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(Q&A) ESTABLISHMENT OF INUSTRIAL PROPERTY RIGHTS

GENERAL

Industrial property rights mean rights of organizations and individuals to inventions, industrial designs, layout-designs of semiconductor integrated circuits (“layout-designs”), trade secrets, marks, trade names, geographical indications, and trade secrets they have created or own, and the right to repression of unfair competition.

Q 1: How are industrial property rights established?

Industrial property rights for each form/object are established as follows:

Form/object Ground for establishment
Inventions, industrial designs,

layout designs, trademarks

 Established on the basis of the decision to grant a certificate of protection by the competent state agency in accordance with the registration procedures prescribed by the IP Law of Vietnam or recognized as an international registration in accordance with international treaties to which the Socialist Republic of Vietnam is a member.
Well-known marks Established on the basis of use, independent of registration procedures.
Geographical indications Established on the basis of a protection certificate issued by a competent state agency according to the registration procedure stipulated by the IP Law or under international treaties to which the Socialist Republic of Vietnam is a member.
Trade names Established on the basis of lawful use of that trade name.
Trade secrets Established on the basis of legally obtaining a trade secret and implementing the protection of that trade secret.
Rights against unfair competition Established on the basis of business competition activities.

TRADEMARKS

Q 2: What types of trademarks can be protected in Vietnam?

The current Vietnam IP Law provides for different types of trademarks, including trademarks and service marks (collectively referred to as “trademarks”), collective marks, certification marks, associated marks, well-known marks and unregistered marks.

Any sign, including letters, words, drawings, devices, three dimensional signs, or a combination thereof, represented in one or more colours or sound trademark that can be graphically presented, might be eligible for protection as a trademark.

Sound marks are a new type of mark that is allowed to be registered as trademarks in Vietnam, after the amended IP Law 2022.

A three-dimensional sign might be eligible for registration and protection as a trademark, but a specific definition of the condition of protection is still not yet available in the current Vietnam IP Law. Practically, a three-dimensional sign is accepted for protection as a “three-dimensional trademark” only when it is recognised as a widely used trademark in the market.

All rights to such trademarks are established based on statutory law rather than case law, except for well-known trademarks and those exceptional cases where signs have acquired secondary meaning through wide use for goods and services in the market.

Q 3: Can any sign be eligible for trademark protection?

No, the following signs are not protected as trademarks:

  1. Signs that are identical or similar to the extent that they cause confusion with the national flag, national emblem, national anthem of the Socialist Republic of Vietnam and those of other countries and international organizations.
  2. Signs that are identical or similar to the extent that they cause confusion with the symbols, flags, emblems, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-professional organizations, social organizations, and international organizations of Vietnam and those of international organizations, unless such use is authorized by the said agencies or organizations;
  3. Signs that are identical or similar to the extent that they cause confusion with the real name, nickname, pen name, image of leaders, national heroes, and celebrities of Vietnam and foreign countries;
  4. Signs that are identical or similar to the extent that they cause confusion with the certification marks, inspection marks, warranty marks of international organizations that such organizations have not allowed to be used, except for cases where such organizations have registered those marks as certification marks of goods and services;
  5. Signs that are misleading, cause confusion, or have the nature of deceiving consumers about the origin, function, use, quality, value, or other characteristics of goods and services;
  6. Signs that are the inherent shape of goods or must be present due to the technical characteristics of the goods;
  7. Signs that contain copies of works, unless authorized by the copyright owner of those works.
  8. Signs that consist only of color without being combined with word or figurative elements or it cannot be expressed in the form of word or figurative elements.
  9. Signs that violate social order, harm national security.

Q 4: Does a registration in black and white provide protection for all colours in Vietnam?

Currently, there are no regulations in Vietnam that provide protection for all colors under a black and white registration. Generally, applicants are advised to register marks in black and white as it offers broader protection, including protection for the mark in all colors. Additionally, using a color mark that is registered in black and white can prevent the cancellation of registration due to non-use. This is because using a trademark in a slightly modified form that does not alter its distinctive character as registered will not invalidate the registration or reduce the protection granted to the mark.

Q 5: Which edition of NICE Classification is adopted in Vietnam now? Is the wording in the “class headings” of the NICE Classification acceptable in all classes?

Vietnam has adopted the international classification of goods and services for the purposes of trademark registration. Vietnam currently adopts the 12th edition of the Nice Classification system.

Class headings or general description of goods/services is not acceptable. The goods and services under any application must be listed into specific items, preferably using the terms guided in the Nice Classification.

Q 6:  Can foreign words be registered as trademarks?

A mark can be refused for being indistinctive if it is made up solely of foreign words written in non-Latin, non-English characters such as Chinese, Japanese, Korean, etc., unless it has been widely used and recognized as a trademark in Vietnam.

Q 7: What are the requirements for a trademark registration application?

