Intellectual Property Rights

Managing and protecting intellectual property has become increasingly complex for global companies, which often have huge IP portfolios and operations in multiple jurisdictions with varied IP laws and levels of enforcement. Rapid technological advancements have enabled infringers to become more sophisticated, and the rise of intellectual property as a main driver of mergers and acquisitions has made developing strategies to protect these assets even more important.

With expertise in the luxury and fashion, fast moving consumer goods, technology, media and entertainment, manufacturing and healthcare industries, we advise clients on brand management, brand enforcement, copyright, IP litigation, trade secrets, IP transactions, IP advisory. Based on our long experience in the field, we approach IP management as a strategic issue and have developed the people, processes and technologies to serve our clients.

We always wish to bring about all-sided perspectives to have a good property management including:

Overall IP portfolio asset management

  • Brand protection strategies, brand enforcement, brand development search and clearance
  • Comparative advertising
  • Counseling on establishing, protecting, and capitalising on non-registrable IPR
  • Exploitation rights, regionally and globally
  • Anti-counterfeiting and other enforcement programs
  • Internet IPR disputes: domain names, cybersquatting, linking, framing, wall papering, mousetrapping, metatags and keyword programmes
  • IP audits
  • IP due diligence
  • Licensing, franchising and other transactional intellectual property
  • Registration strategies for trademarks, patents and designs
  • Search and investigation reports, developing global and filing strategies
  • Technical assistance and technology transfer agreements; trade practices and unfair competition law
  • Value added advice on valuation, technical assessment, licensing, royalty recovery, tax strategies

Entertainment & media

  • Endorsements and sponsorships
  • Management representation agreements
  • Merchandising and publishing licences

Music & theatre

  • Record distribution agreements
  • Talent engagements agreements
  • Tax and financing

Technology & telecommunications

  • Competition & regulatory
  • Information technology procurement & regulatory
  • Telecommunications infrastructure

Administrative enforcement in Vietnam

  • Work with competent  to provide solutions to IP enforcement
  • Manage unfair competition/passing off successes in different product areas and industries

Border enforcement in Vietnam

  • Use of import and export intelligence
  • Assist clients in recordal of rights with Customs in Vietnam
  • Liaise with Customs and alerts of counterfeits in Vietnam
  • Assist clients to confirm detained goods are counterfeits in Vietnam

Civil prosecutions in Vietnam

  • Assist in pre-trial investigations in Vietnam
  • Obtaining injunctions and interim measures to preserve assets from moving out of the jurisdictions
  • Advice on forum shopping
  • Coordinate with attorneys in different jurisdictions to pursue civil prosecutions and obtaining injunctions against infringers on a global scale
  • Thorough legal procedures and investigations to trace the sources of infringement worldwide

KEY CONTACT

Pham Thi Thoa

Senior Partner

Phone: +84918950066
Email: thoa.pham@apolatlegal.com

RELATED ARTICLES

[Legal Updates] Letter of quick legal updates 202010

1. The Government has just issued Decree No. 122/2020/ND-CP dated October 15th, 2020 regulating on coordinating and linking up procedures for registration of establishment of enterprises, branches and representative offices, report on the use of employees, issue identification numbers of units participating in social insurance, and register to use corporate invoices 

On October 15th, 2020, the Government has just issued Decree No. 122/2020/ND-CP regulating procedures on coordinating and linking up for registration of establishment of enterprises, branches and representative offices, report on the use of employees, issue identification numbers of units participating in social insurance, and register to use corporate invoices.

This Decree applied to enterprise founders, enterprises registered for the operation of branches, representative offices, provincial business registration authority, labor state management agencies, social insurance agencies, tax authorities.

The business registration authority is the focal point agency to receive dossiers and return results of the procedures specified in this Decree. Relevant authorities coordinate and interconnect procedures through connection and sharing of digital data among information technology systems.

The Decree also issues and applies new application forms in business registration procedures, and notices the registration of branches and representative offices from the effective date.

Specifically, the procedures for interconnection between relevant authorities are as follows:

(i) The business registration authority and social insurance agencies:

After the issuance of establishment registration or there is a change in enterprise registration contents, branches, representative offices, the business registration authority shall share information about the Enterprise Registration Certificate and the Certificate of Branch/Representative Office Registration and information about the expected total number of employees, business lines and payment methods of social insurance to the social insurance agencies.

