Vietnam: Recent Developments In Vietnam Intellectual Property Laws

By Pham Vu Khanh Toan

Socialist Republic of Vietnam began to protect intellectual property in 1981, nearly six years after reunification, when it promulgated the Regulations on Innovations Inventions by Decree No. 31-CP. Subsequently, the Regulations on Trademark dealing with the registration and protection of trademarks were issued on December 21, 1982.

The promulgation of the Ordinance on Protection of Industrial Property Rights by Order No. 13-LCT/HDNN of February 11, 1989 of the President of the State Council opened a new era in the field of intellectual property law in Vietnam. The ordinance established both substantive intellectual property rights and a system for their administration and protection. Under the ordinance, the author's certificate as a form of protection of inventions no longer exists and the first--to-file rule is strictly applied to trademark applications.

On October 28, 1995 the National Assembly passed the Civil Code, which contains stipulations on industrial property (chapter II of section 6). The Civil Code, which took effect on July 11, 996, replaces all old law and regulations addressing intellectual property in Vietnam. This was the first time since 1975, the year of the reunification of Vietnam, that a legal document regulating intellectual property was issued by the highest legislative body of Vietnam.

The subordinate legislation which was passed by bodies other than the National Assembly, who have been granted power to enact such legislation by the National Assembly, includes:

1. Decree No. 63-CP providing detailed regulations and guidelines for implementing the provisions of the Civil Code on Industrial Property, was signed by the Prime Minister on October 24, 1996 and took effect on that date.

2. Circular No. 3055/TT-SHCN providing detailed guidelines on Industrial Property Application procedures promulgated by the Ministry of Science, Technology and Environment on December 31 1996, took effect on January 15 1997.

This article outlines some of the most noteworthy changes to the prior trademark law in Vietnam.

NEW PROVISIONS UNDER THE CURRENT PATENT LAW

NEWLY PATENTABLE SUBJECT-MATTER

Under the previous law, micro-organisms were not protected, but under the new law they are patentable.

UTILITY PATENTS

Under prior law, a utility solution needed only be new in Vietnam to be patentable. In practice. this kind of patent obstructed foreign technology transfer into Vietnam. This is because sometimes invention pirates successfully obtained protection for others' old technical solutions. Under new law, a utility solution is defined is as a technical solution which must be novel on a universal basis and applicable in socioeconomic areas. Inventiveness is not required. A utility solution may be a device. process or a substance.

EXAMINATION

Under prior patent law, a patent application was to be automatically examined both as to form and as to substance. The new law, however, provides a deferred examination system. Under the new law, a patent application is to be examined as to form, and on a separate request. as to substance. This means examination as to form is still automatic, while substantive examination can be deferred under the new law.

A request for examination as to substance can be submitted by the applicant or a third party within 42 months from the priority date if the application is filed for a patent for invention, or 36 months from the priority date if the application is filed for a utility patent. If no request for examination as to substance is filed within the said period. the patent application will be deemed withdrawn.

Under the prior law, patent applications were not published. If a patent was granted. the only notice of the grant together with an abstract of the invention was published. The new law, however, provides that all patent applications must be published for purpose of opposition.

The applicant may withdraw his request for claiming priority right for purposes of deferring publication of a patent application. Examination as to substance must be completed (1) within 18 months if the application is filed for an invention patent. or (2) within nine months if the application is filed for a utility patent. from ( i) the date of receiving a request for examination, if the request is filed after the date of publication of the patent application, or (ii) the date of publication of a patent application, if the request is filed before the date of publication of the patent application.

During the examination as to substance, a third party may request rejection of the patent application by submitting arguments with the relevant documents.

After the examination, the examiner will send the result to the applicant, and the applicant has two months to make any changes. If the application is rejected for not meeting the criteria for obtaining protection. the applicant has two months to reply to the examiner. If the invention is patentable, the patentee will pay publication and grant fees. The applicant may withdraw his patent application at any time during its pendency. A patent application that is withdrawn before its publication is deemed as no having been filed with the National Office of Industrial Property.

PATENT DURATION

An invention patent lasts 20 years from the filing date. Under prior patent law, an invention patent expired 15 years after the filing or priority date of the application if the Paris Convention priority is claimed. The change in patent term was made primarily for purposes of compliance with TRIPs. Duration of a utility patent is 10 years from the filing date. Under prior patent law, the patent duration was six years from the filing or priority date of the application.

TEMPORARY RIGHT OF THE APPLICANT

Within the period from the date of publication of a patent application to the grant date, the applicant is entitled to notify a third parry who has commenced to use his invention or utility solution after the date that a patent application in his name has been filed. If that person continues the use in spite of the notification, upon receipt of the letter's patent, the patentee is entitled to request such user to pay compensation equivalent to the royalty which the user as a licensee should have paid in a corresponding period of time. In the case that the patent is granted. the activity of the above-mentioned user will be deemed an infringement of the patent owner's right. Such a temporary right of the applicant was not provided under prior law.

ASSIGNMENT/INHERITANCE

Under prior patent law, only patents, but not pending patent applications, could be assigned. Under the new law, however, both patents and/or pending patent applications can be assigned. Besides, a patent can be inherited. If a patent belongs to two or more joint owners, the consent of the other joint owner is necessary for a joint owner to transfer its share to a third party.

