TRADEMARK LAW OF VIETNAM
Vietnamese legislation relating to Intellectual Property is encompassed in the Civil Code of Vietnam, which took effect on July 1, 1996. Vietnam is a member of the:
- Paris Convention for the Protection of Industrial Property;
- Convention establishing the World Intellectual Property Organization;
- Patent Cooperation Treaty (PCT); and
- Madrid Agreement concerning the International Registration of Marks.
Vietnam adopted (a) the International Classification of Goods and Services for the purpose of the registration of trademarks, and (b) the International Patent Classification (IPC), but Vietnam is not an official member of the Nice Agreement and Strasbourg Agreement, respectively.
TRADEMARK REGISTRATION IN VIETNAM
Vietnam follows the first-to-file principle when determining priority of trademark rights where two or more applicants apply to register identical or confusingly similar marks in respect of the same or similar goods or services. Protectable marks include letters, words, numbers, devices, pictures, photographs, three-dimensional signs or any combination of these elements, in one or more colors.
Vietnam provides for registration of trademarks, service marks, collective marks and three-dimensional marks.
Vietnam, through the National Office of Industrial Property ("NOIP"), the government entity with jurisdiction over patent and trademark matters, does not permit the registration of the following marks:
- marks that are simple, geometric figures or a collection of figures or letters incapable of being pronounced;
- generic or descriptive marks;
- marks that are misleading or deceptive as to the origin, quality, nature or the purpose of the product or services or the manufacturer or supplier thereof;
- marks representing national flags, emblems, portraits of national leaders or heroes of Vietnam and of foreign nations; geographic or place names of Vietnam and foreign countries, unless permission is obtained from the competent authority of the foreign country;
- marks that are identical or confusingly similar to a registered mark or a mark for which an application with an earlier priority has been filed;
- marks that are identical or confusingly similar to (a) a well-known mark, whether the mark is registered or not, (b) a protected trade name or a registered appellation of origin, (c) a registered industrial design or a design for which an application with earlier priority has been filed, and (d) a copyrighted character or work.
Vietnam does not require evidence of use at the time of the filing of an application or for renewal. However, Vietnam affords a grace period of five years regarding non-use.
Trademark applications must be filed on an official form which requires the name, address and nationality of the applicant, as well as the description of the mark, the list of goods and/or services and the international classification.
In addition, the applicant must supply 20 specimens of the mark, a notarized power of attorney, and certified copies of any priority documents, with an English translation if the documents are in a language other than English.
Paris Convention priority may be claimed if the application is filed within six months of the first application file date. Trademark applications are initially examined by the NOIP as to form and then as to substance. If the application documents are in correct form, the NOIP issues a notice of acceptance ("NOA") as to compliance with the formal conditions and to confirm the filing date and application number. The NOA is issued within three months of the submission of the application. If the application is incomplete, the applicant is afforded two months to amend the application.
After the trademark application is accepted as to form, the application is examined for registrability.
The NOIP determines whether the mark is available for use or whether it conflicts with a prior right.
The examination as to registrability must be completed within nine months of the NOA. If the mark is accepted, a Certificate of Trademark Registration is granted and a notice of registration is published in the Official Gazette of Industrial Property.
If a mark is rejected, refused or invalidated, the applicant can appeal the rejection to the NOIP, who must examine and settle the matter within 30 days of receiving the petition. A further appeal can be made to the Minister of the Ministry of Science, Technology and Environment (MOSTE) within three months from the date of the NOIP's Notice. An appeal can also be filed to the courts.
A trademark is protected in Vietnam for 10 years from the date of filing. Trademark registrations can be renewed for successive 10-year periods. Requests for renewal must be filed six months prior to the expiration date. The NOIP will accept renewal applications where the registration has expired up to six months after the expiration date upon payment of additional fees.
Vietnam does not provide for an official opposition procedure. However, the owner of a trademark who discovers that his mark has been appropriated or a mark confusingly similar has been accepted for registration, can file an unofficial opposition. The submission to the NOIP must provide the reasons why opposition is sought, together with evidence to support the position.
