District-level People’s Committees;

1. The difference of the jurisdiction in settling the IP Infringement Action of the said authority bodies:

Depending on the infringement action, the aforementioned authorization agencies have the difference jurisdiction in handling and settling the infringement as following table:

Table 1

SETTLING-THE-INFRINGEMENT-01

2. The inspector in the field of science and technology

The inspector in the field of science and technology including the following person and authority state bodies:

–          Inspector of Ministry of Science and Technology (MOST);

–          Head of Inspector of MOST;

–          Inspector of Department of Science and Technology of Province (DOST);

–          Head of Inspector of DOST;

–          Head of the inspectation of DOST (case by case);

–          Head of the inspectation of MOST (case by case);

The jurisdiction of the inspector in the field of Science and technology are as following table:

Table 2

SETTLING-THE-INFRINGEMENT-02

3. The inspector in the field of information and communication

The inspector in the field of information and communication includes the following person and authority state bodies:

–          Inspector of Ministry of information and communication (MIC);

–          Inspector of Department of information and communication (DIC);

–          Head of inspector of MIC;

–          Head of inspector of DIC;

–          Head of inspectation of MIC (case by case);

Inspection in the field of information and communication only has the authority to settle the unfair competition relating to the use and registration of domain name that is confusingly similar/identical to a protected trademark.

The jurisdiction of the inspector in the field of information and communication are as following table:

Table 3

SETTLING-THE-INFRINGEMENT-03

4.  Market Surveillance

Counterfeit goods: The Market Surveillance could settle the actions of manufacturing, selling, transporting storing the counterfeit goods against the protected trademark and geographical indication on the domestic market.

Infringement action: In case of settling the product infringing upon the trademark, trade name, industrial design, Market Surveillance could settle the actions of selling and transporting of the infringement products at the domestic market. If the Market Surveillance could identify the manufacturer of the infringement products while settle the infringement, it could settle the infringement action at the location of manufacturing the infringement products.

The jurisdiction of Market Surveillance will be shown in the following table

Table 4

SETTLING-THE-INFRINGEMENT-04

5. Vietnam Customs

The jurisdiction of Vietnam Customs could settle all of the infringement action in Table 1 when the goos has been transited or imported into Vietnam.

The detail of jurisdiction of Vietnam Customs are as the following table:

Table 5

SETTLING-THE-INFRINGEMENT-05

6. Police

The Police only have the right to discover, investigate, and collect information and evidence and providing to the other authority state bodies. However, they have the right to settle and punish the action of manufacturing, importing, transporting, storing for the purpose of trading the counterfeit product of trademark, geographical indication and manufacturing, importing, transporting, storing for the purpose of trading the label, sign, material bearing the counterfeit of trademark and geographical indication.

The detail jurisdiction of Police will be shown in the following Table:

Table 6

SETTLING-THE-INFRINGEMENT-06

7. People’s Committee

Provincial- and district-level People’s Committees are competent to handle violations in industrial property which are committed in their respective localities on the principle of determination of competence provided in Article 38 and 52 of Law on Handling of Administrative Violations.

Table 7

SETTLING-THE-INFRINGEMENT-07

Note:

–          The fine in the above mentioned tables are applied for organization. The fine for personal is ½ of the fine for organization;

–          Remedies as aforementioned above include the following measures:

  • Forcible removal of infringing elements on their goods or means of business; forcible removal of information or indications on infringing goods or services on their means of business, including also advertisement, media and computer networks, or alteration or revocation of domain names or enterprise names containing infringing elements;
  • Forcible distribution or use for non­commercial purposes of goods bearing counterfeit marks or geographical indications or goods infringing upon industrial property rights; raw materials, materials and means used mainly for producing or trading in these goods, provided such act docs not affect the exercise of the industrial property rights by their holders:
  • Forcible bringing out of the Vietnamese territory of transit goods infringing upon industrial property rights or forcible re-export of goods bearing counterfeit marks or geographical indications, or imported means, raw materials and materials used mainly for producing or trading in these goods after infringing elements on these goods arc removed;
  • Forcible destruction of infringing elements, goods, evidence and means involved in violations on which infringing elements cannot be removed or infringing goods which may cause harms to the health of humans, domestic animals, plants and the environment; stamps, labels, packages and other articles bearing infringing elements;
  • Forcible modification or addition of indications on industrial property;
  • Forcible public correction of errors, for acts of giving wrong indications on industrial property rights:
  • Forcible confiscation of dispersed material evidence or means of violation;
  • Remittance into the state budget of illicit earnings from the commission of administrative violations.

