In Vietnam, Rights on Marks are obtained by registration. Such rights accord the registrant either the exclusive right to use the mark to designate its goods or services or to assign and/or to license its rights to others.
2. First-to-File Principle
Vietnam applies a first-to-file principle when determining priority of rights. if two or more persons file applications to register identical or confusingly similar marks in respect of the same or similar goods or services, exclusive rights will be granted to the application first received by the NOIP.
3. Applicant
Any individual or legal entity can apply to register:
- a trade mark if it is carrying on (or intends to carry on) lawful production activities;
- a service mark if it is carrying on (or intends to carry on) lawful service activities;
- the trademark of a product it markets provided that it is carrying on commercial activities and is authorized by the product's manufacturer to register such trademarks.
- a collective mark if it is authorized by the association to do so;
- Right to apply for the registrations of trademarks is also granted to foreign applicants in accordance with the international treaties to which Vietnam is a party or on a basis of the principle of reciprocity.
4. Kind of Mark
Under the current trademark law, there are four kinds of mark, namely, Trade Mark, Service Mark, Collective Mark, Three-dimensional Mark.
5. Protectable marks
Any sign that can serve to distinguish the goods of one enterprise from those of other enterprises is capable of constituting a trademark. They may include letters, words, numerals, devices, pictures, photographs, three-dimensional signs, or any combination of these, in one or several colours.
The Vietnam current trademark law does not permit the following marks to be registered:
- Marks that are simple geometric figures, or unpronounceable, sequences of figures and/or letters, or foreign words of uncommon languages, unless these signs have been widely used and recognized;
- Generic or merely Descriptive Marks;
- Marks that are misleading or deceptive as to the origin, quality, nature or purpose of the product or service or the manufacture or supplier thereof;
- Marks representing state flag, emblem, portraits of national leaders or heroes of Vietnam and of foreign countries;
- Geographic or place names of Vietnam and of foreign countries unless a permission from the competent authority of the country is obtained.In practice, unknown geographic names or geographic names where nobody would expect the goods concerned to be manufactured may be deemed distinctive and registrable.
- Marks that are identical or confusingly similar to a registered mark or a mark for which an application with earlier priority has been filed;
- Marks that are identical or confusingly similar to a well-known mark regardless the mark is registered or not;
- Marks that are identical or confusingly similar to a protected tradename or a registered appellation of origin;
- Marks that are identical or confusingly similar to a registered industrial design or a design for which an application with earlier priority has been filed;
- Marks that are identical or confusingly similar to a copyrighted character or work;
The NOIP does also not grant registration to trademarks that are identical or confusingly similar to an invalidated mark for five years from the date of invalidation where the trademark registration is invalidated because:
- The trademark registration has expired and the trademark owner does not renew it; or
- The trademark owner applies to the NOIP to renounce its rights to the trademark registration and this application has been accepted by the NOIP; or
- The trademark registration is invalidated because the trademark owner no longer exists, or ceases its activities, and there is no successor in title.
6. Priority
Foreign applicants of countries members of the Paris Convention or Foreign applicants of countries which are not party to the Paris Convention but are domiciled in a member country or have a real and effective industrial or commercial establishment in such a country may claim, within six months, the right of priority based on the first filed application.
7. Use requirement
Evidence of use is not required at the time of filing an application, of registration and of renewal.
A grace period of 5 years for excusing non-use is provided in comply with Article 5(c) of the Paris Convention.
8. Filing requirements
Documents
15 representations of the mark if it is not a word mark
+ size is not smaller than 15x15 mm and not larger than 80x80mm;
A Notarized Power of Attorney from the Applicant, if the trademark application is filed through a trademark agent. The Power of Attorney should accompany the trademark application at the time of filing. Faxed copy is acceptable provided that the original be submitted within three months from the filing date;
A certified copy of the document attesting to the legal existence of the entity and stating its activities e.g. business certificate, certificate of incorporation, corporate nationality certificate or individual nationality certificate etc. This document must accompany the trademark application at the time of filing. Faxed copy is acceptable provided that the original be submitted within three months from the filing date;
A certified copy of the regulations concerning the use of the mark if the mark is a collective one.
A certified copy of the priority document and the sworn English translation in case the priority document not in English, if Paris Convention priority is claimed; This document can be lodged within three months from the filing date.
A certified copy of the documents evidencing the origin or prize(s) awarded, if the mark contains such one(s).
Information
- Name, address and nationality of the Applicant.
- Description of the mark: meaning, colour(s) claimed, transliteration into Roman letters, if necessary.
- List of goods/services and their international classification.
9. Examination
Trademark applications are examined first as to form and then as to substance.
To meet the formal requirements, an application must be filed on an official form containing the information and documents mentioned in paragraph (8) "Filing requirements". A trademark application may cover multiple classes of goods and/or services.
The first examination as to formal conditions must be completed within three months from the filing date.
- If the formalities are met, a notice of acceptance as to complying with the formal conditions will be issued to confirm the filing date and application number.