Enterpris code, Branch/Representative Office code are used as the code of units participating in social insurance.

(ii) The business registration authority and labor state management agencies:

The business registration authority shares information about full name, enterprise code, address, legal representative, the head of the branch/representative office, main business line and total number of employees expected with The Labour, War Invalids and Social Affairs Office or Department of Labour, War Invalids and Social Affairs (for enterprises in industrial park).

(iii) The business registration authority and tax authorities:

If the application for registration of establishment of the enterprise, branch or representative office is valid, the business registration authority shall share information about registration information of enterprise establishment and registration information to use invoices with the tax authorities.

Tax authorities share information about Enterprise Code, Branch/Representative Office codes and and decentralization of directly tax management authorities with the business registration authority.

Based on the information returned by the tax authorities, the business registration authority shall issue a Certificate Enterpries, branches, representative offices and Notify the managing tax authority to the enterprise.

(iv) Labor state management agencies and social insurance agencies:

Vietnam Social Security shares information on changes and increases and decreases in employees of enterprises, branches and representative offices of the Ministry of Labor, War Invalids and Social Affairs through the National Public Service Portal.

Decree No. 122/2020/ND-CP comes into effect on October 15th, 2020. 

2. Goverment has just issued Decree No. 119/2020/ND-CP dated October 7th, 2020 regulating on sanctioning administrative violations in press activities, publishing activities 

On October 7th, 2020, the Government issued Decree No. 119/2020ND-CP, regulating on administrative sanctions in press activities, publishing activities.

This Decree specifies regulated entities, administrative violations, penalties, fines, remedial measures on administrative violations against regulations on press activities, publishing activities.

The scope of Decree applies to organizations and individuals that commit administrative violations against regulations on press activities, publishing activities in the territory of Vietnam.

Accordingly, for prominent press activities on license violation; violating regulations on posting and broadcasting information content on newspapers, newsletters and special issues; violating regulations on export and import of printed newspapers; violating regulations on receiving foreign television signals directly from computers that are not part of radio and television services; violating regulations on general websites can be fined up to VND 200,000,000, confiscate material evidence of the violation, the license shall be suspended or suspend operation, take remedial measures such as correcting, apologizing, removing false information, information that violates the law, forced removal of news, articles on electronic newspapers, electronic magazines, audio press, visual press have contents that are not following the principles and purposes of the license, forcing the destruction of press products, giving back illegal benefits, etc.

For publishing activities, the violations that need to be noted are violations of the provisions of the license, the conditions for publishing activities; violating the regulations on publication content; regulations on publication printing activities; regulations on conditions for electronic publishing and distribution of electronic publications; may be subject to a fine of up to VND 200,000,000, suspension of licenses or suspend operation for a definite time and take some remedial measures such as forced publication revocation, destruction of the publication, forced to submit illegal benefits, forced a public apology, etc.

The fine imposed on an individual is one half as much as the one imposed on an organization for the same administrative violation.

Decree No. 119/2020/ND-CP comes into effect on December 1st, 2020.

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[Legal Updates] Goverment has just issued sanctioning administrative violations in the medical field

1. Goverment has just issued Decree No. 117/2020ND-CP dated September 28th, 2020 regulating on sanctioning administrative violations in the therapeuticfield 

On September 28th, 2020, the Government issued Decree No. 117/2020ND-CP, regulating on administrative sanctions in the medical field. Especially pay attention to alcohol, beer and tobacco field, with 12 Articles detailing penalties for violations.

Accordingly, violating regulations on smoking locations can result in a warning or a fine up to 10,000,000 VND. The failure to have signs does not sell tobacco to people under 18 years old shall be fined from 1,000,0000 VND to 3,000,000 VND. Violations of regulations on selling and supplying tobacco will be fined from 3,000,000 VND to 5,000,000 VND and additional penalties may be imposed and also the remedial measures. A fine can be up to 40,000,000 VND for violations on labelling and printing health warnings on tobacco packages, and additional penalties and other remedial measures.

Regarding the alcohol and beer field, regulations on penalties for behaviors of using, selling, promoting, advertising, etc. Accordingly, drinking alcohol and beer at the age of 16 but less than 18 is illegal and can be warned or fined up to 500,000 VND. It is also illegal to sell alcohol or beet at place that is not allowed to be sold, which can result in a fine up to 10,000,000VND. Furthermore, not taking preventive measures, detecting and preventing drivers from drinking alcohol or beer right before and while in traffic, vehicle owners may be fined up to 10 million VND, etc.

