Filing a Trade mark application in Vietnam

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May 16, 2017

Question: We are one of intellectual property firm in Japan and found your information from the internet.

Could you please kindly quote us the newest best of price for filing a Trade mark application in Vietnam?

Please offer the relative fees of procedure as below request(included official fee and Attorney’s fee) ：
1. Filing an application for Trade make(office charge and your service fee)

2.How many items of goods for one service(basic)

3.Additional fee for each items of goods of one service
4. PrioritySwitch Cisco | Router Cisco | Cisco chính hãng | Máy chủ Server
5. Registration & granting TM Certificate
6. Translation fee for items of goods

7.Response to an Office Action(if any)

Furthermore , please also kindly let us know the information as below.

1. The time frame
2. Requested Documents(has any Notarization or legalizations of doc. requested?)

3.Requested Information

Answer: Regarding your enquiries concerning the subject matter, we would like to advise you on procedure and our updated fee schedule in relation to the trademark registration proceeding in Vietnam as follows:

1.FEE SCHEDULE

1.1 Trademark information

– Trademarks: (Please specify)

– Class(es): (Please specify)

1.2 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

1.2.1. Trademark searches (Optional)

Trademark search for 01 trademark in one class

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for conducting search 01 trademark in one class (optional)	–	85.00
2. Communication costs (if any)	30.00
Sub-total:	115.00
5% VAT:	5.75
Bank charge:	25.00
TOTAL	145.75

In words: One hundred forty-five US Dollars and seventy-five Cents

Note: The above-quoted fees include 5% VAT of our service charge, bank charges ($US25.00) and actual communication costs ($US30.00)

1.2.2. Trademark registration

Trademark registration for one trademark in one class:

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for filing an application and issuing certificate forone class of goods/services within 6 items* – for each additional Class from the 2nd one – for each additional goods/services from 7th one (if any) – fee for priority claims of one trademark application	65.00 45.00 10.00 37.00	126.00 81.00 3.00 50.00
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)* – Fee granting a registration certificate for each additional class from the 2^nd one	22.00 8.00	45.00 27.00
3. Fee translation from English to Vietnamese for items of goods/services and/or priority documents for each 100 words (If any)	6.00
4. Fee translation from Chinese to Vietnamese for items of goods/services and/or priority documents	20.00
5. Communication costs (*)	30.00
*Sub-total (with ):**	288.00
5% VAT:	14.40
Bank charge:	25.00
*TOTAL with ()**	327.40

In words: Three hundred twenty-seven US Dollars and forty Cents

Note:

-The above-quoted fees include 5% VAT of our service charge, bank charges ($US25.00) and actual communication costs ($US30.00).

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

2.Procedure and timeline

2.1. The duration of a trademark searches is around 10-15 working days.

2.2. The duration for a trademark application from mature to proceed to registration is around 14-18 months from the filing date, involving these stages (1) examination as to formality and publication on the Gazette (3-4 months); (2) examination as to substance (9-12 months) and (3) issuance of registration certificate for the registered mark (2-4 months). Kindly note that the term for registration process normally takes longer to several months in practice 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 (in e-copy only)

– An original Power of Attorney which is simply signed by the Applicant. No need notarization or Legalization. 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; One original Power of Attorney can be used for filling one or more applications. (SBLAW’s form

SBLAW’s Profile

By

sblaw

-

May 14, 2017

TRADEMARK RENEWAL IN VIETNAM

By

sblaw

-

May 14, 2017

Question: We are foreign company and kindly provide us with your best quotation (flat fee) for filing trademark renewal in Vietnam.

When reverting, please also provide us with the requirements for the same.

Answer: 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 renewal proceeding in Vietnam as follows:

1/Fee Schedule:

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for trademark renewal for the first class – Fee for trademark renewal for the second class	20.00 3.00	140.00 100.00
2. Fee for using Certificate of Trademark Registration every 10 years in one class of G/S without limitation of number of goods/services in each class (required fee for trademark renewal)	35.00	30.00
3. Communication Cost	30.00
Sub-total:	255.00
5% VAT	12.75
Bank charge	20.00
TOTAL	287.75

Note: The above-quoted fees include 5% VAT, Communication Cost $US30, Bank charge ($US20).