 

Schedule of trademark fee in Vietnam

By
sblaw
-
trademark fee in Vietnam

Question: One of our client needs to file a application in Vietnam. Please let us have your latest schedule of fee and help us to answer the following questions:

1.Please introduce the brief process for filling a application(including  substantive examination) and how long it may take to grant a patent since the filing date.

2.Please let us know if you can translate Chinese into the official language acceptable by the IP Office and the cost for it.

Answen:  We refer with thanks to your email concerning the above matter and we would like to advise as below:

1. The schedule of charge

i. Filing fees:

For your reference, the estimated costs for filing a patent application are calculated based on the number of independent claims, page of Vietnamese specification (estimated as the Chinese/English version of specification and drawings), priority claim and words of specification. Detail as follows:

Work

Official fee (USD)

Agency fee (USD)
1. Filing a patent application (with one independent claim and not exceed 5 pages of specification)

11.00

120.00
– Addition fee for each independent claim from the second one

10.70

45.00
–  Additional fee for each page of specification from the sixth

one

0.70

1.00
2. Publication of patent application

7.30

35.00
3. Request for substantive examination

32.80

50.00
– Additional charge for each independent claim from the

second one

30.00

40.00
4. Translating fee from English/Chinese into Vietnamese (US$6.50 per 100 words)

–

Word basic
5. Claiming priority (for each earlier application)

36.40

50.00

ii. Estimated fee for granting:

Work

Official fee (USD)

Agency fee (USD)
1. Granting patent for patent (including Register and Publication) for the first independent claim

22.00

50.00
– Additional charge for each independent claim from the

second one

6.00

10.00
2. Annuities fee for the first year for the first independent claim

20.00

50.00
– Additional charge for each independent claim from the

second one

20.00

0.00

Note: The above cost does not include 5% VAT (which is calculated based on our attorney’s fees) and communication costs (which will be billed on the basic of actual expenses). No other fees are payable in case the application goes smoothly, without any objection from a third party or the NOIP’s examiner. Fees for responding to any official action include fee for filing a response to official action shall be informed, if any.

2. Timeframe for examination of a patent application.

A patent application will be examined through the following process:

i) Formality examination: The Patent application undergoes one-month formality examination counted from the filing date.

ii) Publication: The Patent application is published within 2 months from the date such application is accepted as being valid.

iii) Substantive examination: The result of substantive examination is expected available within 18 months from the date of filing of the request for substantive examination (if it is filed after the publication date) or from the publication date (if it is filed before the publication date).

iv) Granting: Within 01 month from the date of Notification to Grant Patent for Invention/Utility model, the Applicant shall have to pay the registration and publication fees. The Patent shall then be granted and published in the Industrial Property Gazette within 02 months from date of Notification.

3.  The required documents

In order to file a patent application in Vietnam, your client is required to provide with us the following document:

i) The Power of Attorney (as attached form) which is only simply to be signed by the Applicant, neither notarization nor legalization is required (The copy of the POA can be accepted at the time of filing but the original one must be lodged within 01 month from the filing date). Please find enclosed the form of POA for your simple prosecution

ii) A soft copy in word format of the Chinese specification of the application for translation into Vietnamese is requested to provide via email at the time of instruction.

We do hope that the above mentioned matter will be useful for you. Should you have any enquiry, please do not hesitate to contact us.

Thanks for your co-operation.

Fee quotation for filing a trademark application in Vietnam

By
sblaw
-

Question: Dear Sirs, Please provide me a fee quotation for filing a trademark application in Vietnam. Thank you.

