A trademark’s degree of registrability or its ability to sustain a suit or enforce a…
Vietnam became a member of the TRIPS agreement on January 11th, 2007. Vietnam has a commendable intellectual property (IP) framework which includes several multilateral agreements and other relevant bilateral trade agreements. Having regard to the pace and growth of local and global economy, Vietnam enacted the Law on Intellectual Property Rights in 2005. The law provides protection to major IP rights in Vietnam: industrial property rights which include Patents, Design and Trade Marks; Copyright and rights in plant varieties. In addition to Intellectual Property Law of 2005, there exist other laws that govern other issues related to IPR, such as the 2004 Law on Competition and the 2005 Civil Code, along with precedents, circulars and notifications by respective authorities guiding IPR implementation in Vietnam.
INTELLECTUAL PROPERTY LAW, 2005
TRADE MARK FILING PROCEDURE:
Step 1: Filing:
- Who may apply: Article 87 and 89:
- Foreign nationals residing permanently
- Foreign organizations having a production or trading establishment
- Non-resident foreign nationals or organizations not having a production or trading establishment shall apply through a lawful representative.
- Documents required: Article 105:
- .Documents, samples, information identifying the mark claimed for protection in a mark registration application shall include:
- a) Samples of the mark and list of goods or services bearing the mark;
- b) Rules on using collective mark or Rules on using certification mark.
- Description of sample in order to clarify its elements and meaning.
- Filing Date: Article 108:
- All applications shall be received by the State administrative authority.
- The filing date shall be the one on which the application is received by the state administrative authority.
- First to file: Article 90:
- Where two or more applications are filed by several people to register the marks identical with or confusingly similar to each other, in respect of identical or similar goods or services, protection may only be granted to the valid application with the earliest date of priority or filing date among the applications that satisfy all the requirements.
- Filing fees:
- Fee for application filed in paper form without digital database of the whole content of the application: 180 thousand VND
- Fee for application filed in paper form with digital database of the whole content of the application: 150 thousand VND
- Fee for application filed online: 100 thousand VND
- Additional fee for each product/service in excess of six: 30 thousand VND.
Step 2: Examination:
- The application shall be examined within 1 month from the filing date (Article 119).
- Formal Examination: Article 109:
- To verify the formal validity of the application, an examination process shall be conducted.
- Invalidity in the following circumstances:
- The applicant does not fulfil the requirements of formality;
- The subject matter of the application is not eligible for protection;
- The applicant does not have the right to registration;
- The application was filed in contrary to the mode of filing;
- The applicant fails to pay the fees and charges.
Step 3: Acceptance/ Refusal:
- The application for registration may be accepted with or without amendments.
- Until the notice of refusal by the State administrative authority, the applicant shall have the following rights:
- To make amendment or supplement to the application;
- To divide the application;
- To request for recording changes in name or address of the applicant;
- To request for recording changes in the applicant as a result of assignment under the contract, as a result of inheritance, bequest, or under a decision of an authority;
- Any amendment or supplement to an industrial property registration application must not expand the scope of the subject matter disclosed or specified in the application and must not change the substance of the subject matter claimed for registration in the application and shall ensure the unity of the application.
- Fee for amending applications, including for request of supplement, separation, assignment, change (per each amendment/ application): 120 thousand VND.
- Refusal: Article 117:
Refusal to register an application may be on the following grounds:
- The subject matter claimed in the application does not fulfil the protection requirements;
- The application satisfies all the conditions for the issue of a protection title but is not the application with the earliest filing date or priority date as in the case referred to in Article 90.1 of this Law.
- The application falls within the cases referred to in Article 90.1 of this Law but a consensus of all the applicants is not reached.
- The State administrative authority shall serve a notice of an intended refusal to grant a Protection Title, in which the reasons are clearly stated with a set time limit for the applicant to oppose to such intended refusal.
- The State administrative authority shall serve a notice of the refusal to grant a Protection Title if the applicant has no objection or has unjustifiable objection to such intended refusal.
Step 4: Publication:
- Article 110: An industrial property registration application which has been accepted as being valid by the State administrative authority shall be published in the Industrial Property Official Gazette.
- Fee for publication of application, including application for amendment, supplement, separation, assignment (each application): 120 VND.
- The application for registration shall be examined as to its substance within 6 months from the date of its publication.
- Charge for substantive examination of application (for each group of six products/services) – without information searching charge: 300 thousand VND.
Step 5: Protection Title:
- Article 93 stipulates the validity of the protection titles:
- It is valid throughout the territory of Vietnam.
- The registration of marks shall be valid up to 10 years from the date of filing. Their validity commences on the date of grant of protection.
- It can be renewed indefinitely for consecutive terms of 10 years.
- Rights accruing after registration: Article 123:
- To use or permit others to use the industrial property object in accordance with Article 124 and Chapter X of the law (Transfer of rights: Assignment and Licensing):
- Affixing the protected mark to goods, packages of goods, means of business or supplying services and communicating papers in business activities;
- Circulating, or offering, advertising, storing for sale of, goods bearing the protected mark;
- Importing goods or services bearing the protected mark.
- The use of a trade name means the conduct of any acts for commercial purposes by using it to name oneself in business activities, expressing it in transaction documents, shop-signs, products, goods, and packages of goods and means of service and advertisements.
- To prohibit others from using the industrial property object in accordance with Article 125 (Right to prohibit others from using industrial property objects);
- To dispose of the industrial property object in accordance with Chapter X of this Law (Transfer of rights: Assignment and Licensing).
