IP Protection in Vietnam
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Overview
1.1 History
Although having been launched just over three decades, Intellectual Property (“IP”) protection is one of the fastest developing areas of law in Vietnam, and IP laws have been continuously renewed and improved. Protection of industrial property was first introduced in 1981 with the promulgation of the Ordinance on Innovation and Invention in 1981 that focused on moral rights rather than ownerships of inventors/creators. From 1981 to 1989, the industrial property protection in Vietnam had administrative effects only, although a number of governmental regulations on trademarks (1982), utility solutions (1988), industrial designs (1988), licensing of industrial property (1988), and copyright (1986) were issued.
The Ordinance on the Protection of Industrial Property Rights, passed by the State Council on 28 January 1989 marked a turning point for the industrial property laws of Vietnam. The Ordinance laid the foundation for the protection of inventions, utility solutions, designs, and trademarks in the country. Following the 1989 Ordinance, the Government issued Decree 84 HDBT providing for amendments and additions to regulations on particular industrial objects issued earlier in 1990. The 1994 Ordinance on Copyrights provided a higher level of copyright protection.
Another landmark in the development of the IP regime in Vietnam was the introduction of the Civil Code, adopted by the National Assembly on 28 October 1995, which came into effect on 1 July 1996, codifying all existing legislations on civil matters and creating the legal foundation for ownership and civil rights. The Civil Code 1995 replaced all former legal regulations on IP, including the 1989 Ordinance on IP Protection and the 1994 Ordinance on Copyrights. For implementation, the Government also issued corresponding subordinate decrees on industrial property and copyrights. Significant changes were made to the Civil Code 1995 and its implementing regulations in order to achieve compliance with the TRIPs Agreement and other international conventions to which Vietnam had acceded.
The Civil Code 2005 was passed on 14 June 2005 by the National Assembly and replaced the Civil Code 1995 as of 1 January 2006. In contrast to the twenty six industrial property right provisions discussed in the Civil Code 1995, the Civil Code 2005 contains only four general provisions on protection of industrial property and plant varieties. However, the coverage of subject matters of industrial property protection has been extended to further include layout designs of semiconductor integrated circuits, trade secrets, trade names, and geographical indications. With regards to copyrights, in addition to lowering the number of relevant provisions from thirty five down to fourteen, for the first time in the development of IP laws in Vietnam, the term “related rights” has been used to substitute for the “rights and obligations of performers, producers of phonograms and videograms and broadcasting organizations”. Such related rights shall include the rights of entities and individuals over performances, phonograms, videograms, broadcasting programs, and encrypted program-carrying satellite signals.
However, as a matter of fact, prior to the advent of the new IP Law 50/2005, IP related provisions in Vietnam were scattered over 40 legal documents that were not always consistent with each other and that were not all TRIPS-WTO compliant. As part of its bid to gain accession to the WTO, Vietnam consolidated its confusing maze of partially conflicting IP rules and regulations into a streamlined version, the IP Law 50/2005 that became effective as of 1 July 2006. IP Law 50/2005 has been perceived by IP owners and practitioners in Vietnam as a great advance toward adequate protection and fully compliance with the TRIPs obligations. Subsequently, implementing decrees and regulations have been established to make detailed provisions and guidelines to implement the IP Law 50/2005.
However, after four years of practical implementation, the IP Law 50/2005 expressed its shortcomings where several provisions neither conform with international laws nor impracticable. In view of that, the recent amendments and supplementations were made to the 2005 IP Law and passed by the National Assembly on 19 June 2009. The amended IP Law has come into effect as of 1 January 2010 with a number of important changes relating to copyrights, industrial property rights as well as plant variety rights. Together with the passage of the amended IP Law, the implementing Decrees and Circulars for the amended IP Law have been amended accordingly.
1.2 International Conventions and Treaties
Vietnam has been a member of the Paris Convention for Protection of Industrial Property and the Madrid Agreement Concerning International Registration of Marks since 1949. The country also became a member of the Convention Establishing WIPO in 1976, and acceded to the Patent Cooperation Treaty (PCT) in 1993. Vietnam is neither a member of the Nice Agreement nor the Strasbourg Agreement, but it has adopted the International Classification of Goods and Services and the International Patent Classification thereunder. Vietnam officially became a member of the Berne Convention for the Protection of Literary and Artistic Works on 26 October 2004.
Further developments toward international integration include the country becoming an official member of the Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of their Phonograms on 6 July 2005, joining internationally recognized collective management organizations established with respect to musical works (Vietnam became a member of CISAC - International Cofederation of Societies of Authors and Composers and BIEM - The Bureau International des Sociétés Gérant les Droits d'Enregistrement et de Reproduction Mécanique, International Organization representing Mechanical Rights Societies in November 2005). Vietnam also signed the Brussels Convention relating to the distribution of encrypted program-carrying satellite signals that took effect in Vietnam on 12 January 2006. The Madrid Protocol has been effective in Vietnam since 11 July 2006.
As a member of the Association of Southeast Asia Nations (ASEAN), Vietnam ratified the ASEAN Framework Agreement on IP Cooperation in 1996. The Framework Agreement cites conformity with the TRIPs Agreement and other international conventions as a basis for ASEAN cooperation. In June 1997, Vietnam and the United States entered into the Bilateral Agreement on Copyright Protection, providing for copyright protection of each country’s citizens’ works. Vietnam and Switzerland also signed a Bilateral Agreement on the Protection of IP in July 1999.
The landmark bilateral trade agreement (BTA) between Vietnam and the United States of America on trade relations was signed on 13 July 2000 in Washington, DC. Through this trade agreement, Vietnam has committed to most of the obligations covered by the WTO-TRIPS Agreement. The most important milestone in the normalization of relations with the US was Vietnam’s accession to the WTO on 11 January 2007. This achievement followed an official agreement between Vietnam and the US on the terms and conditions for Vietnam's accession to the WTO, signed on 31 May 2006, and approval of Permanent Normal Trade Relations (PNTR) status for Vietnam by the US Congress on 21 December 2006. As a result of these agreements, cooperation in economic, legislative, health, education, and social welfare matters, as well as in cultural and scientific development, including cooperation in all aspects of IP protection, is expected to be further strengthened in the years to come.
1.3 Current Legislation on Intellectual Property
Listed hereunder are the major legal instruments for protection and enforcement of intellectual property rights in the country:
(i) Civil Code 2015 passed by the National Assembly in November 2015 and effective from 1 January 2017.