2.Procedure and Timeline

As stipulated, the renewal of trademark registration shall be proceeded within 6 months from the date of expiration at the end of TMRC. The duration of examination of trademark renewal is around 3-6 months from the date of filling renewal application to the actual receipt of recored-renewal.

However, in some cases, it will take further 3-6 months to examine of trademark renewal by the NOIP’s examiners due to backlog of the trademark applications of the NOIP or any possible shortcomings in examination process of trademark.

3.Required documents

– An original of Trademark Registration Certificate (TMRC) in case your client wish to record renewal of trademark in the protection titles, otherwise we will record on the NOIP’s database directly without an original of TMRC.

– An original Power of Attorney with a simply signature of the Applicant (form of SBLAW). 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.

Apply one trademark in Vietnam

By

sblaw

-

May 10, 2017

Question: We’re one company from Hongkong, now we’d like to apply the trademark for products of electric socket and switch, could you introduce some of famous companies’ trademarks you have succeed in applying? what’s more,please also introduce the process,time and price of your trademark application

Answer: Regarding your enquiries concerning the subject matter, we would like to advise you on procedure and our updated fee schedule in relation to the trademark registration and renewal proceeding in Vietnam as follows:

1.GENERAL INTRODUCTION

SBLAW has been recognized as one of the leading and highly recommended business law firms in Vietnam. SBLAW advised clients in a wide variety including foreign and domestic investment consultancy, business law, intellectual property, banking and finance, corporate, commercial, property and real estate, tax, agreement and contract, arbitration and litigation, M&A, leasing, construction, employment, insurance, enterprise development and management.

SBLAW is a perfect choice for large and medium-sized businesses, local and international corporations and organizations. SBLAW is a full-serviced law firm, dedicating to many clients who have been working with us for many years, among IBM, AIA, TOTAL, ExonMobil, ESCO, HTC, CSC, LG, DBS bank, ICBC, ING Bank, Hong Leong Bank, Bridge Mind Consulting Pte., Ltd; Luxasia; DSM Singapore Industrial Pte., Ltd, Nippon Steel, Innovar Vietnam, SmartEbook.com, UBM, Netrove Venture, Argentina Embassy in Vietnam, MSH (non-government organization), ADRA, Military Bank, VICEM, VINACONEX, VNPT, VTC Online, VSTV, Vinacomin, Trung Nguyen Group, Kinh Do Group Corporation, HIPT, Viettel Real Estate, VietsovPetro.

2.FEE SCHEDULE

2.1 Trademark information

– Trademark:

– Class: 09

– List of Goods: Electric socket and switch

2.2 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

2.2.1. Trademark searches (Optional)

Trademark search for 01 trademark in one class

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for conducting search 01 trademark in one class (optional)	–	85.00
2. Communication costs	30.00
Sub-total:	115.00
5% VAT:	5.75
Bank charge:	25.00
TOTAL	145.75

In words: One hundred and forty five US Dollars and seventy five Cents only

Note: The above-quoted fees include 5% VAT of our service charge, bank charges ($US25.00) and actual communication costs ($US30.00)

2.2.2. Trademark registration

Trademark registration for one trademark in one class:

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for filing an application and issuing certificate forone class of goods/services within 6 items* – for each additional Class from the 2nd one – for each additional goods/services from 7th one (if any)	65.00 45.00 10.00	190.00 122.00 5.00
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)* – Fee granting a registration certificate for each additional class from the 2^nd one	22.00 8.00	68.00 41.00
3. Communication cost	30.00
Sub-total:	375.00
5% VAT:	18.75
Bank charge:	25.00
TOTAL	418.75

In words: Four hundred eighteen US Dollars and seventy-five Cents

Note: The above-quoted fees include 5% VAT of our service charge, bank charges ($US25.00) and actual communication costs ($US30.00). In case of any office action or possible opposition which may occur during the application proceedings, an additional charge may be incurred, upon your approval.