The formal and basic requirements for a trademark registration application are as follows:

  1. the application must include the full name, nationality and full address of the applicant;
  2. a specimen of the trademark must be provided, at a maximum size of 8cm x 8cm;
  3. a list of goods/services bearing the trademark must be supplied, listing each item and classification in accordance with the international classification of goods and services for the purpose of registration of a mark under the Nice Agreement (IP Vietnam adopts the 12th Edition while also issuing the same in Vietnamese); and
  4. Power of Attorney, duly signed by the applicant if the application is filed through an IP Agent.

Application and all documents filed with IP Office must be in Vietnamese.

Q 8: Is it possible to voluntarily disclaim descriptive words at the time of filing a trade mark application in Vietnam?

The laws of Vietnam do not provide any provisions for voluntarily disclaiming descriptive words while filing a trademark application. In fact, during the substantive examination stage, the applicant may receive a Notice of Intention of Grant of Certificate, in which the IP Office states to disclaim any descriptive words. If the applicant agrees with the IP Office’s disclaimer, they should proceed to pay the registration fees to obtain protection. However, if they disagree, they can respond to the IP Office’s notice.

Q 9: How long does it take to receive an examination report on a trademark application in Vietnam?

Under the IP Law of Vietnam, a trademark application must undergo 02 phases of examination, namely formality examination (in 1 month from the filing date) and substantive examination (in 9 months from the publication date), making the total time for examination of a trademark application, including publication (within 02 month from the formality acceptance date), be roughly 12 months from filing. However, in practice, the examination is often prolonged 16-18 months or even more.

Q 10: How long does it take to achieve a trademark registration in Vietnam after trademark filing?

In case the trademark is concluded to be registrable, the applicant will be invited to pay the granting fee in three (03) months from the date of notification. Under the laws, within 10 days after applicant pays fully and on time the prescribed fees and charges, the IP Office shall carry out the procedures for granting the Mark Registration Certificate. Hence, total time from filing till receiving a registration, in a smooth case, is approx. 13-14 months. However, in practice, the said timeline may be prolonged to 18-20 months.

Q 11: Is “expedited examination” available/ adopted? 

There is no regulation on the matter. In some special cases with the imperative reasons, the IP Office of Vietnam may accept fast-track trademark examination.

Q 12: Is “suspension of trademark examination” available/adopted?

Suspension of trademark examination is a new regulation added for the first time in Article 117.3 of the IP Law of Vietnam (amended on 2022). Accordingly, a trademark examination will be suspended if it falls into one of the three following cases:

  1. The applicant requests suspension of the application examination and invalidation of the cited marks because the applied-for mark is deemed to be similar to the cited marks under Article 74.2e.
  2. The applicant submits a request to suspend the application examination and requests invalidation of the cited mark(s) because the applied-for mark is deemed to be similar to the cited mark(s) that have expired for less than three years in pursuant to Article 74.2h.
  3. The applicant filed a lawsuit over the right to register an industrial property object or a trademark registered in bad faith.

Q 13: How long do we have to respond to an office action on a trademark application? Is it possible to extend the deadline to respond to the office action?

Subject of the type of office action, a different deadline will be set forth by the Vietnam IP Office.

  1. For an office action on formality examination, the applicant must submit a response within 02 months from the date of the Vietnam IP Office’s Notification.
  2. For an office action on substantive examination, the applicant is required to submit a response within 03 months from the Vietnam IP Office’s Notification.

It is possible for an applicant to request an extension of time to respond to an office action on a trademark application in Vietnam. An applicant is allowed to extend the response time once by paying any required fees. The extended time period is the same as the original response time (02 months for formality examination office action, 03 months for substantive examination office action). Any subsequent request for an extension will be evaluated on a case-by-case basis.

Q 14: How to appeal a refusal decision of trademark application in Vietnam?

After completing the substantive examination of a trademark application, if it is found not to meet the requirements for protection, the IP Office will issue a notice of its intended refusal to grant registration and provide a three-month time limit for the applicant to respond.

If no response is submitted, or the response is found unsatisfactory, the IP Office will issue the first refusal decision. The trademark applicant has the option to appeal this decision to the IP Office within 90 days of receiving or becoming aware of the refusal decision, after which the IP Office will issue a second decision.

If still unsatisfied, the concerned party can file a second appeal with the supervising body of IP Office, the Ministry of Science and Technology (“MOST”) or initiate legal proceedings at the court.

Q 15: How to file an opposition against the trademark application in Vietnam?

The amended IP Law of 2022 establishes two mechanisms for third parties to provide opinions on pending trademark applications in Vietnam:

  • third-party observation on the grant of a trademark registration and/or
  • opposition to the grant of a trademark registration.

Third party observation is a procedure that allows the public to submit opinions on trademark applications, which the examiner uses to make decision regarding the applications under examination. Third-party observation serves as a reference source for examiners during the examination process.

Opposition is an administrative procedure that enables a third party to challenge the validity of an industrial property registration application and subsequently seek the competent body to deny the grant of a certificate of trademark registration, provided the opponent offers legal grounds to substantiate his case.