Decree No. 117/2020/ND-CP comes into effect on November 15th, 2020.

2. Ministry of Construction has issued Official Letter No. 4757/BXD-QLN dated October 01st, 2020 responding the recommendations of voters of Ho Chi Minh City to consider and explain clearly the relevant regulations and sanctions on using the apartment to do business on hourly and short-term rental services 

In Official Letter No. 4757/BXD-QLN dated October 1st, 2020, Department of Construction (DOC) stated that, under Article 10 of Law on Housing 2014, House owners are organizations, domestic family, individuals, overseas Vietnamese are intitled to use the house for residential purposes and other purposes not prohibited by law; at the same time, Article 6 of this Law also prohibits the use of apartments for non-residential purposes.

At Article 35 of Decree No. 99/2015/ND-CP dated October 20th, 2015 of Government detailing and guiding the implementation of some articles of Law on Housing stipulates prohibited acts in management and use of an apartment building such as arbitrary conversion of functions and use purposes of the apartment building; carry out the prohibited acts specified in Artilce 5 of Law on Housing.

Therefore, according to the Law on Housing, the act of using an apartment for non-residential purposes such as doing business on hourly or short-term rental services is prohibited.

Circular No. 02/2016/TT-BXD dated February 15th, 2016 of Minister of Construction issuing the Regulation on management and use of apartment buildings. At Article 48 and 49 of Regulation No. 02 specify the responsibilities of People’s Committee of wards and districts in handling according to their competence or by requesting competent authorities to handle violations actsin the management and use of the apartment building.

Violations in management and use of the apartment building will be administratively sanctioned according to the provisions of Decree no. 139/2017/ND-CP dated November 27th, 2017 of government on penalties for administrative violations against regulations on investment and construction; extraction, processing and trading of minerals used in construction, production and trading of building materials; management of infrastructural constructions; real estate business, housing development, management and operation of apartment buildings and office buildings.

3. The limited time for granting Work Permits for foreign labors is reduced to 17 working days

On October 7th, 2020, the Department of Justice (DOJ) and the Department of Labor, Invalids and Social Affairs (DOLISA) of Ho Chi Minh City have signed a joint plan on administrative procedure reform of the two agencies.

Previously, on July 7th, 2020, the People’s Committee of Ho Chi Minh City decided to issue a regulation on inter-group implementation of granting criminal record certificates and work permit for foreigners working in HCMC.

Accordingly, DOLISA is the agency receiving dossiers and returning the settlement results for inter-connected administrative procedures. DOJ of HCMC shall receive and process the request for issuance of criminal record certificates sent by DOLISA.

Within 17 working days (from the date of receipt of a complete and valid dossier),  DOLISA shall return the result to the applicant (including criminal record certificates and work permit). This term was 20 working days as previous.

This regulation has contributed to the implementation of administrative procedure reform, reducing paperwork, shortening processing time, saving costs, creating maximum favorable conditions for people in the implementation of administrative procedures. In addition, it also ensures the timeliness, accuracy and consistency of information on individuals’ personal identities, minimizing troublesome and difficulties things for people, at the same time, it contributes to the elimination of negative behaviors of administrative procedures.

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[Legal Updates] Monthly Newsletter 09/2020

1. Our prominent legal articles in September 2020

In September, Apolat Legal published a list of issues that foreign-invested companies have to comply with after obtaining an Investment Registration Certificate and Enterprise Registration Certificate. For more details, please visit here.

Additionally, our personnel had some remarkable articles, specifically: 

  • Thieu Thi Kieu Thu had an article “ESOP is taken advantage of and risk of shareholder disputes” with useful information on Saigon Economic Times No. 36-2020 on September 02nd, 2020. To read the entire article, please visit here. 
  • Lawyer Le Tien Dat with the Article “Cross ownership between parent-subisdiary companies in Vietnam”, provides a legal summary on the regulations of cross ownership in accordance with the laws of Vietnam. To read the entire article, please visit here. 
  • Lawyer Bui Bich Phuong with the Article “Naturalization in Vietnam, difficult or easy?”, provides an overview information to the legislation of Vietnam in naturalizing Vietnamese nationality. To read the entire article, please visit here.