Answer: Thank you for your email today 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.

Below is the breakdown of charges for registering a trademark in Vietnam, in a smooth case, for your consideration:

– Trademark search (Optional)

Description

Official Fees

(USD)

Attorney’s fee

(USD)
1. Fee for conducting a trademark search in one class (optional)

80.00

Note: the above excludes 5% VAT.

– Trademark registration

Description

Official Fees

(USD)

Attorney’s fee

(USD)
1.   Fee for filing an application for one class of G/S with up to 6 items *

 

– for each additional goods from 7th one (if any)

40.00

 

7.00

150.00

 

3.00
2. Fee for granting a registration certificate for one trademark in one class of G/S (without limitation of number of goods/services in each class)*

 

20.00

 

60.00
 

Total (Sum of Items with *)

270.00

In words: Two hundred and seventy US dollars.

Note: The above-quoted fees do not include 5% VAT of our service charge, bank charges ($US30) and actual communication costs ($US30-$US 40).

In case of any office action or any possible opposition which may occur during the application proceedings, an additional charge may be incurred, upon the your approval.

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.

Agencies have the power to deal with IPR infringement acts

By
sblaw
-
anh-1

 Question: Which agencies in Vietnam have the power to deal with IPR infringement acts? What are the applicable procedures for dealing with IPR infringement acts?

Answer: Pursuant to Article 200 of the 2005 IP Law of Vietnam, the following agencies shall  have the power to deal with IPR Infringement acts:

1. Courts

2. Inspectorates

3. Market control agencies

4. Customs authority

5. Police

6. People’s committees of various levels.

Depending on the acts, nature and seriousness of right infringement acts, such act of infringement shall  be dealt with by one agency and the distribution of powers among the agencies is set out in detail in the IP Law and relevant documents.

Several specific details:

1. Courts:

Like a majority of countries in the world, Vietnamese courts have jurisdictions over civil cases involving disputes over IPRs in general under the civil procedure legislation or over IPR infringement offences under the criminal procedure legislation.

Vietnam does not yet have an IP court to deal with IPR disputes.  These cases are usually assigned to the civil court or economic court under the provincial People’s court for first instance hearing

The civil court under the provincial/municipal People’s court shall hear for the first instance the non-profit disputes over IPRs (e.g. those disputes over personal rights of a work author)

The economic court under the provincial/municipal People’s court shall hear for the first instance the disputes over IPRs among organizations and individuals which are all for profit purpose (e.g. those disputes involving uses of trademarks on goods and products etc)

For a crime of IPR Infringement, it will be heard for the first instance by the district court.

2. Inspectorates:

Specialized inspectorates have the power to deal with IPR Infringements in their respective sector of control.

– Acts of infringement of related right and copyright: shall be deal with by the specialized inspectorate of the culture, sports and tourism sector under the Ministry of Culture, Sports and Tourism and its Departments of culture, sports and tourism of provinces and cities by way of administrative measures.

The Chief Inspector of the Ministry of Culture, Sports and Tourism has the power to impose a fine with the maximum value of VND500,000,000, Chief Inspectors of Departments of Culture, Sports and Tourism have the power to impose a maximum fine of VND30,000,000.

anh-1

– IPR infringement acts relating to various industrial property subject matters (inventions, trademarks, industrial design etc): shall be deal with by the specialized inspectorate of the science and technology sector under the Ministry of Science and Technology (MoST), Department of Science and Technology (DoST) of provinces and cities by way of administrative measures (except for the industrial property infringement acts in import/export).

The Chief Inspector of MOST has the power to impose a fine with the maximum value of VND500,000,000, Chief Inspectors of DoST have the power to impose a maximum fine of VND30,000,000

anh 2

Chart on the organization of the inspection forces of the science and technology sector:

 

– IPR infringement acts involving rights over plant varieties:  shall be deal with by the specialized inspectorate of the agriculture and rural development sector under the Ministry of Agriculture and Rural Development (MARD) and Departments of Agriculture and Rural Development under provinces and cities (DARD) by way of administrative measures

The Chief Inspector of MARD has the power to impose a fine with the maximum value of VND30,000,000, Chief Inspectors of DARD have the power to impose a maximum fine of VND20,000,000

Chart on the organization of the inspection forces of the agriculture and rural development sector:anh-3

3. Market control agencies

Market control agencies have the power to inspect and deal with acts of right infringement, and trading of IPR counterfeit goods during business and commercial activities.