3.Procedure and timeline

The duration of a trademark searches is around 10-15 working days.

The duration for a trademark application from mature to proceed to registration is around 14-18 months from the filing date, involving these stages (1) examination as to formality and publication on the Gazette (3-4 months); (2) examination as to substance (9-12 months) and (3) issuance of registration certificate for the registered mark (2-4 months). Kindly note that the term for registration process normally takes longer to several months in practice due to the workload of the NOIP and the slow examination process by the NOIP’s examiner.

4.Required documents and information

– Name and address of the Applicant;

– List of Goods/Services

– Specimen of the applied mark (in e-copy only) (available)

– An original Power of Attorney which is simply signed by the Applicant. No need notarization. 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; One original Power of Attorney can be used for filling one or more applications.

Legal loopholes in handling trademark infringements in Vietnam

By

sblaw

-

April 30, 2017

Legal loopholes in handling trademark infringements in Vietnam is the article of Mr. Pham Duy Khuong – partner of SBLAW, this is published on the Vietnam Law Magazine.

Intellectual property (IP) infringements in Vietnam, including infringements upon well-known trademarks, have prevalently occurred with subtle tricks and are considerably difficult to control. These have caused damage not only to businesses but also to customers.

According to Ministry of Science and Technology statistics, the number of IP infringement cases has complicatedly increased in Vietnam. Infringements upon well-known trademarks occur in various fields from clothing, cigarettes, food and beverage, etc. to all kinds of industrial machinery. Counterfeit products are publicly sold in the market at half or even one-third of authentic products’ prices.

From 2012-2015, the authorities handled 18,329 cases with signs of IP infringement, producing and trading counterfeit goods, with administrative fines up to VND 73 billion, and prosecuted 120 cases of counterfeiting and IP infringement with 196 defendants.

IP infringements in general and trademark infringements in particular harm genuine businesses, cause confusion, reduce customer trust in protected products as well as cause damage to customers who buy counterfeit goods.

According to current regulations, manufacturers, importers, traders and storers of counterfeit or trademark-infringing products could be fined up to VND 250.000.000 (about USD 12.000) and the infringers could face imprisonment.

In spite of those strict punishments, and IP and trademark infringements remain widespread due to the fact that some businesses lack information and some try to take advantage of the reputation of famous brands.

Our many years of experience in resolving trademark infringements show that taking advantage of the reputation of famous brands is an easy way to earn profit and many companies and manufacturers use it as a quick way to develop their own brands. The infringers often try to manufacture the counterfeit/ infringing products in Vietnam. However, with some kinds of products which could not be manufactured locally, the infringers import them, most of which originate from China.

For locally made products, the most important thing in dealing with the infringing act is to figure out the location of the manufacturer as well as the warehouse where a large volume of counterfeit/infringing products is stored. But handling the imported goods is more complicated.

If the imported products are smuggled goods, the IP rights owner may only take action against the distributors who sell the counterfeit/infringing products on the market. Because it is an impossible mission, in this case the IP rights owner needs to cooperate with competent authorities to prevent the smuggling.

If the imported products are imported legally, according to the current Intellectual Property Law and Customs Law, the IPs owner has the right to request customs authorities to watch and temporarily cease the importation, known as the border control measure, if such products have been proved to be infringing or counterfeit.

Accordingly, the IP rights owner should submit the documents attesting to its rights (certified copies of certificates of registration or other adequate documents) and the documents relevant to the goods, including a list of authorized importers, mode of importation of genuine goods, description of how to distinguish the genuine goods from infringing ones, documents on the origin of genuine goods, pictures of genuine goods, and notarized and legalized power of attorney (in case the application is filed through a local IP agent in Vietnam). Within 20 days after receiving the application, the customs office will send the applicant a notice stating whether it accepts or rejects the application. The validity term of the application and enclosed documents is one year from the date of the acceptance notified by the customs office and extendable for a further one year upon the request of the applicant. Then, the IP rights owner must re-file a new application if it would like to continue monitoring the imported goods.