The primary distinction between the two above-mentioned mechanisms is the time limit for third-party action. If you want to file an opposition to the registration of a trademark, you must file it within 5 months after the trademark application’s publication in the Industrial Property Gazette.

However, if you miss the 5-month deadline or discover that an adverse party’s trademark is in conflict with your earlier registered trademark, you may still submit your opinion to IP Office for its consideration through the “third-party observation” procedure as long as the adverse party’s mark is pending.

Q 16: Could lapsed trademark be considered as an obstacle against a later-filed mark?

A lapsed registered trademark may be an obstacle to a later-filed mark within three years of its lapse, unless it was invalidated due to non-use (within five years of its expiry due to non-renewal).

However, if a trademark lapsed after examination, it will not be cited against a later-filed similar mark.

Q 17: How to protect the well-known marks in Vietnam?

IP rights to well-known marks are established based on use, regardless of registration procedures. The IP Office of Vietnam will not accept applications for registration as well as applications for recognition of well-known marks.

In practice, competent government agencies (such as the IP Office, the Court) assess and recognize a trademark as well-known at the requests of organizations and individuals on a case-by-case basis.

Requests for the assessment of well-known trademarks may be made in the following circumstances:

  1. An organization or individual’s application for registration is rejected due to the mark falling under exclusionary factors or being confusingly similar to another mark. The organization or individual may establish rights for the mark by proving that it is well-known.
  2. Organizations and individuals may request the invalidation of a protection title or object to the granting of a registration certificate for a trademark based on a mark that is confusingly similar to a well-known mark.
  3. Organizations and individuals may request the handling of violations of industrial property rights related to well-known marks.
  4. Organizations and individuals may request the handling of unfair competition practices related to well-known marks.

Criteria for evaluating well-known marks in Vietnam:

In the past, a trademark in Vietnam could only be considered well-known if it met two requirements: first, it had to be widely known by “consumers”, and second, it had to have a widespread reputation throughout Vietnam’s territory. “Consumers” referred to the general public, not the “relevant public sector” as defined in the 2022 IP Law. However, the 2022 IP Law has amended Article 4 and Article 75 to narrow the scope of consumers and the criteria for identifying well-known marks. The new regulation defines a well-known mark as a mark widely known by relevant sectors of the public in Vietnam’s territory.

In addition, a mark’s well-known status can be assessed based on some or all of the criteria in Article 75, depending on the goods and services and relevant consumers.

  1. The number of relevant consumers who have become aware of the trademark through the purchase, use of goods or services bearing the trademark, or through advertising;
  2. The territorial scope in which the goods or services bearing the trademark have been circulated;
  3. The volume of goods sold or services provided bearing the trademark or the quantity of goods sold or services provided;
  4. The continuous use of the trademark;
  5. The widespread reputation of the goods or services bearing the trademark;
  6. The number of countries protecting the trademark;
  7. The number of countries recognizing the trademark as well-known;
  8. The transfer price, licensing price, or investment capital contribution value of the trademark.

Not all of the criteria need to be evaluated simultaneously to recognize a mark as well-known, and additional criteria beyond those listed in Article 75 may be considered.

Q 18: Can geographical indications and other signs indicating the geographical origin of a product or service be protected under the trademark?

Geographical indications that indicate the origin of a product are usually place names, but they can also be other symbols of the locality (such as symbols, maps, flags, emblems, landscapes, special buildings of the locality, etc.), or any other signs.

Place names can be current names or historical names, official names or popular names of a geographical area (determined by administrative boundaries or geographical methods).

In principle, geographical indications and other signs indicating the geographical origin of a product or service that cannot be distinguished are not eligible for trademark protection. However, these signs can still be protected under a trademark in some special cases:

  • The sign is registered as a certification mark or collective mark with the permission of the competent state agency;
  • The sign, although a place name or a symbol of the locality, does not indicate the geographical origin of the product, because: (i) It has been used as a trademark and widely recognized as indicating commercial origin (ability to distinguish), losing its meaning of describing geographical origin; or (ii) The corresponding locality cannot be the place where the product is produced.

Q 19: What is a certification trademark? Who has the right to register a certification trademark?

A certification trademark is a trademark that the owner allows other organizations or individuals to use on their goods or services to certify certain characteristics of the goods or services, such as origin, materials, manufacturing process, service delivery method, quality, accuracy, safety, or other characteristics associated with the goods or services bearing the trademark.

An organization that is responsible for controlling and certifying the quality, characteristics, origin, or other criteria related to goods or services has the right to register a certification trademark, provided that it does not produce or trade in those goods or services. In the case of geographical indications or other signs indicating the geographical origin of local specialties of Vietnam, the use of such geographical indication or geographical origin for registration must be approved in advance by the competent state authority.

Q 20. What is a collective trademark? Who has the right to register a collective trademark?

A collective trademark is a trademark used to distinguish goods or services of members of an organization who are the owners of the trademark from goods or services of organizations or individuals who are not members of that organization.