The General Director of the Market Control Agency has the power to impose a maximum fine of VND70,000,000, Directors of Market Control Sub-agencies of provinces and cities have the power to impose a maximum fine of VND20,000,000, Heads of market control teams have the power to impose a maximum fine of VND5,000,000.

Chart on the organization of market control forces

anh 4

4.Customs authority

The customs authority has the power to deal with IPR infringement acts during the export and import goods. Upon a suspect of any imported goods of infringing protected IPR, the IPR holder of intellectual property might request the customs authority to stay the completion of customs procedures with regard to the relevant shipment for inspection. If the shipment is detected to contain a sign of IPR infringement, the right holder may request the Customs authority to impose a penalty on the organization or individual importing those infringing goods.

5. Police

The police is responsible to investigate into and prosecute against IPR infringement crimes (assigned to the economic police). During the investigation and prosecution of an IPR infringement crime, however, if the police deems that there are not sufficient constituents of an IPR infringement crime but there are signs of an administrative offence, the police must transfer the file infringement cases to such agencies as inspectorates and market control agencies for their settlement.

6. People’s committees

People’s committees of various levels have the power to deal with IPR Infringement acts in their localities, however, in fact, the people’s committees only exercise this power when the fine level goes beyond the power of the heads of the department inspectorate, and market control sub-agencies, departments of customs of provinces and cities to decide and when the relevant case files are forwarded to them by those agencies together with a request for the chairman of the people’s committee to fine.

The chairmen of people’s committees of provinces and cities have the power to impose a maximum fine of VND500,000,000 (similar to the power of the Chief Inspector of MoST, and the Chief Inspector of the Ministry of Culture, Sports and Tourism).

With regard to the procedures for dealing with IPR Infringement acts, please go to the Page “Enforcement Measures” of this website.

What is meant by “circulated pharmaceutical substances.”?

By
sblaw
-
What is meant by “circulated pharmaceutical substances.”?

Question:  Regarding Article 2(3) “Regulation on Data Security of Drug Registration Records” (“Regulation on Data Security”), please explain what is meant by “circulated pharmaceutical substances.” Regarding the term “business secret” as it is used throughout the Regulation on Data Security, please explain the criteria by which it is determined that information received from financial investment or intellectual activities becomes qualified to be a “business secret”, and what laws, regulations, decrees, etc., provide for any such criteria.Regarding Article 4 (2), please explain what constitues “significant effort”.According to Article 4(1), data to be secured must qualify as a “business secret”. Please explain the resoning behind the requirement that date to be secured under Article 10(2) must qualify as a “business secret”.

Answer: The above regulations stipulated in the Regulation on data security of drug registration records (issued by the Decision No. 30/2006/QD-BYT of 30 September 2006”) should be interpreted as follows:
– “Circulated pharmaceutical subtances” can be interpreted that subtances of the final drugs are allowed to be circulated in Vietnam according to regulations on registration of drug circulation.
– A business secret, stipulated in Article 4.23 of the IP Law, means information obtained from activities of financial and/or intellectual investment, which has not yet been disclosed and can be used in business
– “Significant effort” is one of protection conditions for secret data, stipulated by the IP Law (Article 128.1) corresponding to the requirements in Article 39.3 of the TRIPS Agreement. This term has not been specifically interpreted in the IP Law and the existing guidelines.
– The requirement that date to be protected must qualify as a “business secret” is provided for in Article 128.1 of the IP Law. The Law stipulating mechanism for protection of secret data under the protection of “business secret” comes from the requirement for protection of undisclosed data under the protection of “undisclosed information” in the Article 39 of the TRIPS Agreement. Secret data is a kind of undisclosed information (business secret), and only different in a way that such data should be submitted to a competent State agency in compliance with procedures for registration of product circulation. Therefore, undisclosed data is protected according to general principles on protection of “business secret” and particular regulations on responsibility of a state agency for data security in order that after being submitted, the data is still protected as if it was under the right holder’s control.