From 2012-2015, the authorities handled 18,329 cases with signs of IP infringement, producing and trading counterfeit goods__Photo: Internet

However, even that the request of the IP rights owner has been accepted by the customs to take the border control measure, it is still difficult to discover and handle the counterfeit/infringing goods.

One of our clients who is a famous manufacturer in the field of chemistry materials used in water purification is a victim of counterfeit products. Although the client had already requested the customs to perform the border control measure and the infringers had been punished, they continue to import and distribute counterfeit products on the market.

It means that border control measure is not a powerful tool for preventing importation of counterfeit/infringing products due to some difficulties arising recently. Vietnam has applied the clearance automatic system (VNACCS) for importation, and it necessitates the issuance of guidelines for the border control measure because VNACCS changes in nature this measure.

Before VNACCS is applied, custom registration and custom clearance need to be performed directly by the customs agents but now they are automatically performed by VNACCS based on the lines of goods as specified by the system (green, yellow and red lines based on the risk of goods as classified by the customs in which goods in green lines will be exempted from physical inspection). Therefore, the system only checks the information provided by the importers and it could only find out the counterfeit/infringing products if the information is same/similar to the protected trademark. However, the information of trademark on the registration form is not compulsory. If an importer does not provide the trademark of goods or the trademark appearing on goods is different from the information on the registration form for importing green line goods, it is impossible to discover the counterfeit/infringing goods in this stage.

Another challenge in performing the border control measure is some loopholes in the Law on Customs and IP Law as well as the unclear regulations of the IP Law on this matter. According to the IP Law, customs authorities may decide at their own discretion to apply administrative and preventive measures such as caution or monetary fine, temporary custody of persons, infringing goods and material evidence, etc. for handling counterfeit/infringement products if they find out these goods without the request of IP right owners. However, there are not yet clear regulations for guiding this power concerning the procedure and the compensation responsibility of customs authorities in case their conclusion is wrong. In addition, the Customs Law does not regulate this power of customs authorities.

Furthermore, it is also difficult to handle infringers according to the criminal procedures because the current Penal Code does not have clear provisions on the signs of crimes related to intellectual property rights.

In order to resolve the above situation, it is required to issue detailed guidelines on the border custom measure that are suitable with the VNACCS procedure applied by customs authorities, especially with the power of customs authorities to detect, check and handle the products which are alleged to be counterfeit or infringe upon the protected trademarks or other protected IP rights in Vietnam, and on the exemption of authorities from the responsibility for all claims or requests for compensating the damage that may arise during the settlement of infringements.

In particular, the lawmakers should accelerate the issuance of the new Penal Code so that the court could impose strict punishments on the infringers.

Although enforcement of IP rights in Vietnam has seen a lot of improvement, it is still a challenge for authorities to identify, verify and handle infringements. Therefore, the law should be further changed to deal with the complicated and sophisticated development of counterfeit products.-

(*)

Hanoi Office:
Fl 18, Center Building, Hapulico Complex, 85 Vu Trong Phung Street, Thanh Xuan District, Hanoi.
Tel: (84) 4 62 62 0246 | Fax: (84) 4 66 64 0246
Hotline: 0904 340 664

HCM City Office:

5 Floor, VTP Building, No.8 Nguyen Hue Street, Ben Nghe Ward, District 1, HCM City
Tel: (84)(08) 352.08.101| Fax: (84)(08) 352.08.102
Hotline: 0907 319 888
Website: www.sblaw.vn
www.baohothuonghieu.com

Infographic: Geographical Indication in Vietnam

By

sblaw

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April 28, 2017

Infographic: Geographical Indication in Vietnam

INFOGRAPHIC: REGISTER INDUSTRIAL DESIGN IN VIETNAM

By

sblaw

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April 28, 2017

Infographic: Industrial design in vietnam

INFOGRAPHIC: PATENT REGISTRATION IN VIETNAM

By

sblaw

-

April 28, 2017

INFOGRAPHIC: REGISTER TRADEMARK IN VIETNAM

By

sblaw

-

April 28, 2017

Trademarks registration information

By

sblaw

-

February 25, 2017

Question: We are a USA company specialized in wine exportation. We would like to register a Trademark in Vietnam in order to extend our company to this market. We plan to register a logo, relating to the selling of bottles of wine.