(ii) Civil Procedure Code 2015 passed by the National Assembly in November 2015 and effective from 1 July 2016, providing processes and procedures for settlement of civil affairs and enforcement of civil judgments.
(iii) Criminal Code 2015 of the National Assembly, enacted in November 2015, amended and supplemented in 2017, and effective from 1 January 2018.
(iv) Criminal Procedure Code 2015 of the National Assembly, enacted in November 2015 and effective from 1 January 2018 providing processes and procedures for institution of legal proceedings, investigation, prosecution, and enforcement of criminal judgments.
(v) Intellectual Property Law 2005 passed by the National Assembly on 29 November 2005 and came into force on 1 July 2006, and then amended and supplemented pursuant to Law No. 36/2009/QH12 of 19 June 2009 (Vietnam IP Law).
(vi) Competition Law 2004 of the National Assembly, enacted in December 2004 and effective from 1 July 2005.
(vii) The Customs Law 2014 of the National Assembly, enacted in June 2014 and effective as of 1 January 2015.
(viii) Law on Information Technology No. 67/2006 passed by the National Assembly on 29 July 2006 and came into force on 1 January 2007.
(ix) Cinematography Law passed by the National Assembly on 29 June 2006 and came into force on 1 January 2007, and then amended in 2009.
(x) Law on Handling Administrative Violations No. 15/2012/QH13 of the National Assembly, ratified on 20 June 2012 and entered into force on 1 July 2013.
(xi) Law on Appeal No. 02/2011/QH13 of the National Assembly, enacted on 11 November 2011.
(xii) Decree No. 185/2013/ND-CP of the Government, enacted on 15 November 2013, amended in 2015, providing the provisions on Sanctions Against Administrative Violations in Commercial Activities, Production Of, Trading In Counterfeit Or Banned Goods And Protection Of Consumer Rights.
(xiii) Decree No. 22/2018/ND-CP of the Government, enacted in February 2018 and effective as of 10 April 2018, guiding the implementation of articles of the IP Law concerning copyrights and related rights.
(xiv) Decree No. 103/2006/ND-CP of the Government, enacted in September 2006 and effective as of November 2006, providing guidelines for implementing certain articles of the Intellectual Property Law concerning industrial property, amended and supplemented in 2010.
(xv) Decree No. 88/2010/ND-CP of the Government, enacted in August 2010 and effective as of October 2010, guiding the implementation of articles of the IP Law concerning rights on plant varieties.
(xvi) Decree No. 105/2006/ND-CP of the Government, enacted in September 2006 and effective as of November 2006, providing guidelines for the implementation of certain articles of the Law on Intellectual Property regarding Enforcement of Intellectual Property Rights and State management of intellectual property, amended and supplemented in 2010.
(xvii) Decree No. 99/2013/ND-CP of the Government, enacted in August 2013 and effective as of October 2013, detailing and providing guidelines for implementing the provisions on handling of administrative violations concerning industrial property.
(xviii) Decree No. 08/2015/ND-CP of the Government, enacted in January 2015, providing detailed provisions for the implementation of the Customs Law in respect of customs procedures, examination, supervision and control procedures.
(ixx) Decree No. 43/2017/ND-CP of the Government, enacted on 14 April 2017 providing regulations on goods labeling.
(xx) Circular No. 01/2007/TT-BKHCN of the Ministry of Science and Technology, establishing regulations to implement Decree 103/2006/ND-CP that provides guidelines for implementing certain articles of the Intellectual Property Law concerning industrial property. The Circular came into effect as of 9 May 2007, and amended and supplemented four times in 2010, 2011, 2013, and 2016.
(xxi) Circular No. 263/2016/TT-BTC of the Ministry of Finance, enacted in November 2016 and came into force on 1 January 2017, guiding Rates and the Collection, Payment, Management and Use of Industrial Property Fees and Charges.
(xxii) Circular No. 13/2015/TT-BTC of the Ministry of Finance, enacted in January 2015, defining inspection, supervision, temporary suspension of customs procedures for exported and imported goods that are subjects of intellectual property rights; control of counterfeit goods and goods infringing intellectual property rights.
(xxiii) Circular No. 11/2015/TT-BKHCN of the Ministry of Science and Technology, enacted on 26 June 2015, guiding the implementation of a number of articles of Decree No. 99/2013/ND-CP on sanctioning of administrative violations in industrial property.
(xxiv) Joint Circular No. 01/2008/TTLT-TANDTC-VKSNDTC-BCA-BTP of 29 February 2008, guiding the examination of penal liability for acts of infringing upon intellectual property rights.
(xxv) Joint Circular No. 02/2008/TTLT-TANDTC-VKSNDTC-BVHTT&DL-BKH&CN-BTP of 3 April 2008, guiding the application of a number of legal provisions to the settlement of disputes over intellectual property rights at peoples courts.
Patents
2.1 Types of Patents
Practically, there are three types of patent available under IP Law 50/2005, namely:
1. Patent for invention;
2. Patent for utility solution; and
3. Patent for industrial design.
Inventions are technical solutions relating to a product or process aiming to solve a specific problem by utilizing the laws of nature. To be protected in the form of a patent for invention, an invention must be new, involve an inventive step, and be capable of industrial application. Although inventiveness is not required for an invention to be protected by a patent for utility solutions, an invention must still be something other than common general knowledge.
An industrial design covers the exterior shape of a product, represented in three dimensional forms, lines, colors or any combination thereof. An industrial design shall be protectable if it is new, creative, and capable of industrial application.
2.2 Patentability
2.2.1 Inventions
To be patentable, an invention shall meet the criteria of worldwide novelty and industrial applicability. In addition, an invention must involve an inventive step. These criteria are specifically defined as follows:
(i) Novelty of Invention
An invention shall be considered to be new if it was not publicly disclosed by means of use, written description or in any other way inside or outside the country, prior to the filing date or, where priority is claimed, the priority date of the patent application.
An invention shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret. Further, an invention shall not be considered to lack novelty if: (i) the invention was unauthorizedly disclosed by another person without will and acceptance of the applicant; (ii) it was disclosed by the applicant in the form of a scientific report; and (iii) the invention was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition, provided that the patent application for such an invention is filed within 6 months from the date of disclosure.