Moreover, Clients can visit https://apolatlegal.com/category/articles to refer to more legal articles suitable to your demand. 

2. The remarkable news in September 2020 

  • Ministry of Industry and Trade issued Circular No. 21/2020/TT-BCT dated September 09th, 2020 regulating the procedure of granting license for electricity activities. For more information about the content of the Circular, please see here. 
  • Resolution No.129/NQ-NP dated September 11th, 2020, the Government agreed with the proposal of the Ministry of Natural Resources and Environment and the Government Office on solving difficulties for production and business in the context of pandemic Covid-19. Detailed instructions, please refer here. 
  • After Decision No. 13/2020/QD-TTg dated April 6th, 2020 of the Prime Minister on mechanism to encourage the development of solar power in Vietnam and Circular No. 18/2020/TT-BCT dated July 17th, 2020 regulations on project development and standard power purchase and sale contracts applicable to solar power projects, to ensure rooftop solar system development in accordance with the spirit of Resolution 55-NQ/On February 11th, 2020 of the Politburo on the orientation of the Vietnam National Energy Development Strategy to 2030, with a vision to 2045, on September 22nd, 2020, the Ministry of Industry and Trade has issued Official Letter No. 7088/BCT-ĐL on guiding the implementation of roof-top solar energy development. Detailed instructions, please refer here. 
  • On September 25th, 2020, Prime Minister has signed Decree No. 114/2020/ND-CP detailing the implementation of Resolution No. 116/2020/QH14 of National Assembly on reduction of corporate income tax (CIT) payable in 2020. Detailed instructions, please refer here. 

3. The remarkably executed legislation in September 2020 

No. DOCUMENT TITLE EXECUTION DATE EFFECTIVE DATE 
1.

Decree 102/2020/ND-CP regulating Vietnam timber legality assurance system

 

01/09/2020 30/10/2020
2. Decree 103/2020/ND-CP regulating certification of fragrant rice varieties exported to the European Union

 

04/09/2020 04/09/2020
3.

Decree 109/2020/ND-CP regulating extension of deadline for submission of excise tax for domestically manufactured or assembled automobiles

 

15/09/2020 15/09/2020
4.

Decree 111/2020/ND-CP regulating special preferential export tax tariffs and special preferential import tax tariffs of Vietnam for the performance of free trade Agreement between Vietnamese Socialist Republic and the European Union for the period 2020 – 2022

 

18/09/2020 18/09/2020
5.

Circular 21/2020/TT-BCT of Ministry of Industry and Trade, regulating the procedure of granting license for electricity activities

 

09/09/2020 20/10/2020

 

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[Legal Updates] Letter of quick legal updates 200928

1/ Decree No. 114/02020/ND-CP regulates on reduction of corporate income tax payable in 2020 for enterprises, cooperatives, non-business units and other organizations    

On September 25th, 2020, Prime Minister has signed Decree No. 114/2020/ND-CP detailing the implementation of Resolution No. 116/2020/QH14 of National Assembly on reduction of corporate income tax (CIT) payable in 2020.

This Decree applies to CIT payers who are organizations engaged in production and trading of goods and services with taxable income, including enterprises established under Vietnamese laws, organizations established under the Cooperative Law; non-business units and other organizations established under Vietnamese law with income from production and business activities.

Pursuant to this Decree, enterprises with total revenue in 2020 not exceeding 200 billion VND are entitled to a 30% reduction of payable CIT amount of the tax period 2020.

Total revenues in 2020 as the basis for determining the subjects eligible for tax reduction is the total revenue in the CIT period of 2020, including all sales, processing and service charges including price subsidies, surcharges which enterprises are entitled to in accordance with current regulations.

In cases of newly established enterprises, enterprises transformations, ownership transformation, consolidation, merger, division, separation, dissolution, bankruptcy (collectively referred to as changed enterprises) in CIT calculation period in 2020 for under 12 months of operation, the total revenue in 2020 is determined by total actual revenue in the CIT period of 2020 divided (:) the number of months of enterprises producting and doing business in the CIT period in 2020 multiplied (x) 12 months.

The changes of enterprises per month, operation time will be 01 month.

In cases of estimated total revenue in the CIT period of 2020 does not exceed 200 billion VND, the enterprises shall temporarily pay 70% of the payable CIT amount of the quarter.