We would like to know approximately the detailed and estimated cost for such a procedure.

Answer: Regarding your enquiries, we would like to advise you on procedure and our updated fee schedule in relation to the trademark registration proceeding in Vietnam as follows:

1. FEE SCHEDULE

1.1. Trademark information

– Trademark: Please specify

– Class: 35 – Selling of bottles of wine

1.2 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 considerationSwitch Cisco | Router Cisco | Cisco chính hãng | Máy chủ Server

1.2.1. Trademark searches (Optional)

Trademark search for 01 trademark in one class

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for conducting search 01 trademark in one class (optional)	–	100.00
2. Bank charges	20.00
Sub-total:	120.00
5% VAT:	6.00
TOTAL	126.00

In words: One hundred and twenty six US Dollars

Note: The above-quoted fees include 5% VAT of our service charge, bank charges ($US 20.00)

1.2.2. Trademark registration

Trademark registration for one trademark in one class:

Description	Official Fees (USD)	Attorney’s Fees (USD)
1. Fee for filing an application and issuing certificate forone class of goods/services within 6 items	65.00	190.00
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)	22.00	70.00
Communication cost	30.00
Bank charge:	25.00
Sub-total	402.00
5% VAT:	20.10
TOTAL	422.10

In words: Four hundred twenty two US dollars and ten cents

Note: The above-quoted fees include 5% VAT of our service charge, bank charges ($US25.00) and actual communication costs ($US30.00). In case of any office action or possible opposition which may occur during the application proceedings, an additional charge may be incurred, upon your approval.

2. Procedure and timeline

2.1. The duration of a trademark searches is around 10-15 working days.

2.2. The duration for a trademark application from mature to proceed to registration is around 14-18 months from the filing date, involving these stages (1) examination as to formality and publication on the Gazette (3-4 months); (2) examination as to substance (9-12 months) and (3) issuance of registration certificate for the registered mark (2-4 months). Kindly note that the term for registration process normally takes longer to several months in practice 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 (in e-copy only)

– An original Power of Attorney which is simply signed by the Applicant. No need notarization. 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; One original Power of Attorney can be used for filling one or more applications.

We hope the above is of your assistance. Should you have any inquiry, please do not hesitate to contact us.

Quotation for copyright registration

By

sblaw

-

February 25, 2017

Question: I am french author and would like to register copyright for story, please send me your quotation and procedure?

Answer: Regarding your enquiries, we would like to advise you on the procedure and our fee schedule in relation to the Copyright registration proceeding in Vietnam as follows:

1. FEE SCHEDULE

1.1 Information

– Type of work: Literary work (story)

1.2. Fee for filling 01 application for a literary work 220 USD.

5% VAT: 11 USD

Total: In words: 231 USD (Two hundred and thirty one US dollars).

Note: The above-quoted fees include 5% VAT

2. PROCEDURE AND TIMELINE

In Vietnam, the duration for a copyright application from mature to proceed to registration is 20 – 30 days from the filing date.

Kindly note that the term for registration process may take shorter or longer in practice due to the workload of the COV.

3. REQUIRED DOCUMENTS AND INFORMATION

– 02 Notarized copies of Certificate of Business Registration of the Owner (owner is company)

– 02 Notarized copies of the the Owner’s ID or passport (owner is individual).

– 02 copies of the author’s ID or passport

– 02 original Power of Attorney

– 02 statutory declarations of the author(s)

– 02 printings of each story (sealed by the company, N/A in case of personal owner)

– One of the following documents:

+ 02 declarations of the author (In case the author is the owner)

+ 02 assigned decision (In case the staff of the company/the owner is assigned tasks to create)

+ 02 contracts of lease of creating (In case the owner hired a third party to write)

Intellectual property services of SBLAW

By

sblaw

-

February 25, 2017

SB LAW provides the full range of intellectual property services covering patent, trademark,
industrial design, copyright and domain name, enforcement and commercial exploitation of
IP rights.