(ii) Inventive Step of Invention
An invention shall be considered as involving an inventive step if, having regards to technical solutions already disclosed to the public by means of use, written description or in any other way inside or outside Vietnam prior to the date of filing, or the priority date where priority is claimed, of the patent application, it constitutes an inventive progress and cannot be easily made by a person ordinarily skilled in the art.
(iii) Industrial Applicability of Invention
An invention shall be considered to be capable of industrial applicability if it can be applied to mass production or manufacture of the product or it is possible to repeatedly apply the process that is the subject matter of the invention to get stable results.
2.2.2 Industrial Designs
To be patented, an industrial design shall be new, creative and capable of industrial application.
(i) Novelty of Industrial Design
An industrial design will be considered to be new if it substantially differs from industrial designs that are already disclosed to the public inside or outside Vietnam by means of use, written description or in any other way prior to the date of filing or the priority date, where priority is claimed, of the industrial design application.
For the novelty determination, two designs shall not be considered as substantially different from each other if they are different merely in design features that are not easily recognized and memorized and that cannot serve to distinguish the two designs as a whole.
An industrial design shall not be considered as publicly disclosed if it is known to only a limited number of persons who are obliged to keep it secret. Also, an industrial design shall not be considered as lacking novelty if: (i) the design was unauthorizedly disclosed by another person without permission of the applicant; (ii) it was disclosed by the applicant in the form of a scientific report; and (iii) the design was displayed at a national exhibition of Vietnam or an official or officially recognized international exhibition, provided that the patent application for such an industrial design is filed within 6 months from the date of disclosure.1
(ii) Creativity of Industrial Design
An industrial design shall be considered to be creative if, having regards to the industrial designs already disclosed to the public inside or outside the country prior to the date of filing or the priority date where priority is claimed, of the industrial design application, it cannot be easily created by a person ordinarily skilled in the art.
(iii) Industrial Applicability of Industrial Design
An industrial design shall be considered to be capable of industrial application if it can serve as a template for mass production of the product having an exterior shape embodying such industrial design by industrial or handicraft methods.
2.3 Exclusions from Patentability
For inventions, the following shall be exempted from protection under IP Law 50/2005:
1. discoveries, scientific theories, mathematical methods;
2. schemes, plans, rules and methods for performing mental acts, training domestic animals, playing games, doing business; computer programs;
3. presentations of information;
4. aesthetic solutions;
5. plant varieties, animal varieties;
6. essentially biological processes for the production of plants and animals except microbiological processes; and
7. preventative, diagnostic and therapeutic methods for treatment of the human or animal body.
For industrial designs, the following shall be excluded from protection:
1. the exterior shape of a product dictated merely by technical features thereof;
2. the exterior shape of a civil or an industrial construction work;
3. the exterior shape of a product that is invisible during the use of the product.
It is also explicitly stated under IP Law 50/2005 that inventions and industrial designs shall not be patented if they are contrary to social morality, public order, or detrimental to national defense and security.
2.4 Patent Term and Maintenance/Renewal
Vietnamese patents become effective on the date of issuance and end 20 years computed from the filing date for inventions (subject to annuity payment), without any renewal term. The patent for utility solution enjoys the term of ten years from the filing date. The patent for industrial design is effective from the granting date, lasts for five years from the filing date, and can be renewed for two further five year terms (subject to payment of renewal fee).
The patent owner of a Patent for Invention or Patent for Utility Solution is required to pay annuity fees in order to maintain its validity. In order to renew the validity of an Industrial Design Patent, its owner shall pay renewal fees.
Annuities are not required for pending patent application(s). The first annuity should be paid on the date of grant of patent while the payment of the succeeding annuities must be made within the six-month period prior to the anniversary of the grant date. A late payment of annuity is available within a grace period of six months counted from the due date of annuity, subject to an extra fee amounting to 10% of said annuity for each month overdue. No provision on the restoration of the validity of a patent is addressed in the IP laws and regulations.
2.5 Rights and Obligations of Patent Owners
2.5.1 Patent Rights
A patent owner shall be granted the right to use or allow others to use the patented invention or industrial design. The patentee also has the right to prevent others from using the patented invention or industrial design without his/her own authorization and to dispose thereof.
The use of an invention means carrying out the following acts: manufacturing the patented product; applying the patented process; exploiting the patented product or a product obtained by the patented process; circulating, advertising, offering for sale, stocking for circulation of and importing the above mentioned product.
The use of an industrial design means carrying out the following acts: manufacturing products with an appearance embodying the patented industrial design; and circulating, advertising, offering for sale, stocking for circulation of and importing the above mentioned products.
2.5.2 Obligations of the Patent Owners
The patent owner has obligation to: (1) pay remuneration to the inventor(s); (2) pay the annuity or renewal fee for maintenance or renewal of the patent; and (3) use or license the patented invention or industrial design to another person upon decision of the State administrative authority (compulsory license).
For a patent for invention, the patent owner shall be under obligation to permit the owner of the dependent invention using his/her dominant (basic) invention, provided that the dependent invention has been proved to have made an important technical advance in comparison with the dominant invention and to have high economic value. In case the owner of the dominant invention fails, without legitimate grounds, to satisfy the request made by the owner of the dependent invention, the State competent authority may, without permission of the owner of the dominant invention, grant a license to exploit the dominant invention to the owner of the dependent invention.
2.6 Limitations to Patent Rights
The patent rights as mentioned above shall be limited by prior user's rights, compulsory license, and other acts.
2.6.1 Prior User's Rights
The exercise of the prior user's right to invention or industrial design shall not be considered as an infringement of rights of the owner of the patented invention or industrial design. Where a person who, before the filing date or priority date (if any) of an invention or industrial design application, was using or had made substantial preparation toward the using of an invention or industrial design independently created but identical with the invention or industrial design claimed in the application, the said prior user shall be entitled to continue the use after the patent is granted, within the extent and volume of use or substantial preparation toward the using already made. The prior user shall not be entitled to enlarge the extent and volume of use unless it is so permitted by the owner of the patented invention or industrial design. The prior user's right shall not be allowed to be transferred except for the case it is transferred together with the business establishment where the prior user's right is exercised.