A legal entity that is established legally has the rights to register a collective trademark for its members to use according to the regulations of using the collective trademark. In the case of signs indicating the geographical origin of goods or services, the organization that has the rights to register the collective trademark is the collective organization of organizations and individuals engaged in production and business in that locality.

The above-mentioned collective organization must have at least 2 members and be established in accordance with the law. Its members must operate independently and have their own goods and services. The collective organization has the right to register a collective trademark according to current regulations, including:

  1. Cooperative unions; cooperatives under the provisions of the Cooperative Law, if the Charter specifies that members have independent production and business activities;
  2. Groups of companies under the provisions of the Enterprise Law;
  3. Associations under the provisions of the law on associations, if the Charter specifies that members of the association have independent production and business activities.

Q 21. What is special about the application for registration of geographical indications and/or collective marks compared to a application for registration of ordinaryt trademark?

In addition to the minimum documents required for a regular trademark application, the following documents are required for an application for registration of geographical indications and/or collective marks:

  1. Regulation for using the geographical indications/ collective marks;
  2. Description of the specific characteristics or quality (or specificity) of the product bearing the mark (if the registered mark is a collective mark used for a product with specific characteristics or is a geographical indication for product quality or geographical origin);
  3. Map of the geographical area (if the registered mark is a geographical indication for the geographical origin of a local specialty products, or if the collective mark or geographical indication contains a place name or other signs indicating the geographical origin of the products);
  4. Document from the provincial or centrally-governed city People’s Committee allowing the use of a place name or other signs indicating the geographical origin of a local specialty product for registration of a geographical indications/ collective marks.

Q 22:  How long does trademark protection last? Is it necessary to file any proof of use of trademark to maintain the registration?

  1. The Certificate of Trademark Registration will take effect in the whole territory of Vietnam as from the granting date until the end of ten years from the filing date, and can be renewed multiple times consecutively, each time for ten years.
  2. Although it is not mandatory, the law stipulates that the owner of a registered trademark must use it in commerce. Failure to do so may render the mark vulnerable to invalidation through a third-party’s 5-year consecutive non-use-based termination action against the mark.

In an invalidation proceeding, the burden of proof for 5-year consecutive non-use lies with the third party. If the registrant fails to provide a substantiated counterstatement with valid evidence, the mark will be deemed non-used, and its validity will be terminated from the date on which the IP Office’s decision on the invalidation of the trademark registration takes effect.

Q 23: What are the cases where the validity of the trademark registration may be terminated?

Validity of the trademark registration may be terminated wholly or partially in the following cases:

  1. The owner of trademark registration does not pay the fees for the renewal of the validity of the registration as prescribed;
  2. The trademark registration owner declares to abandon the trademark ownership;
  3. The trademark registration owner no longer exists or is no longer in business without a legal successor;
  4. The trademark is not used by the owner or the authorized user continuously for five years prior to the date of the request for termination without any legitimate reason, except where the use begins or resumes at least three months before the date of the request for termination;
  5. The trademark registration certificate owner for a collective trademark fails to control or control effectively the implementation of the collective trademark usage regulations;
  6. The trademark registration owner for a certification trademark violates the usage regulations of the certification trademark or fails to control or control effectively the implementation of the usage regulations of the certification trademark;
  7. The use of the protected trademark for goods or services by the trademark owner or authorized person causes consumers to misunderstand the nature, quality, or geographical origin of such goods or services;
  8. The protected trademark becomes a common name of the goods or services registered under such trademark.

Q 24: What are the cases where the trademark registration may be invalidated?

  1. The trademark registration shall be entirely invalidated in case the applicant registers the trademark with bad faith. The period for requesting the invalidation of the validity in this case shall be throughout the protection term.
  2. The trademark registration shall be entirely or partially invalidated if the entire or a part of the registration does not meet the provisions of this Law on registration rights, protection conditions, amendment, supplementation of applications, the principle of first filing in the following cases:
    • The applicant does not have the right to register and is not transferred the right to register the trademark;
    • The trademark does not meet the protection conditions;
    • The amendment or supplementation of the trademark application expands the scope of the trademark or changes the nature of the trademark required for registration in the application.

The period for exercising the right to request for the invalidation in these cases is five years from the date of granting the protection certificate or from the date of international trademark registration having effect in Vietnam.

  1. If the trademark registration is entirely or partially invalidated, the invalidated part or the entire protection certificate shall not have legal effect from the date of granting the certificate.

GEOGRAPHICAL INDICATIONS

Q 25: What is a geographical indication (“GI”)? What are the conditions for protecting a GI?

A geographical indication (“GI”) is a sign used to indicate the geographical origin of a product from a specific area, region, or country.

A GI is protected if it meets the following conditions:

  1. The product bearing the GI has a geographical origin from the corresponding area, region, or country of the GI;
  2. The product bearing the GI has a reputation, quality or characteristic mainly determined by the geographical conditions of the corresponding area, region, or country of the GI;
  3. Homonymous GIs are protected if they meet the general conditions for protected geographical indications and are actually used in a manner that does not mislead consumers about the geographical origin of the product bearing the GI, and ensure fair treatment between organizations and individuals producing products bearing the GI.