More protection is provided for trademark registrations filed under the Madrid Agreement as all such marks are published in the gazette "Les Marques Internationales" prior to being accepted for protection in Vietnam.
If a trademark has been registered contrary to the law or there is a prior registration for an identical or similar mark in respect of similar goods or services, an interested party can move to cancel the registration by filing a cancellation action to the NOIP Appeal Board.
Cancellation actions can be filed:
- if the mark has been registered for at least five years and no use has occurred in Vietnam during the five-year period immediately preceding the cancellation action and the owner has no legitimate reason for non-use of the mark.
- If a mark has not been used for five years and no cancellation action is taken against it, then, in principle, the mark is protected.
- where the mark is identical with or confusingly similar to a well-known mark as defined in Article 6 of the Paris Convention or where the mark of another has been widely used and is widely recognized in Vietnam, regardless of whether the mark is registered in Vietnam. In order to show that a mark is well known outside Vietnam, evidence of sales, advertising, overseas registrations and the history of the use of the mark should be provided, together with documentary evidence to support the position.
- where the registrant ceases to exist and no successor has the right to use the mark; where the trademark owner had no legal right to apply for trademark protection (i.e., the trademark owner did not carry on or did not intend to carry on lawful production or service activities or the applicant is not authorized by a trademarked product's manufacturer to register the trademark).
ASSIGNMENT AND LICENSING
Registered trademarks can be assigned and the assignment can be made either with or without the goodwill of the business, provided it is unlikely to be confusing. Trademarks can be assigned in respect of all or a portion of the goods or services for which they are registered. In certain cases, the assignment must be approved by the MOSTE and after such approval is obtained, the deed of assignment must be registered with the NOIP in order for the assignment to be enforceable.
A licensing agreement or a registered user's agreement must be in writing and signed by both parties.
The agreement must be recorded with the NOIP. A licensing or registered user's agreement automatically expires when the Certificate of Registration expires or the registration is declared invalid.
In certain cases, the agreements must be approved by the MOSTE, and after such approval is obtained, the agreements must be registered with the NOIP in order to be enforceable.
Enforcement action in Vietnam is effected through administrative or judicial action. Administrative action is taken by the relevant government department including the Ministry of Trade (MOT), the General Department of Customs (GDC), and the Economic Police (EP).
The MOT has general responsibility for the enforcement of trademarks (and patents). Infringers are subject to warning, administrative penalty or prosecution under the Criminal Code, depending upon the seriousness of the infringement.
Complaints are filed with the MOT, the EP, or where appropriate, the GDC, in the province or city where the infringement has occurred. In mid-1995, the GDC implemented new rules which provide for the seizure of export goods bearing foreign trademarks where the manufacturer can not prove that the goods were made under a legitimate license or with the permission of the trademark owner. When filing a complaint, the complainant must provide documentary evidence of ownership of the infringed mark and proof of infringement, including samples of both the infringing and genuine articles.
If the infringing mark is not identical to the registered mark, but an imitation or reproduction, the NOIP will first determine whether the product in question is confusing similar. The NOIP is required to determine whether infringement has occurred within one to three months from when the complaint is filed.
It should be noted that Vietnamese authorities, including the licensed IP agents, are unable to assist with infringements unless the complainant has registered the trademark that is being infringed. In addition, the licensed IP agents may first insist upon obtaining an opinion letter from the NOIP confirming that the alleged infringement, is, in fact, infringement, before taking any action, such as issuing a cease and desist letter.
In Vietnam, informal measures are often more effective against infringement than pursuing administrative or judicial remedies. Such informal measures include the sending of warning letters and meeting with the infringers.
Many, though not all, infringers are ignorant of the law and may not realize that their acts are unlawful. It is difficult, particularly for small shop owners, to know if the goods offered to them by wholesalers and others are counterfeits.
A legal opinion from the NOIP confirming that the goods are counterfeits can often persuade the infringers to discontinue the sale or production of counterfeits. In addition, personal contact with the infringer may provide the trademark owner with valuable information regarding the source of the counterfeits, which information may be beneficial at a later date should investigations be necessary to obtain sufficient evidence to pursue formal action.