2.6.2 Compulsory License
The right to use an invention shall, without permission of the patentee, be granted to another entity or individual upon decision of the State competent authority if (i) the use of the invention is intended for the public interest, non-commercial purposes, national defense, security, prevention and treatment of disease, for people’s nutrition, or meeting other urgent needs of society; (ii) the patentee fails to fulfill the obligation of using the invention after the expiration of four years from the date of filing of the patent application and three years from the granting date of the patent for invention; (iii) the person who wants to use the invention fails, within a reasonable period of time for negotiation on reasonable considerations and commercial conditions, to reach an agreement with the patentee on a license to use such an invention; or (iv) the patentee is regarded as performing an act of anti-competition prohibited under the competition law and regulations.
The right to use the invention under the compulsory license granted by a decision of a State competent authority shall meet the following conditions:
a. The right to use shall be non-exclusive;
b. The right to use shall only be limited to such a scope and duration sufficient to attain the purpose for which the compulsory license was granted, and predominantly for the supply of the domestic market;
c. The licensee of the compulsory license shall not assign the right to use the patented invention to another person, except where the assignment is made together with his/her business establishment and sub-license others to use the patented invention;
d. The licensee of the compulsory license shall pay the patentee/licensor adequate remuneration, taking into account the economic value of the allowed use, in compliance with the remuneration frame provided for by the Government;
e. The patentee of the dominant invention shall also be entitled to grant a license to use the dependent invention on reasonable terms and conditions; and
f. The licensee of compulsory license to use the dominant invention shall not be entitled to assign such right, except with the assignment of the entire right to the dependent invention.
2.6.3 Other Cases
The following shall be exempted from patent infringement:
1. Use of the invention or industrial design for personal needs or non-commercial purposes, or for the purposes of evaluations, analysis, research, teaching, testing, pilot production or for collecting data to carry out procedures to obtain a production license, import or product marketing permit;
2. Use of the invention or industrial design only for the purpose of maintaining the operation of a foreign vehicle in transit or only temporarily entering into the territory of Vietnam;
2.7 Who May File and Where to File Patent Applications
The right to file a patent application for invention or industrial design generally belongs to inventors who have created the invention or industrial design by his/her own efforts and expenses. In case an invention or industrial design is created by the inventors during the course of employment or hire, the entitlement to file patent applications for such invention or design shall belong to the entities or individuals who have invested finance and material facilities to the inventors through employing or hiring, unless otherwise agreed by the parties (the employee invention). In this case, the employees shall enjoy some moral rights over the invented technology in addition to some remuneration. Moral rights of employee-inventor(s) are to be named as inventor in relevant patent letters as well as in any documents in which the invented technology is published or introduced. The remuneration for the employees is stipulated as 10% of benefits obtained from using the invention, and 15% of the sum amounted from each royalty for granting a license to use the invention, unless otherwise agreed by the parties. In addition, persons entitled to file an application may assign that right to other organizations or individuals through written contract or inheritance in accordance with the law.
The right to file patent applications for inventions/industrial designs made by using the State budget belongs to the State.
All applications must be lodged with the National Office of Intellectual Property (NOIP), which has been entrusted to be the State administrative authority under the jurisdiction of the Ministry of Science and Technology. Vietnamese entities and individuals, foreign individuals permanently residing in Vietnam, and foreign entities having an industrial or commercial establishment in Vietnam may file patent applications directly or through an IP agency licensed to practice before the NOIP. Foreign individuals not permanently residing in Vietnam and foreign entities having no industrial or commercial establishment in Vietnam shall file applications for patent rights through a licensed IP agency. As of May 2017 there are 187 local IP agencies licensed to practice in Vietnam before the NOIP.
2.8 "First to File" Principle
Vietnam adopts the “first to file" principle. Accordingly, a patent will be granted to the person who is the first to file patent application for invention or industrial design. If there are two or more patent applications filed for the identical or equivalent inventions or the identical or insubstantially different industrial designs at the same time, all of the applicants are now required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused.
2.9 Priority
Patent applicants for subsequent invention or industrial design application are allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or such a member country.
To enjoy the priority right under the Paris Convention, a subsequent patent application for invention must be filed within twelve months from the filing date of the first application. The corresponding time limit for filing a subsequent industrial design application is six months. If the subsequent application claims different priorities, the relevant date for computing the time limit shall be the date of the earliest priority. It is also possible for the applicant to claim multiple priorities in a single subsequent application derived from different earlier filed applications, provided that the corresponding contents of such earlier applications and the application in question are explicitly indicated.
For PCT applications, the time limit for entering the national phase in Vietnam under both Chapter I and Chapter II of PCT is thirty one months, computed from the priority date. As of 9 May 2007, a late entry of six months counted from the expiration of thirty one month period was allowed, subject to a late entry fee. However, under the new Circular No. 16/2016/TT-BKHCN amending and supplementing a number of articles of Circular No. 01/2007/TT-BKHCN which takes effect as from 15 January 2018, the late entry within 6-month period of PCT application into the Vietnam national phase is no longer be available. The applicants may late file their Vietnam national phase applications only if they can submit verifiable evidence proving that they encounter a force majeure event or an objective obstacle in a reasonable time. The NOIP will consider the evidence of force majeure event or objective obstacle on a case by case basis.
2.10 Patent Applications
All patent applications shall be made in the Vietnamese language, with certain exempt documents that can be filed in another language provided that appropriate Vietnamese translations thereof shall be submitted to the NOIP within a prescribed period of time.
Patent applications need to satisfy the unity requirement. An application for an invention shall be deemed to meet this requirement if it relates to one invention or a group of inventions so linked as to form a single general inventive concept. For industrial designs, the application shall be regarded as meeting the unity requirement if it claims a number of designs of a set of articles that consist of two or more articles which express a single general inventive concept and are used together or for a single purpose; or one design accompanied by one or more other variants of that industrial design, which express a single general inventive concept and are not significantly different from the industrial design.
2.11 Conversion of Patent Application for Invention into Patent Application for Utility Solution and Vice Versa
The applicant is allowed to convert a patent application for invention into a patent application for utility solution and vice versa. The time limit for conversion is any time prior to any Notification either for Refusal or Grant of a patent is made.
2.12 Formality Examination
All patent applications shall be automatically examined as to form within the statutory period of one month from the filing date. However, for PCT-derived applications, the formal examination of such applications shall not be conducted prior to the expiration of thirty-one month period unless the applicant otherwise requests. If the formalities are met, a Decision on Acceptance as to form shall be issued to confirm the accorded filing date and assigned application number. The filing date may be (i) the actual date on which the State administrative authority (i.e., the NOIP) receives the application and stamps the receiving seal thereon; or (ii) the international filing date of the PCT application if national patent application is a PCT-derived application.