Licenses for trading in or circulating pharmaceuticals or agrochemical products

By
sblaw
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Licenses for trading in or circulating pharmaceuticals or agrochemical products

Question: According to Article 128.1 of the Intellectual Property Law, applicants for licenses for trading in or circulating pharmaceuticals or agrochemical products need to specifically request such data to be kept secret. Please also access the compliance of Article 128 with the Article 39 of the TRIPS Agreement.

Answer: In compliance with Article 39 of the TRIPS Agreement, the IP Law provides protection of secret data if such data meet certain conditions (as mentioned in the question above), but not protection of all data in the request for circulation of the product. In order to keep the data secret, the competent licensing agency must know which data in the registration record is subject to protection. Therefore, the applicant should make a claim, identify data to be protected, and prove that such data meet protection conditions.

Stay the completion of customs procedures

By
sblaw
-
thu tuc hai quan
Stay the completion of customs procedures
This measure of stay of the completion of customs procedures shall be taken at the request of the holder of an IPR protected in Vietnam, in order to collect information and evidence about a goods shipment to enable the IPR Holder to exercise his/her right to request for the settlement of an act of infringement and to request for application of provisional measures or preventative measures and to ensure that such act of infringement is properly dealt with through the administrative channel.

CHART OF THE PROCEDURES FOR APPLICATION OF THE MEASURE TO HALT THE COMPLETION OF CUSTOMS FORMALITIES

thu tuc hai quan

(1) Right holder files either directly or through an industrial property agent an application for halting the completion of customs formalities (Article 34 Decree 105/2005/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 105/2005/NĐ-CP, clause 3 Article 48 Decree 154/2005/NĐ-CP)
(3) 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 217 of the IP Law).
(4) The customs authority issues a notice of refusal of the application for halting the completion of customs formalities if the applicant fails to meet the requirements set out in points (2) and (3) (Article 36 of Decree 105/2006/NĐ-CP).
(5) The Customs authority issues a notice of acceptance of the application for halting the completion of customs formalities if the applicant meets the requirements set out in points (2) and (3)(Article 36 of Decree 105/2006/NĐ-CP).
(6) Upon discovering the suspected goods, the customs authority shall issue a decision to halt the completion of customs formalities (either at the request of the IPR holder or to exercise the power to impose administrative penalties) (Article 36, Article 37 of Decree 105/2005/NĐ-CP, Article 51 of Decree 154/2005/NĐ-CP).
(7) To take the halting measure and leave time for related parties to produce evidence, arguments, documents and examine and verify the IPR-related legal status in order to determine whether or not an act of IPR infringement has been committed or not (Article 51 of Decree 154/2005/NĐ-CP).
(8) In case there is no infringement of the IPR:
(i) Results relating to the IPR status of the shipment conforming that the halted shipment does not infringe upon IPR,
(ii) a decision of the IPR dispute resolution authority confirming that the shipment does not infringe upon IPRs. The customs authority shall continue completing customs formalities for the shipment..
(9) If the customs authority concludes that the halted goods infringe upon the IPR, the goods owners and the goods shall be liable for the penalties set out in points (10) Or (11) Depending on the choice of the IPR Holder.
(12) If the customs authority concludes that the halted goods infringe upon IPRs under point 9 and the right holder does not initiate a civil lawsuit
(13) The customs authority decides not to consider the application of the administrative penalties (Article 214,, 215 of the IP Law) The halted shipment shall be further released for completion of the customs formalities (Article 219 of the IP Law).
(14) The customs authority shall continue the completion of the customs formalities when:
(i) The application for halting is rejected; or
(ii) The applicant withdraws the application for halting the completion of customs formalities, or
(iii) Upon the expiry date of the halting period, the Customs authority does not receive an application for settlement of the IPR Infringement from the applicant or a document from a State competent agency or from the court confirming that they have received an application for settlement of the IPR infringement relating to the halted shipment; or
(iv) The results of determination of the IPR-related legal status confirming that the halted shipment does not infringe upon IPRs; or
(v) The applicant for halting does not initiate the civil lawsuit; or
(vi) The Customs authority does not accept the case for settlement in accordance with the procedures for dealing with administrative offences; or
(vii) A decision on halting the completion of customs formalities is suspended or revoked under a complaint settlement decision.
(Clause 3, Article 218 of the IP Law, Article 52 of Decree 154/2005/NĐ-CP, clause 1, Article 36, Article 37 of Decree 105/2006/NĐ-CP, Article 219 of IP Law).