NON-VOLUNTARY LICENCE FOR NON-WORKING OR INSUFFICIENT WORKING

Under the old law, on the request of any person made after expiration of a period of four years from the priority date of the patent application or three years from the date of the grant of the patent, whichever period expires last, the Ministry of Science, Technology and Environment may grant a non-voluntary licence for non-working or insufficient working. Under the new law, such request can made at any time during the term of validity of a patent.

NEW PROVISIONS UNDER CURRENT TRADEMARK LAW

POWER OF ATTORNEY

Under the new law, a power of attorney may be certified by any notary public. The prior trademark law required certification by a notary public in the home country of the applicant trademark law.

EXAMINATION

Trademark applications are examined both as to form and as to substance. The examination as to formalities must be completed within three months from the date on which all necessary documents have been submitted,. and the second examination as to registrability is to be completed within nine months from the date of the notice of acceptance as to formalities.

The National Office of Industrial Property provides that upon receipt of request for accelerated examination and payment of the prescribed fees, the National Office of Industrial Property may speed up the examination of a trademark application. However, the duration of the expedited examination will not be less than seven months from the date of filing.

TERM OF VALIDITY

The term of validity of a trademark registration extends for a period of 10 years from the date on which the application is filed in due form and protection runs from the date trademark registration is granted. Under prior law, the term of validity of a registered mark was 10 years from the date of filing, or the date of priority if Paris Convention priority is claimed, and protection runs from the priority date. In the past, this provision raised a question that is very difficult to answer, concerning how to protect rights in a registered trademark during the period from the priority date to the date of filing.

RENEWAL

If the registered owner files a request for renewal of his registration with a renewal fee, the registration shall be renewed. Evidence of use is generally not required at renewal of a trademark registration. However, the National Office of Industrial Property may request evidence of use to be submitted when it considers such evidence to be necessary. If it is found that the owner of a registered mark has, without legitimate reason, failed to use the mark during five consecutive years preceding the expiration date, the trademark registration shall not be renewed.

PROTECTION OF WELL-KNOWN MARKS

The new law provides a new ground for rejection of a trademark application, that a trademark application may be rejected if the mark is identical or confusingly similar to a well-known mark (in accordance with Article 6 bis of the Paris Convention) or the mark of another which has been widely used and recognized in Vietnam regardless of whether the prior mark has been registered or not.

CANCELLATION BASED ON NON-USE

A cancellation action against a registered mark may be filed if the mark has been registered for at least five years and was not used in Vietnam during the consecutive five-year period immediately prior to the filing of the cancellation action. If a trademark has not been used for more than five years, but no cancellation action against it was filed, it can become invulnerable once re-used. Under previous law, which may still apply to the registered marks, the applications for which were filed before July 1 1996, until their next renewal, a cancellation action may be filed against a registered mark if the mark was not used in Vietnam during the five-year period immediately following the registration date. Unlike the previous provisions. the new trademark law provides that only advertising for trading purposes may be considered evidence of use in a proceeding for cancellation based on non-use. Under prior regulations, any advertisements, including advertisements for the mere purpose of avoiding cancellation based on non-use can serve as evidence of use.

ASSIGNMENT

Rights in a pending trademark application may be assigned. Under prior law, rights in a pending trademark application were not assignable. Assignment of a trademark without goodwill is not permitted. Under prior regulations, a trademark could be assigned either with or without goodwill.

INHERITANCE

Rights in a registered mark may be inherited. Under prior law. it was uncertain whether inheritance of trademark rights was permitted or not.

ADMINISTRATIVE MEASURES AGAINST TRADEMARK INFRINGEMENT

The new administrative measures provided in the Decree No. 57/CP of May 31 1997 state that:

1. Counterfeiters, who produce goods bearing a trademark identical or confusingly-similar to a registered mark in respect of the designated goods without consent of the owner of the registered trademark, shall be liable to pay a fine of D2,OOO,000 to 10,000,000 (US5165 to 825).

2. Persons who sell goods bearing a trademark identical or confusingly-similar to a registered mark in respect of the designated goods without consent of the owner of the registered trademark shall be liable to pay a fine of D1,000,000 to 5.000.000 (U5585 to 412).

3. Additional penalties can include forcible compensation and confiscation of both the means of production and sale and the goods themselves.

APPELLATION OF ORIGIN

Besides protecting trade and service marks, the new law also provides for protection of appellation of origin. Appellation of origin is a sign designating the original place of a certain goods having certain characteristics and quality due to the geographical environment, including natural factors or human factors. In order to file an application of origin, the foreign applicants should submit:

1. a notarized power of attorney. Legalization is not necessary. The cop is required at filing; a fax copy is acceptable provided that the ,original is submitted within three months from the filing date; and

2. a certified copy of the certificate of the protection of the appellation of origin granted in the origin country or a document issued by a competent authority of the origin country attesting to the right of the applicant to use the appellation of origin. This is required at filing.

CONCLUSION

As can be seen above. Vietnam has actively tried to update the IP law system to ensure the country's compliance with requirements of economic developments. Vietnam IP law is currently undergoing change in line with the fast-paced development in the region. It is expected that the above improvements and amendments relating to IP matters will prove to be beneficial to the national economy, technological development, trade and investment in Vietnam. Further, it is expected that Vietnam's IP regime will continue to grow into a sophisticated system with international standards. particularly in reference to the TRIPs agreement.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.