If the application is objected due to (i) certain defects in form, (ii) the subject matter of the invention being statutorily unpatentable, (iii) the applicant not being entitled to file application, or (iv) the application being filed in an improper manner, a Notification of Defect(s) of the application shall be issued and the applicant shall be given a two month period counted from the date of the Notification in order to correct such defects. Such a set period of time can be extended once for another two months by filing a request for extension of time to the NOIP. Such informalities shall not affect the filing date.
The applicant may, at any time prior to the Decision on Grant or Decision on Refusal, make amendments or additions to the application, but not beyond the disclosure or so as to change the nature of the invention, or industrial design originally claimed; or a fresh application needed to be filed. The amendments may also be made to the name and address of the applicant, the change of the applicant as a result of the assignment of application or inheritance, merger, acquisition or division of legal entities or the like.
2.13 Publication of Patent Application
All patent applications accepted to examination for patentability shall be published in the Official Industrial Property Gazette for the purpose of opposition. Applications for inventions shall be published in the 19th month from the filing date, or the priority date where priority is claimed; or in the second month from the date of acceptance as to form, whichever is later. Early publication is available at the applicant’s request. An industrial design application shall be published within 2 months computed from the date on which the application is accepted as to form.
A PCT-derived application is usually published in the second month from the date of acceptance of the application.
2.14 Request for Substantive Examination of Patent Applications
The published Vietnam patent applications for inventions shall not be automatically examined on their merits. The examination shall be carried out only upon request for examination from either the applicant or a third party, subject to payment of an appropriate fee. Such a request shall be submitted to the NOIP within 42 months for inventions, counted from the filing date or the date of priority if the priority is claimed, or the application shall be deemed to have been withdrawn. The time limit for making request for substantive examination of a patent application for utility solution is 36 months.
There is no provision on the request for examination for industrial design application under Vietnam IP Law. Substantive examination is automatically conducted for applications for industrial designs.
2.15 Substantive Examination and Grant of Patent
Substantive examination is conducted by the NOIP in order to determine whether the invention or the industrial design claimed therein is patentable.
The time limit for substantive examination for invention applications is 18 months, computed from the publication date of the application if a request for substantive examination is filed prior to the publication date or from the date of receipt of a request for substantive examination if such request is filed after the publication date. For design applications, the substantive examination shall be conducted within 7 months from the date of publication of the application.
The applicant may, any time before the Decision on Grant or Decision on Refusal is made, either at the applicant's discretion or at the request of the NOIP, make amendments to the patent application. However, the amendments are not allowed to go beyond the disclosure originally filed.
If the invention or design claimed in the patent application is rejected as being unpatentable, or if the application contains some deficiencies, the NOIP shall issue a “Notification of Result of Substantive Examination” notifying the applicant of its intention to refuse to grant the patent and the grounds therefor, and set a three month period for the applicant to respond or make necessary amendments and/or arguments, or rectify the deficiencies. Such a set period of time can be extended once for another three months by filing a request for extension of time to the NOIP. If the applicant fails to timely respond within such a prescribed period of time without any request for extension, the NOIP shall officially reject the application by issuing a "Decision on Refusal of Granting Patent.”
Upon receipt of the response from the applicant, the NOIP’s examiner shall continue with the examination of the patent application. The time that the NOIP’s examiner has spent on the examination/consideration of the amendment to the application shall not exceed one thirds of the initial examination duration.
If the patentability requirements are met, or the applicant has properly rectified the deficiencies or successfully rebutted the examiner’s rejection(s), the NOIP shall issue a “Notification of Intention to Grant” notifying the applicant of its intention to grant a patent, and shall set an three month period of time for the applicant to furnish the NOIP with the required fees for issuance, publication, registrar, and the first annuity. The NOIP shall publish the patent in the IP Gazette, Volume B and enter it into the National Register of Industrial Property (National Register).
2.16 Third Party Observation Proceedings
At any time during the period from the publication to the issuance of a patent, any third party shall be entitled to file written opinion with the NOIP on either the grant or refusal to grant of a patent, subject to a prescribed fee. The third party observation must be made in writing and accompanied by the content to be opined, argumentation, and/or evidence to support the third party observation.
2.17 Appeal Proceedings
The applicant or any third party whose rights and interests are directly related to the relevant NOIP’s notification or decision shall be entitled to file an appeal against such a notification or decision. The appeal must be made in writing and submitted to the NOIP within 90 days from receipt of the notification or decision subject to the appeal. In case of disagreement with the NOIP's Decision on Appeal Settlement, the appellant may appeal further to the MOST or initiate a lawsuit at court.
2.18 Invalidation or Cancellation of Patents
At any time after a patent is granted, any party may file a written request with the NOIP to wholly or partially invalidate such patent. The grounds for invalidation may be:
1. The patentee was not entitled to apply for the patent, nor assigned that right from the entitled person; or
2. The patented invention or industrial design did not meet the conditions for patentability at the time the patent was issued.
The patent shall be partly invalidated if the respective part of the subject matter failed to meet the conditions of protection.
The patent's validity may be canceled at the request of any party, based on the grounds that (a) the patentee fails to pay the prescribed annuity or renewal fee as prescribed; (b) the patentee declares a disclaimer of the rights conferred by the patent; or (c) the patent owner no longer exists, and there is no lawful successor.
2.19 Patent Infringements
The following acts shall be considered to infringe the rights of the owner of an invention or industrial design:
1. Use of the patented invention, protected industrial design or another industrial design insufficiently different from it within the validity term of the patent without permission of the patent owner;
2. Use of the patented invention or industrial design without paying compensation in accordance with the provisions on the provisional right.
Trademarks
3.1 Definition and Registrability
A trademark is defined as a sign used to distinguish the goods or services of different organizations and individuals. A trademark shall be registrable if it is a visible sign in the form of letters, words, pictures, figures; including three-dimensional figures or a combination thereof, represented in one or more colors and capable of distinguishing goods or services of the trademark owner from those of others.
The current trademark rules also provide the definitions of collective, certification, associated mark, and well-known mark.
Collective mark means a mark used to distinguish the goods or services of members of an organization that is the owner of the mark from those of non-member entities or individuals.
Certification mark means a mark that is authorized by the owner to other organizations or individuals for use for their goods or services in order to certify characteristics in respect of origin, materials, method or mode of goods manufacture, or service provision, quality, accuracy, safety or other definable characteristics of the goods or services bearing that mark.