- Fee for granting a Certificate for trademark registration: 120 thousand VND.
FEW IMPORTANT PROVISIONS PERTAINING TO TRADE MARK:
Article 4: Interpretation of terminologies:
- Trademark is any sign used to distinguish goods or services of different organizations and individuals.
- Trade name is a designation of an organization or individual used in business to distinguish the business entity bearing such designation from other business entities acting in the same field and area of business. The area of business stipulated in this paragraph shall be the geographical area where business entity has business partners, clients or reputation.
PART III of the law provides industrial property rights.
Section 4 dictates the protection requirements for marks. The concerned provisions are as under:
Article 72. General requirements for marks eligible for protection:
This Article stipulates the basic prerequisites of a mark to be able to seek protection:
A mark shall be eligible for protection if it meets the following conditions:
- Visible sign – form – letters, words, pictures, figures – including three-dimensional figures or a combination thereof, represented in one or more colors;
- Capable of distinguishing goods or services of the mark owner from those of others.
Article 73. Signs not protected as marks:
This Article provides for the exceptions. It states that the following signs shall not be protected as marks:
- Signs identical with or confusingly similar to the national flags, national emblems;
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviations, full names of State agencies, political organizations, socio-political organizations, socio-political professional organizations, social organizations or socio-professional organizations of Vietnam or international organizations, unless permitted by such agencies or organizations;
- Signs identical with or confusingly similar to real names, alias, pen names or images of leaders, national heroes or famous persons of Vietnam or foreign countries;
- Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations which require that their signs must not be used, except where such seals are registered as certification marks by those organizations;
- Signs liable to mislead, confuse or deceive consumers as to the origin, functional parameters, intended purposes, quality, value or other characteristics of the goods or services.
Article 74. Distinctiveness of marks:
The most important characteristic of a mark is its distinctiveness or uniqueness. The IP law of Vietnam has one whole Article dedicated to the meaning of the term, and its limitations. Since the exceptions are clearly stated, no chance is left to vagueness or ambiguity.
- A mark shall be considered as distinctive if it consists of one or several easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and is not those signs provided for in paragraph 2 of this Article.
- A mark shall not be considered as distinctive if it is signs falling under one of the following cases:
a) Simple devices and geometric figures; numerals, letters, or words of uncommon languages, except for signs having been widely used and recognized as a mark;
b) Signs, symbols, pictures or common names in any language of goods or services that have been widely and often used and are common knowledge;
c) Signs indicating the time, place, method of production, kind, quantity, quality, property, composition, intended purpose, value or other characteristics, which is descriptive of the goods or services, except for signs having acquired distinctiveness through use before the filing of mark registration applications;
d) Signs describing the legal status and activity field of businesses;
dd) Signs indicating the geographical origin of the goods or services, except for signs having been widely used and recognized as a mark or signs registered as collective marks or certification marks as provided for in this Law;
e) Signs not being integrated signs which are identical with or confusingly similar to a registered mark in respect of identical or similar goods or services on the basis of a registration application having earlier filing date or earlier priority date, as applicable including applications filed under international treaties to which the Socialist Republic of Vietnam is party;
g) Signs identical with or confusingly similar to another person’s mark having been widely used and recognized in respect of the similar or identical goods/services as before the filing date or the date of priority, as the case may be;
h) Signs identical with or confusingly similar to another person’s mark already registered in respect of identical or similar goods or services the Mark registration Certificate of which has been terminated for no more than 5 years, except where the ground for such termination is non-use of the mark as provided for in subparagraph d paragraph 1 Article 95 of this Law;
i) Signs identical with or confusingly similar to another registered person’s mark recognized as well-known in respect of the goods or services that are identical with or similar to those bearing the well-known mark; or in respect of dissimilar goods/services if the use of such marks may prejudice the distinctiveness of the well-known mark or the registration of such signs is aimed at taking advantage of goodwill of the well-known mark;
k) Signs identical with or similar to another person’s trade name having been used if the use of such signs is likely to cause confusion to consumers as to the source of goods or services;
l) Signs identical with or similar to a geographical indication being protected if the use of such signs is likely to cause mislead consumers as to the geographical origin of goods;
m) Signs identical with or containing geographical indications or being translated from the meaning or transcription of the geographical indication being protected with respect to wines or spirits if such signs have been registered for use with respect to wines and spirits not originating from the geographical area bearing such geographical indication;
n) Signs identical with or insignificantly different from another person’s industrial design having been protected on the basis of an industrial design registration application with filing date or priority date earlier than those of the mark registration application.
Section 5: This section stipulates the protection requirements for trade names:
Article 76. General requirements for trade names eligible for protection
A trade name shall be eligible for protection if it is capable of distinguishing the business entity bearing such trade name from other business entities acting in the same field and locality of business.
Article 77. Subject matters not protected as trade names
Designations of State agencies, political organizations, socio-political organizations, social organizations, socio-professional organizations or those entities who are not engaged in business activities shall not be protected as trade names.
Article 78. Distinctiveness of trade names
Similar to marks, conditions for distinctiveness have been laid down for trade names as well. A trade name shall be considered as distinctiveness if it meets the following conditions:
- To consist of a proper name, except where it has been widely known as a result of use;
- Not to be identical with or confusingly similar to a trade name having been used earlier by another person in the same field and locality of business;
- Not to be identical with or confusingly similar to another’s mark or a geographical indication having been protected before the date it is used.