- If the application is rejected due to its incompliance with the formal conditions, the Applicant will have two months for amendment or correction.
After being accepted as to form, the trademark application is examined as to registrability without publication. In this phase, the NOIP determines whether the mark is available for use or whether it is in conflict of other's prior rights.
The second examination as to registrability must be completed within nine months from the date of the notice of acceptance as to form.
- A decision to grant the Certificate of Trademark Registration or a Refusal of Trade Mark Application will be issued at that time.
- Upon a favourable decision and payment of the applicable fee, the Certificate of Trademark Registration is granted and a notice of registration is published in the official Gazette of Industrial Property.
10. Disclaimer
There is no provision concerning disclaimer under the trademark law. In principle, the unregistrable part of a mark must be deleted but in practice, a disclaimer of the right to the exclusive use of that unregistrable part is accepted instead of deletion.
11. Opposition
The trademark law does not provide for any official opposition procedures. However, in practice, a true owner who discovers illegitimate application(s) by conducting a pre-application search for his own mark, may file an unofficial opposition to request the NOIP not approve the prior illegitimate application(s). The submission needs to contain the grounds for the request together with any evidences available.
As for International trademark registrations under Madrid Agreement, there are more opportunities for interested parties to take unofficial opposition action, since all such marks are published in the Gazette "Les Marques Internationales" before being accepted for protection in Vietnam.
12. Term of validity of registration
The term of validity of a registered mark is 10 years from the date of filing. This term may be renewed for successive ten-year period.
13. Protection
Protection runs from the date trademark registration is granted.
14. Renewal
Requests for renewal must be made at least 6 months prior to the current expiration date (or subject to payment of an additional fee, within 6 months after the expiration date), and be accompanied by the certificate of registration and appropriate fees.
15. Cancellation
Any time during the term of validity of a registered trademark, any person who discovers that,
- the mark has been registered in a manner contrary to the law (e.g. the mark is not registrable as a matter of law; or
- there is a prior registration for an identical or similar mark in respect of similar goods or services,
can seek to cancel such registration.
A cancellation action is submitted to the Appeal Board of NOIP.
The Vietnam current trademark law also provides the following grounds for cancellation:
- The mark has been registered at least five years and was not used in Vietnam during the five year period immediately prior to the filing of the cancellation action and the owner has no legitimate excuse for non-use. 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 will still apply to registered trademarks, the applications for which were filed before 1 July 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.
- The mark is identical or confusingly similar to a well known mark (in accordance with Article 6bis of the Paris Convention) or the mark of another which has been widely used and widely recognized in Vietnam regardless the latter is registered or not.
- The registrant ceases to exist or carry on business without there being a legal successor to the right to use the mark.
- The trademark owner has no right to apply for the registration of the mark (see paragraph (3) "Applicant").
16. Appeal
Appeals can be made upon:
- rejection of an application as to formalities;
- refusal to grant a certificate of registration; or
- cancellation of a previously registered trademark.
A petition to appeal must be filed with the National Office of Industrial Property (NOIP) within three months of the date of Notice concerning the decision of rejection, refusal or invalidation.
- The NOIP must examine and settle the matter within 30 days of receiving the petition.
If dissatisfied with the decision of the NOIP, a further appeal to the Minister of the Ministry of Science, Technology and Environment (MOSTE) can be made within three months from the date of the Notice of the decision of the NOIP, or an appeal action can be taken before the competent administrative court.
- If the petition to appeal is filed with the MOSTE, the Minister of MOSTE must issue a decision within 60 days from receiving the appeal petition. The decision of the Minister of the MOSTE is final, and no further appeal to the courts is possible.
17. Assignment
Registered trademarks can be assigned, provided that the registration is valid, and pending applications can also be assigned.
There are no provisions prohibiting assignments of trademarks without business or goodwill. In practice, assignment of a registered trademark can be made either with or without the goodwill of the business provided that it is not likely to be a source of confusion.
Trademarks can be assigned in respect of all or part of the goods or services for which they are registered. However, the law is unclear as to whether all similar trademarks owned by the same owner for the same or similar goods or services must be assigned together.
If (i) the assignee is a state-owned-entity or a joint-venture with state capital, or (ii) the assignor is a Vietnamese party and the assignee is a foreign party, the deed of assignment must be lodged with the Ministry of Science, Technology and Environment (MOSTE) for approval. After approval by MOSTE has been granted, the deed of assignment must be registered with NOIP in order for it to be enforceable.
18. Licensing
A license contract or registered user's agreement must be in writing and must be signed by the parties to the contract. Also, it must be recorded in the National Office of Industrial Property (NOIP) in accordance with the prevailing laws and on payment of the prescribed fees.
A license contract or registered user's agreement shall automatically expire from the date the relevant Certificate of registration of the trademark expires or it is finally declared invalid.