Associated marks means trademarks that are registered by the same owner, identical with or similar to each other and are used for identical or similar or related goods and services.
Well-known mark means a mark that has become widely known by consumers throughout the territory of Vietnam.
Registrability
To be registered as a trademark, a mark must be distinctive and must not be one of the signs excluded from trademark protection.
A trademark shall be deemed to be distinctive if:
1. It is created from one or several easily recognized and memorized elements, or from many elements forming an easily recognized and memorized combination.
2. It is not simple devices and geometric figures, or numerals, letters, or words of uncommon languages, except for those which have been widely used and known as a trademark;
3. It is not signs, symbols, pictures or generic names in any language of goods or services, which have been widely and often used by and known to many people;
4. It is not signs indicating the time, place, method of production, kind, quantity, quality, nature, composition, intended purpose, value or other characteristics that are descriptive of the goods or services, except for those signs which have acquired distinctiveness through use before the filing of trademark applications;
5. It is not signs describing the legal status and domain of activity of business entities;
6. It is not signs indicating the geographical origin of goods or services, except for those signs which have been widely used and recognized as a trademark or registered as collective marks or certification marks;
7. It is not signs that are not associated marks but identical with or confusingly similar to a trademark registered in respect of identical or similar goods or services on the basis of a trademark application having an earlier filing date or where priority is claimed, earlier priority date, including the application filed under international treaties to which Vietnam is a party;
8. It is not signs identical with or confusingly similar to another person’s trademark that have been widely used and recognized with respect to identical or similar goods or services prior to the filing date, or where priority is claimed, the priority date of the application;
9. It is not signs identical with or confusingly similar to another person’s trademark already registered in respect of identical or similar goods or services, of which the registration validity has been terminated for not more than 5 years, except where the ground for such termination is non-use of the mark;
10. It is not signs identical with or confusingly similar to another 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 or 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;
11. It is not signs identical with or similar to another person’s trade name already in use, if the use of such signs is likely to cause confusion to consumers as to origin of goods or services;
12. It is not signs identical with or confusingly similar to protected geographical indications if the use of such signs is likely to cause misconceptions to consumers about the geographical origins of goods;
13. It is not signs identical with a geographical indication or consisting of a geographical indication or that are translated or transliterated from a protected geographical indication for wines or spirits, if such signs shall be registered for wines or spirits not originating from the place indicated by that geographical indication;
14. It is not signs identical with or insignificantly different from another person’s industrial design having been protected on the basis of an industrial design application with filing date or priority date earlier than those of the trademark application.
Excluded from registration are the following:
1. Signs identical with or confusingly similar to the national flags or national emblems;
2. Signs identical with or confusingly similar to symbols, flags, armorial bearings, abbreviations or 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 the relevant agencies or organizations;
3. Signs identical with or confusingly similar to real names, aliases, pen names or images of leaders, national heroes or famous persons of Vietnam or foreign countries;
4. Signs identical with or confusingly similar to certification seals, control seals, warranty seals of international organizations having noticed and requested repression of the use of such seals; except for the very seals registered as certification marks in the name of the very organizations;
5. Signs liable to mislead, confuse or deceive consumers as to the origin, nature, intended purposes, quality, value or other characteristics of the goods or services.
3.2 Who May File and Where to File Trademark Applications
Generally, an entity or individual shall be entitled to file an application for a trademark to be used for the goods or services produced or supplied by such entity or individual. An entity or individual legally engaged in the trade of a product manufactured by a third party shall be entitled to file an application for a mark to be used for such product, provided that the manufacturer neither uses such mark for the product nor objects to such filing.
A collective entity legally established shall be entitled to file an application for a collective mark to be used by its members in accordance with the rules on using the collective mark; with regards to signs indicating the geographical origin of goods or services, the entity entitled to file the application shall be the collective entity of entities or individuals engaged in the production or trading of goods or services in the relevant locality. In addition, as for geographical name and signs indicating the geographical origin of various local specialties of Vietnam, the registration of these signs must be approved by a state competent authority. An entity with the function of controlling and certifying the quality, characteristics, origin or other relevant criteria of goods or services shall be entitled to file an application for a certification mark provided that such entity is not engaged in the production or trade of such goods or services. A person entitled to file an application may transfer such right as a result of assignment, inheritance, merger, acquisition or division of legal entities, subject to respective criteria applicable to the entitled person.
Two or more entities or individuals shall be entitled to jointly apply for registration of a trademark in order to become the co-owners thereof, provided that: (i) the use of such trademark shall be on behalf of all of the co-owners or shall be for the goods or services of which all of the co-owners are engaged in the production or trade; and (ii) the use of such trademark shall not cause any confusion to consumers as to the origin of goods or services.
For a trademark protected in a member country of an international treaty to which the Socialist Republic of Vietnam is a party, and which prohibits the representative or agent of the trademark owner from applying for registration of the owner’s trademark, such representative or agent shall not be entitled to file an application for registration of such trademark without the owner’s authorization, except where a legitimate ground is provided.
All trademark applications shall be filed at the NOIP in Hanoi or the NOIP’s branches in Ho Chi Minh City and Da Nang City. Vietnamese entities, individuals, foreign individuals permanently residing in Vietnam and foreign entities having an industrial or commercial establishment in Vietnam may file trademark applications directly, or through a person legally authorised thereby or through an IP agency licensed to practice before the NOIP. Foreign individuals not permanently residing in Vietnam, and foreign entities having no industrial or commercial establishment in Vietnam shall file applications for trademark registration through a licensed IP agency like Vision & Associates.
3.3 "First to File" Principle
The “first-to-file” principle is also adopted for trademark protection in Vietnam. Accordingly, a registration shall be granted to the person who is the first to file a trademark application for registration thereof. If there are two or more trademark applications for registration of the same trademark, for the same goods and/or services, under the same priority conditions, all of the applicants are now required to reach an agreement to proceed with one application only. Without such an agreement, all those applications shall be refused. In addition, in case there are several applications filed by the same person for identical trademarks for identical goods/services, a trademark registration may only be granted for a trademark claimed in a valid application having the earliest date of priority or filing date among the applications that satisfy all the conditions for registration.