The following objects are not protected under the name of a GI:

  1. Names, indications that have become generic names of goods according to the perception of relevant consumers in Vietnam;
  2. Foreign GIs that are not protected in their home country, have ceased protection or are no longer in use;
  3. GIs that are identical or similar to a registered trademark, or have been filed for registration of a trademark with an earlier filing date or priority date, and using the GI would likely cause confusion about the commercial origin of the goods;
  4. GIs that create misunderstandings for consumers about the true geographical origin of the product bearing the GI.

Q 26: Who owns the rights to ownership, management, and use of GIs in Vietnam?

The owner of GIs in Vietnam is the State.

The State directly exercises the management rights over GIs or delegates the management rights to organizations representing the interests of all organizations and individuals who have been granted the right to use GIs.

The State grants the right to use GIs to organizations and individuals who produce products with GIs in the corresponding locality and bring those products to the market.

Q 27: Who owns the registration rights of GIs in Vietnam?

The registration rights of GIs in Vietnam belong to the State. The State allows organizations and individuals to produce products with GIs, collective organizations representing those organizations and individuals, or local administrative management agencies where the GIs are located to carry out the registration of GIs. Organizations and individuals who carry out the registration of GIs do not become the owners of those GIs.

Q 28. What documents are included in the GI registration dossier?

The GI registration dossier includes at least the following documents:

  1. Documents, specimens, and information identifying the GI to be protected, specifically including:
    • The name, sign indicating the GI;
    • Products bearing the GI (each GI registration application can only be registered for one GI used for one product).
  2. A description of the specific characteristics, quality, and reputation of the product bearing the GI.
  3. The corresponding geographical area map for the GI;
  4. Documents from the provincial or centrally-run city People’s Committee allowing the use of geographic names or other signs indicating the geographical origin of local specialties to register the GI;
  5. Documents proving that the GI is being protected in the country where the GI is registered, if it is a foreign GI;
  6. For homonymous GIs, explanatory documents on usage conditions and the manner of presenting the GI to ensure the ability to distinguish between the GIs.
  7. Letter of Authorization, if the application is filed through an IP Agent.

Q 29. How to determine the level of reputation, quality, and characteristics of geographical indication products?

The reputation of geographical indication products is determined by the level of consumer confidence in that product through the widespread awareness and selection of that product by consumers.

The quality and characteristics of geographical indication products are determined by one or more qualitative, quantitative, or sensory indicators of physical, chemical, and microbiological properties, which can be tested by appropriate technical means or experts.

Q 30: What are the requirements that the description of a product’s characteristics, quality, and reputation in an application for a geographical indication (GI) must meet?

The description of the characteristics/quality/reputation of the product must include the following essential information:

  1. Specific characteristics/quality of the GI product determined by the natural conditions, human factors, defined by sensory, qualitative, quantitative criteria related to physical, chemical, biological properties that can be checked by technical means or by experts according to a specific testing method; and/or
    • The reputation of the GI product determined through its wide recognition among relevant consumers, which can be verifiable; and
    • The natural conditions and human factors that contribute to the unique characteristics/quality, reputation of the GI product, including unique features in terms of meteorology, hydrology, geology, topography, ecosystem, and other natural conditions; unique features of the production skills and techniques of local producers, including traditional production processes; and
    • The organic relationship between the specific characteristics/quality, reputation of the GI product and natural conditions, human factors.
    • Information on the mechanism of self-checking the specific characteristics/quality of the product.
  2. The description of the characteristics/quality/reputation of the product must be accompanied by documents proving that the information on characteristics/quality/reputation is based on evidence and verification (testing results, research, investigation, etc.).

Q 31. How long does geographical indication protection last?

The GI registration certificate will take effect throughout the territory of Vietnam and will be valid indefinitely from the granting date.

INDUSTRIAL DESIGNS

Q 32. What is an Industrial design? What are the conditions for Patentabilty of Industrial Design?

Industrial design is the external appearance of a product or a part of a complex product, which is represented by the shape, lines, colors, or the combination thereof and visible during the use of the product or the complex product.

Industrial design is protected if it meets the following requirements: (i) novel; (ii) inventive; and (iii) Industrial applicability.

Novel

  • : An industrial design shall be considered novel if it significantly differs from other industrial designs that are already publicly disclosed through use or by means of written descriptions or in any other form, inside or outside the country, prior to the filing date or the priority date, as applicable, of the industrial design registration application.
  • Inventive: An industrial design shall be considered involving an inventive step if, based on industrial designs already publicly disclosed through use or by means of written descriptions or in any other form, inside or outside the country, before the filing date or the priority date, as applicable, of the industrial design registration application, it cannot be easily created by a person with average knowledge in the art.
  • Industrial applicability: An industrial design shall be considered susceptible of industrial application if it can be used as a model for mass manufacture of products with appearance embodying such industrial design by industrial or handicraft methods.