Ending of CIT period of 2020, in case of total revenue in 2020 of enterprises does not exceed 200 billion VND, enterprises shall declare and reduce the CIT in 2020 upon finalization of CIT in accordance with laws.

This Decree is going to have effect from the valid date of Resolution No. 116/2020/QH14 and applies

for CIT period of 2020.

2/ Decree No.91/2020/ND-CP regulates on preventing spam text messages, spam emails, and spam calls is going to have effect on October 01st, 2020

On August 14th, 2020, the Government issued Decree 91/2020 / ND-QD on the prevention of spam messages, spam emails, and spam calls.

According to this Decree, the Government stipulates that organizations and individuals using telecommunications services have the right to register on or withdraw from the List without advertising (DoNotCall) for phone numbers under their legal use rights. Advertisers, Internet and telecommunications service providers are not allowed to make advertising phone calls, send text messages for advertising registration, or send advertising text messages to any phone number on the DoNotCall list.

The principles of sending advertising text messages, emails and phone calls are prescribed as follows:

  • Not to send advertising messages or make advertising calls to the numbers on the DoNotCall List or without prior consents from the users;
  • For text ads and for the numbers which are not in DoNotCall list, Advertisers may only send first and only opt-in message. The Ministry of Information and Communications shall elaborate regulations on sending opt-in messages;
  • In case the user refuses to receive advertisements or does not answer the first and only opt-in message, the advertiser must not send any additional opt-in message or advertising message to that number;
  • To stop sending advertising messages and advertising emails and making advertising calls to the user after receiving the user’s unsubscribing request;
  • Each advertiser may send up to 03 advertising messages to a phone number, up to 03 advertising emails to an email address, and make 01 advertising call to a phone number within 24 hours unless otherwise agreed by the user;
  • Advertisement contents shall be conformable with advertising laws;
  • Only send advertising messages or make advertising calls after an brandname is issued; not to use phone numbers to send advertising messages or advertising calls. 

Decree No.91/2020/ND-CP is going to have effect on October 01st, 2020. 

3/ Ministry of Industry and Trade has issued Official Letter No. 7088/BCT-ĐL on guiding the implementation of roof-top solar energy development 

After Decision No. 13/2020/QD-TTg dated April 6, 2020 of the Prime Minister on mechanism to encourage the development of solar power in Vietnam and Circular No. 18/2020/TT-BCT dated July 17th, 2020 regulations on project development and standard power purchase and sale contracts applicable to solar power projects, to ensure rooftop solar system development in accordance with the spirit of Resolution 55-NQ/On February 11th, 2020 of the Politburo on the orientation of the Vietnam National Energy Development Strategy to 2030, with a vision to 2045, the Ministry of Industry and Trade specifically guides the following issues:

1. About “Rooftop solar system”:

Rooftop solar system defined in Clause 5, Article 3 of Decision 13 must be installed on rooftops of construction works with independent functions, in which:

(i) Construction works (including new construction, renovation, repair) are invested and built in accordance with the current law on investment, construction, environment,…;

(ii) Roof of a construction work is that of a house, roof of a house-type structure, should be suitable to the function and use purpose of the construction.

2. Guidance in some specific cases: 

(i) Rooftop solar system on rooftop of livestock, farming, forestry, salt-production, aquaculture and other agricultural and rural development works:

Owners of animal husbandry and cultivation farms are responsible for organizing production and business in accordance with land use plannings and plans in the locality. Farm construction works must have roofs suitable to their functions and types of farms.

(ii) Many rooftop solar systems with a total capacity of more than 01 MW (each system with a capacity of not more than 01 MW) per 01 location (on the same land plot or roof of the industrial park) are directly or indirectly connected, of one or more investors; in case an investor acquires many adjacent rooftop solar systems with a total capacity of over 01 MW: 

Each rooftop solar system has a separate power purchase agreement and is exempt from the electricity operation license. Acquiring organizations and individuals are entitled to inherit related interests and obligations in the Power Purchase Agreement signed by previous investors but must carry out the procedures of transferring contract holders and could not combine purchase contracts to sell rooftop solar system into a contract.