Our group of IP Lawyers and technology specialists is always willing to assist
whether you are seeking advices how to begin protecting your unique ideas or to deal
with the most complex issues in the various aspects of IP.

Our IP practice covers not only Vietnam but also other countries in all over the world, especial in Southeast Asia, where our associated offices locate. We bring to Client valuable services for patentability research, trademark, industrial design, patent registration, copyright protection, watching and investigation of IP right Infringement, assistance in negotiation and obtaining IP Right Licensing, Franchising, Technology Transfer as well as commercial exploitation of IP Right Objects.

Our major clients:

Microsoft corporation (Representative office in Vietnam), ABB Asea Brown Boveri Ltd, Plus Stationery, Plus Corporation, Daio Paper, Sagami Chain Co., Ltd, Nitori Furniture, Oppo, Baidu, Caffe Bene, Vietsovpetro, Web Intertainment Limitted (Hk), Toa Paint, Total Gas, Daesang Holdings Co., Ltd (Kr), Vstv, Vtv, Vtc, Public Joint Stock Commercial Bank (Pvcombank), Vietinbank, Mbank, Kova, May10.

Major prosecution cases in Southeast Asia

– Helping numerous clients (especial companies from China, Taiwan, Korea, German, Indonesia and Russia) to register patents and trademarks in Southeast Asia.

– Helping top 500 companies in Vietnam to register trademark in Vietnam and globally.

– Acting for a Singaporean farmer product company to handle the infringement of their registered trademark in Vietnam;

– Acting for Vietnamese Television Online Company in negotiation with Sony Music
Entertainment relating to use of music works in Vietnam;

– Helping companies from to register trademark patents in Southeast Asia.

– We are top 10 IP firms having the most trademark applications in NOIP for years.

– Helping Copyright Association of Vietnam (VIETRRO) in handling copyright
infringement in Vietnam

– Acting for one of the most famous software company to handle copyright infringement in Vietnam

Our Awards

The professional performance and services provided by SBLAW has been highly appreciated by both local and international clients.

SBLAW is proud to be awarded by ASIALAW Profiles – the world a reputable organization on ranking the leading domestic law firms in Asia Pacific. The ranking are based on the recommendations of in-house counsel at the world’s most prominent companies and financial institutions, as well as the leading lawyers, attorneys and solicitors in each legal market.
In 2012, SBLAW received honor award by The Legal 500, the most comprehensive worldwide coverage currently available on legal services providers in over 100 countries. SBLAW emerged winner among many other leading law firms in the country for our excellent quality of legal service.
In 2012, SBLAW continued to be ranked for the professional achievement and experience in finance and banking by IFRL1000 (the Guide to the World’s Leading Financial Law Firms).
In November 2012, S& BLAW had one more feather to its cap, for being selected as one of the five law firms awarded by the People’s Committee of Hanoi for the achievement in consultancy to protect the rights and benefits of State and citizens.
In 2013, Mr. Nguyen Thanh Ha – Managing Partner and Mr. Pham Duy Khuong – Executive Partner of SBLaw are ranked as Leading Lawyers in Vietnam by ASIA LAW.
In 2013, 2014, 2015 SBLAW continued to be ranked for professional achievement and experienced in finance, banking and Intellectual Property by The Legal 500
In 2016, SBLaw was upgraded to the top 2 of reputable law firms in the field of intellectual property in Vietnam by The Legal 500. In addition, Lawyer Pham Duy Khuong – Director of SBLaw is recommended as an excellent lawyer by Legal 500.

VN franchise rules under pressure to change

By

sblaw

-

January 26, 2017

At the end of the 1990s, franchise was still a strange concept to most people in Việt Nam.

There were no opportunities to enjoy or even see the products and services of the world’s well-known brands in Việt Nam.

KFC, McDonald, Starbucks and Lotteria were not familiar names for Vietnamese youth. However, this has changed.

Now, you can start a beautiful morning with friends at a Starbucks or enjoy lunch with family at a KFC or Lotteria outlet. You could also purchase the latest Nike or Adidas products as well as those of other world famous brands at stores in Việt Nam.