Q 33: What are the objects that are not protected under the Industrial design?

The following objects are not protected under the Industrial design:

  1. The external appearance of a product that is required by the technical characteristics of the product;
  2. The external appearance of civil or industrial construction works;
  3. The appearance of a product that is not visible during the use of the product.

Q 34: Who owns the registration rights of Industrial design in Vietnam?

The following organizations and individuals own the rights to register Industrial design:

  1. The author(s) who created the Industrial design through their own effort and expense.
  2. Organizations and individuals who invest in funding and material resources for the author(s) under the form of outsourcing or hiring, except for cases where the parties have other agreements or where the Industrial design is the result of scientific and technological tasks using state budget.
  3. In cases where multiple organizations or individuals together create or invest in creating Industrial design, all those organizations and individuals have the right to register, and such registration can only be performed if all of them agree.
  4. Organizations and individuals with the registration right mentioned above have the rights to transfer the registration rights to other organizations or individuals through a written contract, for inheritance or succession as provided by law, including cases where they have already submitted the registration application.

Q 35. What documents are required in the application for registration of Industrial design?

  1. A Description of Industrial Design (comprising name of Design, Field in which Design is being used, closet known Design of the same product bearing the proposed Design (if any), listing photos or drawings in order, description section shall present all special shaping features, and request for protection);
  2. Photographs/drawings of the industrial design. A set of drawings/photos normally comprising: Perspective view, Front view, Rear view, Right view, Left view, Top view, Bottom view.
  3. Power of Attorney (if submitted through an IP Agent).

Q 36: What is the timeline for obtaining an Industrial design protection in Vietnam?

  • Formality examination: 1 month from filing date;
  • Publication of application: within 2 months from the date of acceptance as to form;
  • Substantive examination: 7 months from publication date of application;
  • Granting the patent: within 01 month from the date of paying the granting fee.
  • Estimated time for obtaining industrial design patent: 10-12 months;
  • The deadline for submitting the priority document(s) is 3 months from the filing date.

Q 37: Time limit for oppositions against the Industrial design applications in Vietnam?

Time limit for the opposition against an industrial design application will be just available within 04 months as of its publication in the Industrial Property Gazette.

If the interested party fails to file the Opposition in due time, he is still able to submit his written opinion to bring facts to the IP Office by a so-called “Third party observation”/ ”Observations” procedure in respect of the registrability of an application. There is still no time limit for the observations provided that the Application has not been registered or finally refused. The opinions will be treated just as a referential source for the IP Office’s examination. Therefore, the person who submitted the written opinions is not in the position of an opposing party who may receive any official responses/update on the Application examination result of the IP Office.

Q 38. Is multiple industrial design application permitted?

In Vietnam, a multiple industrial design application is permitted under two circumstances: (i) some embodiments (variants) of design or (ii) designs of products in a set of products to be used together or to perform a general purpose.

The embodiments or designs of products in a set of products filed within a single application must share a single general inventive concept and should not have significant differences.

Q 39. How long does Industrial design protection last?

A patent for Industrial design will take effect in the whole territory of Vietnam as from the granting date until the expiry of 05 years counting from the filing date and it is renewable for 2 times, each for every 05 years.

PATENTS/ UTILITY MODELS

Q 40. What is an Invention? What are the conditions for protection of an Invention?

An Invention is a technical solution in the form of a product or process that solves a specific problem by applying natural laws.

An invention shall be protected by mode of Patent when it satisfies the following conditions:

  • Novel;
  • Inventive;
  • Industrial Applicability.

Unless it is a common knowledge, an invention shall be protected by mode of Utility Model when it satisfies the following conditions:

  • Novel;
  • Industrial Applicability.

Novel: An invention is considered novel if it does not fall into one of the following cases:

  • Being publicly disclosed in the form of use, written description, or any other form inside or outside the country before the filing date of a patent application or before the priority date in case a patent application claims priority right.
  • Being disclosed in another patent application having an earlier filing date or priority date but published on or after the filing date, or priority date of that patent application.

Inventive (not applicable to utility models): An invention is considered inventive if, in relation to technical solutions already disclosed to the public by use, written description, or any other means inside or outside Vietnam prior to the date of filing, or the priority date where priority is claimed, of the patent application, it represents an inventive step that cannot be easily accomplished by a person skilled in the art.

Industrial applicability: An invention is considered to have industrial application if it can be used in mass production or manufacturing of the product, or if the procedure that is the subject of the invention can be repeated to produce consistent results.

Q 41: What can not be Patentable?

  1. Scientific discoveries or theories, mathematical methods;
  2. Chemes, plans, rules and methods for performing mental acts, training domestic animals, playing games and doing business; computer programs;
  3. Presentations of information;
  4. Solutions of aesthetic characteristics only;
  5. Plant varieties, animal breeds;
  6. Processes of plant or animal production that are principally of a biological nature, other than microbiological processes; and
  7. Human and animal disease prevention methods, diagnostic and treatment methods.