However, exceptions to the “first-to-file” principle occur in cases of well-known trademarks or those that have been widely used and recognized. Well-known status or wide use of a trademark will be taken into account by the NOIP when appropriate in disputes of priority right of different applications. As a matter of law, a comprehensive list of statutory criteria for determination of whether a trademark is well-known or widely used and recognized is now provided for in the current trademark rules.
3.4 Priority
Trademark applicants for subsequent trademark application are now allowed to claim priority derived from the first application for the same subject matter filed in Vietnam or a member country of an international treaty having provisions on priority rights, to which the Socialist Republic of Vietnam is a party, or a country having agreed with Vietnam to apply such provisions, provided that the applicant is a national of Vietnam or such member country. To enjoy the priority right under the Paris Convention, an application must be filed within six months from the filing date of the first application.
3.5 Trademark Applications
The following documents are required for a trademark application:
1. Request for trademark registration, made in the prescribed form;
2. Documents, samples, information identifying the trademark claimed for protection in a trademark application;
3. Document attesting the entitlement to file an application if the applicant has been assigned that right from another person;
4. Priority document if priority is claimed;
5. Power of Attorney; and
6. Filing fee.
The Request should consist of the following particulars:
1. The name and address of the applicant;
2. The presentation and description of the claimed trademark;
3. The name and address of a licensed IP agent if the application is filed through an agent;
4. Priority information including the country where the corresponding application was filed, the filing date and the number of the priority application; and
5. The designation of goods and/or services to bear the claimed trademark in accordance with the International Classification of Goods and Services under the Nice Agreement.
The application must describe the trademark, including the distinctiveness of the mark, by pointing out each of the elements forming the mark and the significance of the mark. If the mark contains words in a foreign language, the pronunciation and the Vietnamese translation thereof must be specified. In general, the features constituting the distinctiveness of the mark should be identified.
For designation of goods and services, it is required to specify particular goods and/or services. Multiple class applications are permitted in Vietnam, that is, the applicant can claim up to 45 classes under one application. The goods and/or services claimed under the application must be classified based on the International Classification of Goods and Services under the Nice Agreement. Vietnam has long adopted the International Classification of Goods and Services even though it has not yet acceded to the Nice Agreement. As of 1 January 2017, the NOIP has acceded to the 11th edition of International Classification for Goods and Services.
3.6 Examination
On filing, each trademark application shall automatically be examined by the NOIP with respect to formality requirements. The duration for formality examination is one month counted from the filing date. If the application satisfies formality requirements, it shall be accepted as to form and the applicant shall be furnished with a “Decision on Acceptance”. If the application fails to meet formalities, the NOIP shall object to the application by issuing a “Decision on Refusal of Acceptance of Application” or by requesting the applicant to make corrections or amendments (in case of rectifiable deficiencies).
The application shall be published in the IP Gazette within two months from the date of acceptance. NOIP shall perform the substantive examination on the published application within a statutorily set period of nine months from the publication date. During this process, the trademark in question is examined to consider whether it is one of the signs excluded from registrability (unregistrable signs) and whether it possesses distinctiveness. Any time before the NOIP issues any notifications of refusal or grant of a registration, the applicant may request amendments of the trademark application. However, the applicant cannot expand the items of goods and services designated in the application originally filed. Adding other items of goods or services requires a new application. The NOIP may allow amendment to be made to the trademark itself.
After the mark has been examined as to substance, if the trademark is found to be unregistrable, the NOIP shall issue a “Notification of Examination Result of Application” informing the applicant of its intention to refuse to grant a certificate of registration and the grounds therefor, or of deficiencies or amendments that should be corrected or made; giving three months for the applicant to respond or make necessary amendments. Such a set period of time can be extended once for another three months by filing a request for extension of time to the NOIP. If the applicant fails to reply within the prescribed period of time, if the deficiencies are not properly corrected, or if the response is unsatisfactory, the NOIP shall officially reject the application by issuing a “Decision on Refusal to Grant Certificate of Trademark Registration.” If the trademark is registrable, the NOIP will issue a certificate for registration of the trademark, which shall subsequently be published in the IP Gazette, Volume B and entered into the National Register.
3.7 Similarity of Marks
The similarity between a claimed mark and a prior mark (widely called “cited mark” in Vietnam) is determined by comparison of the two marks in terms of structure, content, appearance, pronunciation, and concept in order to measure the impacts of the marks to the public. The goods/services bearing the claimed mark must also be compared with the goods/services under the prior mark.
A claimed mark will be considered to be identical to a cited mark if they are identical in structure, content, concept (meaning), and visual presentation. A claimed mark will be considered to be confusingly similar to a cited mark if: (i) the claimed mark is similar to the cited mark in structure or/and content or/and pronunciation or/and concept (meaning) or/and visual presentation to an extent that is likely to make consumers think that the two marks are the same or that each is a variation of the other or that they are created from one origin; or (ii) the claimed mark is a transliteration or translation of the cited mark (if the cited mark is well-known mark).
3.8 Similarity of Goods and Services
The determination of confusing similarity of marks is only limited to related goods and services that are considered to be of “the same kind.” If the goods or services claimed in the application filed are completely different from, and do not have any association with those bearing a prior mark, then no confusing similarity is established. The similarity of goods is judged on factors such as their nature (element, structure), function and purposes of use, and sources and channels of sale or distribution. Similarity in services is determined in a similar way. In essence, the test of similarity in goods or services is whether confusion of the public is likely to occur.
3.9 Well-known Trademarks
As a member of the Paris Convention, Vietnam commits to protect well-known trademarks. The following criteria shall be taken into account in considering the well-known status of a mark:
1. The number of relevant consumers who are aware of the mark through purchase or use of the goods or services bearing the mark or through advertising;
2. The territorial extent of circulation of the goods or services bearing the mark;
3. The turnover of the sale or supply of the goods or services bearing the mark, or of the volume of the goods sold or the services supplied;
4. The period of continuous use of the mark;
5. Widespread goodwill of the goods or services bearing the mark;
6. The number of countries granting protection to the mark;
7. The number of countries recognizing the mark as well known;
8. The value of the mark in assignment, licensing, investment capital contribution.
3.10 Protection Term and Renewal
Under the current rules, a certificate of trademark registration is effective on the granting date and lasts for ten years from the filing date. The term can be renewed for unlimited ten-year periods. To renew the validity of a certificate, the grantee must apply for renewal and pay the renewal fee.