This change has been the result of a very effective business model – franchise. After 40 years of Đổi mới (Renewal) and more than 19 years since its entry into the World Trade Organization (WTO), Việt Nam has emerged as one of the most attractive countries for investors and franchisors, with a population of over 90 million, 65 per cent of whom are under 35 years old, and a very dynamic consumer class with a strong preference for foreign brands.

Despite the global economic slowdown, thanks to its advantageous location, population size, and consumer habits, Việt Nam is now an ideal destination for many investors as well as franchisors.

According to the Vietnamese Ministry of Industry and Trade (MoIT), around 160 franchises have entered Việt Nam so far. This is just the franchises that are required to register with MoIT before officially commencing their operation pursuant to the 2005 Commercial Law.

The dominant business sectors for franchises are food services, retail, education, and entertainment. Food and beverage franchises account for 30 per cent of the registered franchises. The primary reason for the sustained increase in franchise activities in Việt Nam is the adoption of the 2005 Commercial Law and Decree 35/2006/NĐ-CP (later amended by Decree 120/2011/NĐ-CP), which, for the first time, provided a legal framework for franchising.

Foreign franchisors are required to register their franchising activities before granting franchises in Việt Nam. If they carry out their franchise activities in the country without a certificate of franchise registration, they will face administrative sanctions, including fines ranging from VNĐ10 million to 20 million (approximately US$439-878).

The franchisors must also consider the following conditions before registering their activities: The franchise network must have been in operation for at least one year.

As regards Vietnamese sub-franchisors:

– They must have operated the franchise business for at least one year before they initiate sub-franchising.

– The goods or services that are the subject of a franchise agreement must not be on the Government’s list of banned goods and services.

If they are on the list of goods and services subject to business restrictions, a special business license must be obtained before franchising is deployed.

A franchise registration dossier must comprise:

– An introduction of the franchise business containing the information as required by Circular 09/2006/TT-BTM guiding the commercial franchising registration;

– A copy of the certificate of business registration or a legally equivalent document;

– A copy of the certificate of protection of industrial property rights in Việt Nam or in foreign countries if the franchise includes a license of industrial property rights;

– Approval from the primary franchisor to the sub-franchisee in case of a sub-franchisor;

– Other documents required by the competent authority (including the franchise agreement or form of agreement).All documents issued in a foreign language must be notarized and legalized. The Vietnamese versions of such documents must also be notarized.

According to Decree 35, the franchisor has an obligation to provide the franchisee with the information regarding the franchise system, namely a copy of a form of franchise agreement and an introduction of the franchise business, at least 15 days before signing the agreement. The franchisor must also notify the franchisee of all substantial changes in the franchise system.

In case of a master franchise, in addition to providing the aforementioned information, the secondary franchisor must also provide a proposed franchisee with the following information in writing: (a) information about the franchisor which has granted the franchise; (b) contents of the master franchise contract; and (c) the manner in which secondary franchise contracts will be dealt with in the event of termination of the master franchise contract.

If the parties select application of the law of Việt Nam, the franchise contract may contain the following main items:

i. Contents of franchising;

ii. Rights and obligations of the franchisor;

iii. Rights and obligations of the franchisee;

iv. Price and periodic franchising fee, and payment method;

v. Term of the contract; and,

vi. Extension and termination of the contract, and dispute resolution.

The franchise contract must be made in Vietnamese. In the case of a franchise from Việt Nam to overseas, the parties must agree on the language of the franchise contract. Once registered, a franchisor must report any changes in the general information about the franchisor and/or changes affecting the relevant industrial property rights (i.e., changes in Part a) to the competent authority within 30 days after the date of change.

In addition, by January 15 every year, a franchisor must send an annual report to the competent authority on the matters contained in the disclosure document.

The above regulations regarding franchise activities in Việt Nam are provided in the 2005 Commercial Law. However, such regulations were issued in 2005 and there are some defects in this law: the definition of franchising is not clear for distinguishing between a trademark licence agreement or a technology transfer agreement; the conditions on franchisee and sub-franchisee do not offer sufficient protection for the rights of the sub-franchisees.