Q 42: Who has the right to register the inventions?

The following organizations and individuals own the rights to register the Inventions:

  1. The author who creates the invention with their own effort and expense.
  2. Organizations and individuals who invest funds and material resources for the author under the form of employment, hiring, or managing genetic resources, providing genetic resources, traditional knowledge about genetic resources under contracts for access to genetic resources and benefit-sharing, except in cases where the parties have agreed otherwise or the invention is the result of scientific and technological tasks using state budget funds.
  3. In the case where many organizations and individuals jointly create or invest in creating the invention, all of them have the right to register and the registration can only be carried out if all of them agree.

The organizations and individuals mentioned above have the right to transfer the registration right to other organizations and individuals under a written contract, to inherit or be inherited according to the provisions of the law, including cases where the registration application has been submitted.

Q 43: What are the requirements for a Patent application?

  1. Patent specifications: including Description, Claims, and Drawings (if any);
    • The Description must fully and clearly present the nature of the invention according to the following contents: Title of invention; Field of use of the invention; Technical state of the field of use of the invention; Technical essence of the invention; Brief description of accompanying drawings (if any); Detailed description of the implementation options of the invention;, Examples of implementing the invention; The benefits (effectiveness) that can be achieved.
  2. Claims: separated into a separate page after the Description. Claims are used to determine the scope of industrial property rights for the invention. Claims must be presented concisely, clearly, and suitable for the Description and Drawings, in which the new signs of the claimed object must be clarified.
  3. Drawings, diagrams (if any): separated into a separate page.
  4. Abstracts: not exceeding 150 words and must be separated into a separate page.
  5. Power of Attorney (if filed through an IP Agent).

Q 44: What is the timeline for obtaining a Patent in Vietnam?

  • Within one month from the filing date, patent applications will be examined for the formality.
  • Accepted applications will be published for opposition purposes eithe r within 19 months from the priority date (or filing date, if no priority is claimed) or within two months from the date of acceptance as to form, whichever is later. PCT-derived applications will be published within two months from the date of acceptance as to form.
  • Substantive examination will be conducted within 18 months from the date of publication of the application or the filing date of the Request for Substantive Examination, whichever is later.
  • If the application requires re-examination or re-consideration, the time limit for such examination will be two thirds of the initial examination period.
  • For national applications, the estimated time frame for obtaining a patent in smooth cases is around 36-42 months from the priority date, while for PCT-derived applications, it is approximately 22-30 months from the due date of entry into the national phase.
  • PCT applications have a duration of 31 months from the priority date or the international filing date (if no priority is claimed) to enter the Vietnam national phase.

Q 45: Time limit for opposition against the Patent application in Vietnam?

There will be a time limit for the opposition, namely, an opposition against a patent application will be available within 09 months as of its publication date.

If the interested party fails to file the Opposition in due time, he is still able to submit his written opinion to bring facts to the Office by a so-called “Third party observation”/”Observations” procedure in respect of the registrability of an Application. There is still no time limit for the Observations provided that the Application has not been registered or finally refused. The opinions will be treated just as a referential source for the IP Office’s examination. Therefore, the person submitted the written opinions is not in the position of an opposing party who may receive any official responses/update on the Application examination result of the IP Office.

Q 46. How long does Patent/ Utility Model protection last?

Patents are valid for 20 years from the filing date, while Utility Models have a term of 10 years from the filing date. They will take effect throughout the territory of Vietnam.

Q 47. What are the cases where the validity of the patent may be terminated?

The validity of patent shall be terminated in Vietnam in the following cases:

  • The owner fails to pay the annuities;
  • The owner declares relinquishment of the industrial property rights;
  • The owner no longer exists (due to personal death, business dissolution, or bankruptcy) and does not have a lawful heir;
  • The patent’s protection period of 20 years has expired.

Q48. What are the cases where the validity of patent may be invalidated?

In Vietnam, the validity of patentmay be invalidated in the following cases:

  • The application is filed against regulations on security control. Wherein, Inventions in technical fields that affect national defense and security, created in Vietnam and the registration of which is the right of a Vietnamese citizen who resides in Vietnam or an organization established under Vietnam’s Law may only be filed for invention registration overseas if the invention registration has been filed in Vietnam in order to undergo security control.
  • The invention is directly created from a genetic resource or traditional knowledge about a genetic resource, but the registration application does not disclose or accurately disclose the origin of the genetic resource or traditional knowledge about the genetic resource.

LAYOUT DESIGNS

Q 49: What is layout-designs? Conditions of protection for layout-designs?

Layout-design of semiconductor integrated circuit (“layout-design”) means a three-dimensional disposition of circuit elements and their interconnections in a semiconductor integrated circuit.

The design layout is protected if it meets the following conditions: (i) Originality, and (ii) Commercial novelty.

Q 50: Originality of layout-designs?