(iii) In case the investor takes advantage of the roof of the office, the operation office, the kitchen, the motel, the staff garage, the factory, the warehouse contains materials, in the power project campus solar power plant, hydropower plant, thermal power plant to invest in rooftop solar power and propose to install separate meters, sign power purchase agreement for rooftop solar system:

EVN is allowed to sign power sale and purchase contracts if it is suitable with the regulations on the rooftop solar system in Decision 13 and Circular 18.

(iv) Solar power systems with a capacity not exceeding 01 MW and not installed on the roof of a construction with independent functions; solar power system of livestock and farming farms with a capacity of over 01 MW or over 1.25 MWp; in case the solar power system is connected to a voltage above 35 kV:

In these cases, the selling price for the rooftop solar system is not applied according to the provisions of Decision 13.

(v) Preferential recommendations for installing rooftop solar with capacity higher than 01 MW; Aquaculture lagoon, farming, animal husbandry … have the need to use photovoltaic panels as roofs:

The Ministry of Industry and Trade will study, propose and report to the Prime Minister for consideration to develop a mechanism suitable to the practical situation, applied after 2020.

3. Role of EVN:

  • To instruct electricity units for connecting, signing electricity sale contracts for operation applicable to rooftop solar power system in accordance with Decision 13 and Circular 18.
  • To be responsible for ensuring that the rooftop solar systems are connected in accordance with the regulations, not overloading the existing low and high voltage grid system.
  • To request the rooftop solar system investors to make a commitment to be responsible for the project itself in accordance with applicable standards, regulations and current law. For the rooftop solar system of a farm building, request the investor to supplement the commune or district People’s Committee’s confirmation of the farm construction declaration in the application/electrical connection agreement or purchase contract electricity.
  • To send documents to the Ministry of Planning and Investment and the Ministry of Finance to propose problems related to business conditions, tax administration, and invoices of objects with rooftop solar systems.

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FAQs

Trademark

Trademark is defined as any sign used to distinguish goods or services of different organizations or individuals.

The following signs shall be ineligible for protection as marks:

  1. Signs identical with or confusingly similar to national flags or national emblems.
  2. Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, socio- politico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
  3. Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
  4. Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
  5. Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.

First to file principle” is applied to cope with cases in which there are more than one protection registration application for the same or similar subject matter of industrial property rights. This principle is prescribed particularly at Article 90 of Law on Intellectual Property to protect the rights and interests of the earlier applicant with the same subject matter of industrial property rights. To be more detailed: 

  1. In case many applications are filed for registration of the same patents or similar patents, or for registration of industrial designs identical with or insignificantly different from another, the protection title may only be granted to the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of protection title.
  2. In case there are many applications filed by different persons for registration of identical or confusingly similar marks for identical or similar products or services, or in case there are many applications filed by the same person for registration of identical marks for identical products or services, the protection title may only be granted for the mark in the valid application with the earliest priority or filing date among applications satisfying all the conditions for the grant of a protection title.
  3. In case there are many registration applications specified in Clauses 1 and 2 of this Article and satisfying all the conditions for the grant of a protection title and having the same earliest priority or filing date, the protection title may only be granted for the object of a single application out of these applications under an agreement of all applicants. Without such agreement, all relevant objects of these applications will be refused for the grant of a protection title.

A certificate of registered mark shall be valid from the grant date until the end of ten (10) years after the filing date and may be renewed for many consecutive terms, each of ten (10) years.

The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:

 (a) Using signs identical with protected marks for goods or services identical with goods or services on the list registered together with such mark;

 (b) Using signs identical with protected marks for goods or services similar or related to those goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (c) Using signs similar to protected marks for goods or services identical with, similar to or related to goods or services on the list registered together with such mark, if such use is likely to cause confusion as to the origin of the goods or services;

 (d) Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well-known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owner

The validity of a protection title shall be terminated in the following cases:

  • The owner fails to pay the stipulated validity maintenance or extension fee;
  • The owner declares relinquishment of the industrial property rights;
  • The owner no longer exists, or the owner of a certificate of registered mark is no longer engaged in business activities and does not have a lawful heir;
  • The mark has not been used by its owner or the licensee of the owner without justifiable reason for five (5) consecutive years prior to a request for termination of validity, except where use is commenced or resumed at least three (3) months before the request for termination;
  • The owner of a certificate of registered collective mark fails to supervise or ineffectively supervises the implementation of the regulations on use of the collective mark;
  • The owner of a certificate of registered certification mark violates the regulations on use of the certification mark or fails to supervise or ineffectively supervises the implementation of such regulations;

A protection title shall be entirely invalidated in the following cases:

(a) The applicant for registration has neither had nor been assigned the right to register the invention, industrial design, layout design or mark;

(b) The industrial property object failed to satisfy the protection conditions at the time the protection title was granted.