In addition, the method and measures for controlling and checking the franchisee’s activities by the franchisor are not clear.

Furthermore, numerous changes in the legal system, such as adoption of new investment and enterprise laws, the civil code, changes in the legislative mindset of lawmakers, have occurred in order to protect and ensure the freedom of enterprises as well as actual business conditions at a time Việt Nam is deepening its international integration.

Therefore, the need to revise the said regulations should be taken into account. In fact, the drafting of a new commercial law is underway and, according to MoIT, the draft will be submitted to the Government in 2017 and publicised to collect feedback before it is submitted to the National Assembly for passage in 2018.

The franchise business in Việt Nam has developed in a stable manner thus far. With a new commercial law to be adopted soon, this business will hopefully prosper further. — SBLAW

Phạm Duy Khương , Director, SB LAW firm

Read more at http://vietnamnews.vn/economy/350237/vn-franchise-rules-under-pressure-to-change.html#xj7E5hV9joCl6iJ7.99

Counterfeiting on the Rise in Vietnam

By

sblaw

-

January 6, 2017

The Market Surveillance Agency (MSA) of the Ministry of Industry and Trade, one of the bodies enforcing intellectual property and compliance laws in Vietnamese market, has been very active in the course of 2016. Since the beginning of this year it has made nearly 150,000 inspections and found evidence of up to 88,000 violations, most of which are mislabeling, selling expired products, selling counterfeits and smuggled products (mostly unauthorized pesticides and cigarettes).

These numbers show not only activity of the MSA, but also attest the increase of illicit trade on the market, including counterfeited goods. To that end, the MSA has announced its intention to enhance coordination with other law enforcement authorities as well as the implementation of awareness-raising programs in order to fight the ever growing counterfeiting and smuggling business. One of the measures planned is increasing manpower before of the end of the year.

The authorities will have to focus their efforts because despite these increased efforts, combating counterfeiting and smuggling proves a very demanding task, and especially as such illicit importation has been on the rise in the recent period, while extensive and diverse border areas on the West and North of Vietnam are lacking personnel. In addition, the Agency has also declared that the leaders of local authorities in regions where counterfeiting and smuggling is thriving will be held accountable for absence of results in the fight against illicit trade. In this context, it is important that IP rights owners do not remain passive, and complement the authorities’ efforts by gaining a solid knowledge of the market and monitoring possible infringements of their brands.

Source VietnamBreakingNews.com

Valued Added Tax on IP Licensing in Vietnam

By

sblaw

-

January 6, 2017

Until last month, it was understood that no Intellectual Property license was subject to value added tax VAT under Vietnamese law, benefiting from an exemption based on the principle that technology transfers, being beneficial to the Vietnamese economy, were to be encouraged. This, however, has changed after the Ministry of Finance issued Official Letters No. 10453/BTC-CST and No. 15888/BTC-CST.

Under the new guidance from the Ministry, transfer of the right to use a trademark is no longer exempted from VAT, and a 5% tax rate will now apply to these transactions. The rationale behind this change lies in the understanding that trademarks licenses do not form part of agreements which should fall under the technology transfer tax exemption. Businesses have expressed their disagreement with the change, though ultimately the cost of VAT will fall on the Vietnamese customers.

Official Letters are not pieces of legislation, but simply aim to clarify how the competent bodies will apply the regulations. Accordingly, it remains to be seen whether the taxing authority will apply the same principle to types of IP licenses other to franchises or other uses related to trademarks. It is not inconceivable that similar steps be taken in some cases of copyright licensing which may not be understood as falling under the umbrella of technology transfer.

Intellectual Property Right owners and licensors are encouraged therefore to review their IP licensing contracts in Vietnam to ensure that the relevant VAT is declared correctly for each royalty payment agreements. The new guidance partly applies retroactively, so that all license fees dated after November 7th 2016 would be subject to the new added VAT. Royalties which have not been paid and filed by that date are subject to the new guidance.

Acording to lexology.com

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