  1. A layout-design shall be considered original if it satisfies the following conditions:
    • Being result of its author’s creative labor;
    • Having not been widely known among creators of layout-designs or manufacturers of semiconductor integrated circuits at the time of its creation.
  2. A layout-design that is a combination of elements and common interconnections shall be considered to be original only if such combination, taken as a whole, is original according to the provisions of section an above-mentioned.

Q 51: Commercial novelty of layout-designs?

  1. A layout-design shall be considered commercially novel if it has not yet been commercially exploited anywhere in the world prior to the filing date of the registration application.
  2. A layout-design shall not be considered having lost its commercial novelty if the layout-design registration application is filed within 2 years from the date it was commercially exploited for the first time anywhere in the world by the person who has the right to register it or his/her licensee.
  3. Commercial exploitation of a layout-design mentioned in section b above-mentioned means any act of public distribution for commercial purposes of a semiconductor integrated circuit produced by incorporation of such layout-design, or a commodity containing such semiconductor integrated circuit.

Q 52: What are the objects that are ineligible for protection as layout-designs?

The following objects are not protected as layout-designs:

  • Principles, processes, systems, methods performed by semiconductor integrated circuits;
  • Information, software contained in semiconductor integrated circuits.

Q 53: Who has the right to register layout-designs?

  1. The organizations and individuals who have the rights to register layout-designs include:
    • The author who creates the layout-designs with their own effort and cost.
    • Organizations and individuals who invest in funds and material means for the author under the form of commission, contract or in case the layout-designs is a result of scientific and technological tasks using the state budget.
  2. In the case of multiple organizations or individuals jointly creating or investing in the creation of the layout-designs, all of these organizations and individuals have the right to register, and the registration can only be done if all of them agree.
  3. The above-mentioned organizations and individuals have the rights to transfer the registration right to other organizations and individuals under a written contract, for inheritance or succession as prescribed by law, even if they have already submitted the registration application.

Q 54: How long does layout-designs protection last?

The certificate of registration for a layout-design is valid from the date of issuance and expires on the earliest date of the following:

  • Ten years after the date of application;
  • Ten years after the date the layout-design is first commercially exploited anywhere in the world by the person who has the rights to register or the person authorized by that person;
  • Fifteen years after the date the layout-design was created.

TRADE NAMES

Q 55: What is a trademark name? What are the protection conditions for a trademark name?

A trademark name is the name used by an organization or individual in business activities to distinguish that business entity with others in the same industry and geographical area.

A trademark name is protected if it has the ability to distinguish the business entity using that trademark name from others in the same industry and geographical area.

Q 56: Which entities are not protected under the trade name?

The following entities are not protected under the trade name: Names of state agencies, political organizations, socio-political organizations, socio-political-professional organizations, social organizations, socio-professional organizations, or other entities unrelated to business activities are not protected under the trade name.

Q 57: Please distinguish between Trademark and Trade name?

Trademark and Trade name are two different objects of industrial property rights. These two objects can be distinguished based on the following key differences:

Criteria Trademark Trade name
Concept A sign used to distinguish goods or services of different organizations or individuals. The name used by an organization or individual in business activities to distinguish their business entity from others in the same field and area of business.
Funtion To distinguish goods or services. To distinguish their business entity from others in the same field and area of business.
Signs It is a visible sign in the form of letters, words, drawings, images, three-dimensional shapes, or a combination thereof, expressed in one or more colors or in graphic form as sound marks. It is only a sign consisting of linguistic elements (a collection of letters, pronounceable and meaningful). It includes two components: description (briefly describing the type of business) and differentiation (distinguishing this business from other businesses).
Basis for arising the rights Established on the basis of the decision to grant a certificate of protection by the competent state agency in accordance with the registration procedures prescribed by the IP Law or recognized as an international registration in accordance with international treaties to which the Socialist Republic of Vietnam is a member. Established on the basis of lawful use.
Period of protection 10 years from the date of application, it can be extended multiple times in succession, each time for 10 years. It is protected as long as the owner continues to operate the production and business under that trade name.
Scope of protection throughout the territory of Vietnam. The protection is within the business sector and geographical area of operation.
Ability to transfer rights. It can be assigned the ownership rights or transferred the rights to use. The rights to use cannot be transferred and the right to ownership can only be transferred along with the transfer of the entire business and commercial activities carried out under that trade name.

TRADE SECRETS

Q 57. What is a trade secret? What are the conditions for protecting trade secrets?

Trade secret is information obtained from financial investment, intellectual property, not disclosed and capable of being used in business.

Trade secrets are protected if they meet the following conditions:

  1. It is not common knowledge and is not easily accessible;
  2. When used in business, it will give the holder of the trade secret an advantage over those who do not hold or use that trade secret;
  3. The owner is able to maintain the secrecy of the trade secret by necessary measures to prevent the trade secret from being disclosed or easily accessed.

Q 58. What are the objects that are ineligible for protection as trade secrets?

The following secrets are not protected under the trade secrets:

  1. Secrets about personal identity;
  2. Secrets about state management;
  3. Secrets about national defense, security;
  4. Other secret information unrelated to business.