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

Criminal punishment shall be applied to those person who deliberately commit acts of infringement of the copyright

By
sblaw
-
bien phap hinh su
Criminal punishment shall be applied to those person who deliberately commit acts of infringement of the copyright, related rights and industrial property rights to the trademarks and geographical indications being protected in Vietnam at the commercial scale.
 Upon detecting a sign of an IPR infringement offence under Articles 170a and 171 of the Penal Code, the right holder might request the proceeding performing agencies to initiate a criminal lawsuit for settlement.

CHART OF IPR INFRINGEMENT SETTLEMENT BY WAY OF CRIMINAL MEASURES

bien phap hinh su

(1) The Right holder or his representative (Article 198 of the IP Law, Article 21, Article 22 of Decree 105/2006/NĐ-CP), prosecution shall only be made at the request of the Right holder (Article 105 of the Criminal Procedure Code).
(2) Agencies authorized to deal with infringements by way of administrative procedures including:
(i) Inspectors of Science and Technology;
(ii) Inspectors of Culture, Sports and Tourism;
(iii) Market Control Agencies;
(iv) Economic Police; and (v) Customs authority.
(3) 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).
(4) 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).
(5) If the requirements in point (4) above are not met (clause 4, Article 27 of Decree 105/2006/NĐ-CP).
(6) An agency referred to in point (2) forwards the case file that contains signs of a criminal for criminal prosecution purpose (Article 62 of the Ordinance on Dealing with Administrative Offences, clause 8, Article 2 of Decree 106/NĐ-CP).
(7) Investigation time limit (Article 119 of the Criminal Procedure Code)
(8) If there is no sign of a criminal but a sign of an administrative offence, the proceeding performing agency (under criminal procedures) shall forward the file of the offence to and request the competent person referred to in point (2) to impose an administrative penalty on that offence (Article 63 of the Ordinance on dealing with administrative offences).
(9) No prosecution shall be made when:
(i) there is no offence,
(ii) the act does not constitute a criminal,
(iii) the person committing an act dangerous to the society is not old enough to bear the criminal liability,
(iv) the person’s criminal act has been subject to a legally binding judgment or a decision cancelling the case,
(v) the statute of limitations period for prosecuting criminal liability has expired,
(vi) the criminal has been given a general amnesty,
(vii) the person committing an act dangerous to the society has died, unless where it is necessary to appeal against another person (Article 107 of the Criminal Procedure Code).
(10) if:
(i) the applicant for prosecution withdraws his request before the opening of the first instance court session(clause 2 of Article 105),(ii) in any cases referred to in point (9),
(iii) the doer voluntarily terminates his criminal act halfway,
(iv) the criminal is exempt from criminal liability,
(v) the criminal is a juvenilei,
(vi) the investigation time limit has expired but it is impossible to prove the accused person guilty (clause 2, Article 105, Article 107 of the Criminal Procedure Code, Article 19 Article 25, clause 2 of Article 69 of the Criminal Code, clause 2, Article 164 of the Criminal Procedure Code).
(11) In any cases referred to in point(10)(Article 169, Article 180, Article 251 of the Criminal Procedure Code).

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

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

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sblaw
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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

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sblaw
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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

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sblaw
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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

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sblaw
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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

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