3.11 Rights and Obligations of Trademark Owners
A trademark owner shall be entitled to use or allow others to use the registered trademark. The trademark owner also has the right to prevent others from using the trademark without his/her own authorization. Also, the trademark owner is entitled to dispose such a right to use the trademark in accordance with the laws.
The use of a trademark means affixing the protected trademark to goods, packages of goods, means for conducting business, means for supplying services and transaction documents in business activities; circulating, offering for sale, advertising for sale, or storing for sale, of goods bearing the protected trademark; and importing goods or services under the protected trademark.
The owner of a trademark shall have the obligation to use the trademark continuously. Where the trademark has not been used for a consecutive period of 5 years and over, the validity of the ownership of the trademark shall be terminated.
3.12 Third Party Observation Proceedings
At any time during the period from the date of publication to the issuance of a certificate, any third party shall be entitled to file a written opinion with the NOIP on the grant of or refusal to grant a certificate of trademark registration, subject to a prescribed fee. The third party observation must be made in writing and accompanied by content to be opined, argumentation, and/or evidence to support the third party observation.
3.13 Appeal Proceedings
The applicant or any third party whose rights and interests are directly related to the relevant NOIP’s notification or decision shall be entitled to file an appeal against such a notification or decision. The appeal must be made in writing and submitted to the NOIP within 90 days from receipt of the notification or decision subject to the appeal. In case of disagreement with the NOIP's Decision on Appeal Settlement, the appellant may appeal further to the MOST or initiate a lawsuit at court.
3.14 Invalidation and Cancellation of Certificate of Trademark Registration
At any time after a trademark is registered with the NOIP, any party may file a written request with the NOIP to wholly or partially invalidate such trademark. The grounds for invalidation as a whole are that:
1. The trademark owner was not entitled to apply for registration of the trademark, nor assigned that right from the entitled person; or
2. The registered trademark did not meet the conditions for protection at the time the certificate was issued.
The certificate of registration shall be partly invalidated if the respective part of the subject matter failed to meet the conditions of protection. The time limit for cancellation of a registered trademark is five years counted from the granting date, except that the certificate of registration has been granted based on the applicant’s untruthfulness.
The certificate’s validity may be canceled at the request of any party, based on the grounds that (a) the trademark owner fails to pay the renewal fee as prescribed; (b) the trademark owner declares a disclaimer of the rights conferred by the certificate; (c) the trademark owner no longer exists and there is no lawful successor; (d) the trademark has not been used by its owner or his/her licensee without reasonable grounds for 5 consecutive years prior to the date of a request for termination of the validity of the trademark; (e) the trademark registration certificate owner of a collective mark fails to supervise or ineffectively supervises the implementation of the rules on using the collective mark; or (f) the Trademark Registration Certificate owner of a certification mark violates the rules on using the certification mark or fails to supervise or ineffectively supervises the implementation of such rules.
3.15 Assignment and Licensing
Only registered trademarks may be assigned or licensed to other persons. An assignment agreement regarding a trademark shall only become effective upon registration with the State administrative authority of industrial property. The license for use of the trademark shall, on the other hand, be effective as to the signatory parties upon agreement therebetween, but shall not legally effect a third party until it is registered with the State administrative authority of industrial property. The validity of a license for use of registered trademark shall be terminated ex-officio upon the termination of the licensor’s right.
As far as the format is concerned, all the assignment or license contracts must be made in writing and contain, in terms of contents, certain statutory provisions. Provisions that are defined as unfair restrictions on the licensee are prohibited from inclusion in a license contract. As a condition, the assignment or license of a trademark will not be allowed if it causes confusion in terms of properties or origin of goods and services bearing the mark in question. Also, the trademark licensee shall have the obligation to indicate on goods and packaging thereof that the goods have been manufactured under a trademark license contract.
The use of a collective mark shall not be licensed to entities or individuals other than members of the owner of the collective mark.
3.16 Infringement and Remedies
Infringement
The following acts, if performed without permission of the trademark owner, shall be considered as infringement of the rights over the registered trademark:
1. Using signs identical with a protected trademark for goods or services identical with those in the list registered with the trademark;
2. Using signs identical with a protected trademark for goods or services similar or related to those in the list registered with the trademark if such use is likely to cause confusion as to the origin of the goods or services;
3. Using signs similar to a protected trademark for the goods or services identical with, similar or related to those in the list registered with the trademark, if such use is likely to cause confusion as to the origin of the goods or services;
4. Using signs identical with or similar to a well-known mark, or signs in the form of translation or transliteration of a well-known mark for any goods or services, including those dissimilar or unrelated to the goods or services bearing the well-known mark, if such use is likely to cause confusion as to the origin of the goods or services or misconception as to the relationship between the user of such signs and the owner of the well-known mark.
Remedies
As a matter of law, trademark owners shall be entitled: (i) to take technological measures to prevent acts of infringement of trademark rights; (ii) to request that the accused infringers terminate the infringing acts, publicly apologize and rectify, and compensate for damages; (iii) to request the State competent authorities to handle the trademark infringement; and (iv) to institute a lawsuit before a competent court or arbitration proceedings to protect their legitimate rights and interests.
In general, administrative, civil, and criminal remedies are available to enforce trademark rights in case of infringement. Normally, before taking any legal action, the trademark owner should send a warning letter stating the legal background of the case and request a cease and desist letter to be signed by the infringer. In fact, in many cases, given the low level of legal knowledge, infringers are genuinely ignorant of their infringements.
If there is a failure to settle the infringement amicably, the trademark owner should take legal action against the infringer. Resorting to administrative action, a request should be lodged with an IPR infringement determination authority first for determination/confirmation on infringement before requesting various administrative agencies to enjoin the infringer. If the trademark owner files a civil lawsuit for a first instance, trademark related cases can be handled by local People’s Court(s) at both district and provincial level. People’s District Courts are entitled to settle trademark related cases under first-instance procedure; except for “foreign elements” involving civil cases. Trademark cases involving “foreign elements” are subject to the settlement of the People’s Courts of provinces as courts of first instance . The “foreign elements” in the context of settlement of civil cases by Vietnamese courts are defined as the following: (i) at least one party is a foreign entity (including overseas Vietnamese); (ii) the parties are Vietnamese but the grounds for establishment, change or termination of the transaction are governed by foreign law, or the assets in respect of the transaction are located overseas. Criminal remedies are available only for serious cases constituting criminal offenses, where the court of jurisdiction is also the provincial People’s Court.