If (i) the licensee is a state-owned-entity or a joint-venture with state capital, or (ii) the licensor is a Vietnamese party and the licensee is a foreign party, the license contract must be lodged with the Ministry of Science, Technology and Environment (MOSTE) for approval. After approval by MOSTE has been granted, the license contract must be registered with NOIP in order for it to be enforceable.
19. Enforcement of trademark rights
Infringers and Infringement Actions
Any unauthorized person which,
- uses a registered trade mark in respect of the designated goods/services or the goods/services similar to the designated goods/services; or
- uses a mark which is confusingly similar to the registered trademark in respect of the designated goods/services,
will be deemed to have violated the exclusive rights of the trademark owner.
A trade mark owner can initiate either an administrative, civil action or petition for a criminal action to be brought to prevent the infringement
Informal Actions
As an initial step, informal measures may be more effective against trade mark infringement than pursuing administrative or judicial actions. Such measures might include sending warning letters and meeting with the infringers.
Many infringers are ignorant of the law and may not realize that their acts are culpable. It is difficult, particularly at the retail level, for retailers to distinguish what are counterfeits and what not. As a way to persuade infringers from discontinuing their offending actions, trademark owners or their authorized representatives can present them with a legal opinion signed by an official of the NOIP or a Vietnamese Attorney stating how their actions violate the law.
By establishing contact with the infringer on such a personal level, the trademark owner can often gain access to valuable information that may be used should more formal action be required later.
Administrative Actions
Administrative authority to enforce trade-mark matters has been vested with the Market Control Office (MCO) within the Ministry of Commerce, Department of Customs (DC) and Economic Police (EP).
Complaints are filed with the MCO, EP or where appropriate the DC in the province or city where the infringement has occurred. A complaining trademark owner must furnish (i) documentary evidence of ownership of the infringed mark and (ii) proof of infringement, including samples of both the infringing and genuine articles.
If the infringing mark is not identical to the registered mark but simply an imitation or reproduction, then the MCO, DC or EP refer the question of infringement to the NOIP to determine whether confusingly similarity exists. The NOIP is required to determine whether infringement has occurred within 1 to 3 months. If a decision is not issued, a complaint can be filed with the Ministry of Science, Technology and Environment (MOSTE).
When satisfied that an offence has been committed, officers of the local MCO or EP will search and seize counterfeits or infringing goods without notice to the infringer, or where appropriate officers of the DC will search and seize exported or imported counterfeits or infringing goods without notice to the infringer.
A counterfeiter can be liable to pay a fine of up to 1-3 times the illegal profits, or of 10% to 50 % of the value of the infringing goods. In serious cases e.g. if the counterfeiting results in toxic products, fines of 1-3 times the value of the genuine goods can be imposed, and the infringer's business license may be revoked.
Civil Actions
If a trademark owner seeks damages for infringement, it must institute a civil proceeding. Only the courts have jurisdiction to award monetary damages.
Complaints are lodged with People's High Courts of the provinces, towns or cities. Where one of the parties to the action is a foreigner, the case must be filed with the People's High Court of Hanoi or Ho Chi Minh City regardless of where the infringing activity or other parties may reside. The foreigner plaintiff can choose whether to file in Hanoi or Ho Chi Minh City. Complaints must be submitted personally or through a domestic representative in the case of foreign entities.
The complaints must be accompanied by (i) documentary evidence of the ownership of the trademark and (ii) proof of infringement, including samples of both the genuine and infringing articles.
A trademark owner may seek an injunction, damages and/or destruction of infringing products.
Courts are empowered to grant an interim or interlocutory injunction to stop the infringing activity pending determination at trial, provided the evidence in the Complaint justifies such an action.
Damages are calculated on the basis of the actual amount of the owner's loss or illegal profits made by the infringer.
It is usually takes 12 months to 18 months for a case to come to trial. Decisions of the People's High Courts are generally issued within 15 days after trial. Decisions of the High Court may be appealed to the Supreme Court, which is the highest and final court, within 15 days from the date of issuance of the decision. Decisions are usually issued by the Supreme Court within 6 months to 12 months after appeal.
Criminal Actions
A trademark owner may petition for criminal actions to be brought against an infringer pursuant to Article 167 of the Criminal Code.
Petitions can be made for reasons other than counterfeiting of products (for example, other types of infringement, or providing fake services)
The Police generally initiate investigations upon a trademark owner's formal complaint.
The trademark owner is usually required to furnish details relating to the alleged infringement, including its ownership of the infringed mark and its business interest and locations, as well as the names of the alleged infringers and the nature of the infringing act.
If sufficient evidence is found, public prosecutors can then open investigations and indict alleged infringers for crimes of infringement before the court.
Cases are brought before the People's High Court of the province, city or town.
The punishment can be ranging, from one to seven years' imprisonment if convicted of dealing with counterfeit goods, or from five years to fifteen years' imprisonment if the counterfeit goods are foods, right up to 20 years' imprisonment or even the death sentence for extremely serious crime. In addition, a counterfeiter can be liable to pay a fine of up to 10 times the value of the counterfeit goods or illegal profits.
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.