A protection title shall be partly invalidated as to the part which failed to satisfy the protection conditions.

In accordance with the Law on Intellectual Property, trademarks are classified into four groups:

Collective trademark means a mark used to distinguish goods or services of members from those of non-members of an organization which is the owner of such mark.

Certification trademark means a mark which is authorized by its owner to be used by another organization or individual on the latter’s goods or services, for the purpose of certifying the origin, raw materials, materials, mode of manufacture of goods or manner of provision of services, quality, accuracy, safety or other characteristics of goods or services bearing the mark.

Integrated mark means identical or similar marks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated.

Well-known mark means a mark widely known by consumers throughout the Vietnamese territory.

A mark shall be deemed to be distinctive if it consists of one or more easily noticeable and memorable elements, or of many elements forming an easily noticeable and memorable combination, and does not fall into the cases stipulated in clause 2 of Article 74 Law on Intellectual Property.

 

In accordance with Law on Intellectual Property, the entities having the right to register marks include:

– Organizations and individuals shall have the right to register marks to be used for goods such organizations or individuals produce or for services such organizations or individuals provide.

– Any organizations or individuals lawfully engaged in commercial activities shall have the right to register a mark for a product which the latter puts onto the market but which was manufactured by others, provided that the manufacturer does not use such mark for a product and does not object to such registration.

– Lawfully established collective organizations shall have the right to register collective marks to be used by the members of the collective organization pursuant to the regulations of the collective organization on use of collective marks. For signs indicating geographical origins of goods or services, an organization with the right to register means a local collective organization of [other] organizations or individuals engaged in production or trading in the relevant locality.

– Organizations with the function of controlling and certifying quality, properties, origin or other relevant criteria of goods or services shall have the right to register certification marks, provided that such organizations are not engaged in production or trading of such goods or services.

– Two or more organizations or individuals shall have the right to jointly register a mark in order to become its co-owners on the following conditions:

 (a) Such mark is used in the names of all co-owners or used for goods or services which are produced or traded with the participation of all co-owners;

 (b) The use of such mark does not cause confusion to consumers as to the origin of goods or services.

The processing of mark registration in Vietnam shall be conducted within the timelines mentioned below:

  • Formal examination: An application for registration of industrial property shall have its form examined within one (01) month from the filing date. The purpose of this stage is to examine compliance with regulations related to the form of the registration application then evaluate whether this application is valid or not.
  • Publication of application: An application for the mark registration shall be published within two (02) months as from the date such application is accepted as being valid. Subsequently, these applications shall be published in the Official Gazette of Industrial Property.
  • Substantive examination: nine (09) months from the date of publication of the application with the purpose of evaluating of the eligibility for grant of protection titles for subject matter stated in such applications under protection conditions and for determination of the respective scope of protection.

In accordance with Clause 1 Article 123 Law on Intellectual Property, rights of owners of marks includes:

  • To use or authorize others to use industrial property objects according to the provisions of Law on Intellectual Property.

Use of a mark means the performance of the following acts:

(a) Affixing the protected mark on goods, goods packages, business facilities, means of service provision or transaction documents in business activities;

(b) Circulating, offering, advertising for sale or stocking for sale goods bearing the protected mark;

(c) Importing goods or services bearing the protected mark. 

  • To prevent others from using industrial property objects according to the provisions of Article 125 of this Law;
  • To dispose of industrial property objects according to the provisions of Chapter X of this Law.

An intellectual property right holder shall have the right to apply the following measures to protect the intellectual property rights of such holder:

 (a) To apply technological measures to prevent acts of infringement of its intellectual property rights;

 (b) To request any organization or individual who commits an act of infringement of the intellectual property rights of the holder to terminate such act, make a public apology or rectification, and pay damages;

 (c) To request the competent State body to deal with acts of infringement of its intellectual property rights in accordance with the provisions of this Law and other relevant laws;

 (d) To initiate a lawsuit at a court or a claim at an arbitration centre to protect the legitimate rights and interests of the holder.