The Paris Convention for the Protection of Industrial Property;
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
The Madrid Agreement Concerning the International Registration of Marks;
The Agreement on Trade-Related Aspects of Intellectual Property Rights;
The Law on Intellectual Property of 2005, as amended in 2009;
The Penal Code of 2015, as revised in 2017; and
The Civil Code of 2015.
Answer ... In accordance with the first-to-file principle, Vietnam sets out in Article 6 of the IP Law that trademark rights shall be generated and established only on the basis of:
- a decision of the competent state body to grant a protection title or;
- the recognition of international registration pursuant to an international treaty to which Vietnam is a signatory.
Thus, the rights afforded to a mark by a particular registration certificate will establish the scope of protection of that mark enjoyed by the registrant.
However, in the case of a well-known mark, IP rights shall be established based on use, without any need for registration. Similarly, according to international practices and norms, the IP rights in a trade name are established based on its lawful use in commerce without registration.
Regardless of Vietnam’s adoption of the first to file principle, IP rights over unregistered marks, trade names or business indications – namely trade dress, slogans, packaging and so on – may in limited cases may be protected and enforced in Vietnam as though they had been registered in the form of a trademark or industrial design. These exceptional provisions aim to comply with the Paris Convention provisions on preventing IP-related acts of unfair competition.
The burden of proving that a mark or trade name is well known, or that an act of unfair competition in relation to the same has occurred, rests with the holder of the mark or name.
Decree 103/2006/ND-CP of 22 September 2006 as revised by Decree 122/2010/ND-CP detailing and guiding the Implementation of a number of articles of the IP Law (Decree 103, as revised);
Decree 105/2006/ND-CP of 22 September 2006 as revised by Decree 119/2010/ND-CP detailing and guiding the Implementation of a number of articles of the IP Law with respect to protection of industrial property rights (Decree 105, as revised); and
Circular 01/2007/TT-BKHCN of 14 February 2007, as revised latest by Circular 06/2016/TT-BKHCN of 30 June 2016 guiding the implementation of Decree 103, as revised (Circular 01, as revised).