CHAPTER
1
General
Provisions
Article
1 Objectives and Scope of Application
This
Decree makes detailed provisions on industrial property
in order to provide guidelines for the implementation of
the provisions on industrial property rights in Chapter
II and the provisions on transfer of industrial property
rights in Chapter III of Part 6 of the Civil Code passed
by the National Assembly of the Socialist Republic of Vietnam
on 28 October 1995.
The
provisions in this Decree shall be applicable only to inventions,
utility solutions, industrial designs, trademarks and appellations
of origin of goods and not to other objects of industrial
property.
Article
2 Definitions and Terms
In
this Decree, the following terms shall have the meanings
ascribed to them hereunder:
1.
Civil Code means the Civil Code of the Socialist Republic
of Vietnam passed by the National Assembly of the Socialist
Republic of Vietnam on 28 October 1995;
2.
Paris Convention means the Convention on Protection of Industrial
Property signed in Paris in 1883 as amended in Stockholm
in 1967;
3.
PCT Treaty means the Patent Co-operation Treaty signed in
Washington in 1970 as amended in 1984;
4.
Madrid Agreement means the Agreement on International Registration
of Trademarks signed in Madrid in 1891 as amended in 1979;
5.
Applicant means a person who files an application for a
certificate of protection of an invention, utility solution,
industrial design, trademark or appellation of origin of
goods;
6.
Certificate of protection means a certificate of protection
of an invention, utility solution, industrial design, trademark
or appellation of origin of goods;
7.
Trademark includes service marks;
8.
Collective trademark is a trademark used by a collective
of individuals, legal entities or other entities, where
the trademark is used independently by each member in accordance
with the regulations provided by such collective;
8A.
Affiliated trademarks means similar trademarks registered
by the same entity for the purpose of using them for products
or services which are of a same, similar or related kind;
and identical trademarks registered by the same entity for
the purpose of using them for similar or related products
or services.
8B.
Well-known trademark means a trademark which has been continuously
used for prestigious goods so that such trademark has become
widely known.
9.
Author(s) of an invention, utility solution or industrial
design means the person(s), who by his or her (or their)
creative work, directly create(s) an invention, utility
solution or industrial design;
Persons
who provide technical and physical facilities or financial
assistance or support for an author without taking part
in the creation of an invention, utility solution or industrial
design through creative work shall not be considered authors
of an invention, utility solution or industrial design.
Article
3 Calculation of Time-Limits
The
time-limits referred to in this Decree shall be determined
in accordance with articles 158, 159, 160, 161 and 162 of
the Civil Code.
CHAPTER 2
Objects
of Industrial Property Protected by the State
Article
4 Inventions and Utility Solutions
1.
A technical solution shall be recognized as new compared
to the technical level of the world as stipulated in articles
782 and 783 of the Civil Code when it satisfies all of the
following conditions:
(a)
The technical solution stated in the application for a certificate
of protection of an invention or utility solution is not
the same as any solution which has been described in any
application for a certificate of protection of an invention
or utility solution filed with the authorized body on an
earlier priority date.
(b)
Prior to the priority date stated in the application for
a certificate of protection of an invention or utility solution,
the technical solution described in the application has
not been publicly disclosed inside and/or outside Vietnam
by way of use or description in any form in the following
information sources to an extent that a person of average
professional knowledge in the relevant field may realize
such solution:
·
information sources relating to overseas inventions or utility
solutions, calculated from the date of publication;
·
other information sources in any information-containing
objects (such as printed matters, film, photograph, magnetic
tape, compact disc, optical disc, and so forth), calculated
from the date on which such objects are first circulated;
·
mass media (such as broadcast, transmission and television),
calculated from the date of publication of the news;
·
scientific papers, lectures, and so forth, if recorded by
any means calculated from the date of presentation or lecture;
·
exhibitions, calculated from the date of display of exhibits.
Any
information shall be deemed not to be publicly disclosed
whilst it is known to only a certain number of concerned
persons.
A
solution shall continue to be deemed to remain new in cases
where it has been revealed, without the permission of the
applicant, by other persons who learnt about such information
within six months prior to the date on which the application
for a certificate of protection of an invention or utility
solution is filed.
2.
A technical solution shall be recognized as creative as
stipulated in article 782 of the Civil Code when that solution
is the result of creative work; and, based on the technical
level in the country and abroad as at the priority date
stated in the application for a certificate of protection
of an invention or utility solution, the solution does not
obviously arise in the mind of a person of average professional
knowledge in the relevant technical field.
3.
A technical solution shall be recognized as capable of being
applied as stipulated in articles 782 and 783 of the Civil
Code when, on the basis of the nature of the solution as
described in the application for a certificate of protection
of an invention or utility solution, it may be implemented
in current or future technical conditions and the results
described in the application for a certificate of protection
may be obtained.
4.
The following objects shall not be protected by the State
as inventions or utility solutions:
·
scientific intentions, principles and discoveries;
·
methods and systems of economic organization and management;
·
methods and systems of education, teaching and training;
·
methods of training of domestic animals;
·
language systems, systems of information, data classification
and arrangement;
·
designs and planning layouts for construction projects,
projects of territorial planning and zoning;
·
solutions for appearance of products which are aesthetic
and not technical in nature;
·
defined signs, schedules, rules and laws, symbols;
·
computer software, designs and layout of chips, mathematical
models and diagrams used for reference and similar forms;
·
breeds of animal and seeds of plants;
·
methods of disease prevention, diagnosis and treatment for
human beings and animals;
·
processes of a biological nature (except for microbiological
processes) for production of plants or animals.
Article
5 Industrial Designs
1.
An industrial design shall be recognized as new in the world
as stipulated in article 784 of the Civil Code when it satisfies
all of the following conditions:
(a)
Being substantially different from any industrial design
described in an application for a certificate of protection
of an industrial design filed with the authority on an earlier
priority date.
(b)
Being substantially different from any similar industrial
design published in any of the following information sources:
·
information sources relating to the protection of industrial
designs overseas, calculated from the date of publication;
·
other information sources listed in article 4.1(b) of this
Decree with relevant details applied as suitable for industrial
designs.
(c)
Prior to the priority date stated in the application for
a certificate of protection, the industrial design described
in the application has not been publicly disclosed inside
and/or outside Vietnam to an extent that a person of average
professional knowledge in the relevant field may implement
such industrial design; disclosure may be in the form of
use or description; information sources through which the
industrial design is disclosed shall be the same as stipulated
in (b) above.
For
the purpose of this clause, two industrial designs shall
not be considered substantially different if they are only
different in the features of their external appearance which
may not easily be recognized and memorized and which cannot
be used to distinguish generally between those two industrial
designs.
2.
An industrial design may be used as a model for manufacturing
handicrafts or industrial products as stipulated in article
784 of the Civil Code if products with the external appearance
of the industrial design may be put into mass production
by industrial or handicraft making methods.
3.
The following objects shall not be protected by the State
as industrial designs:
·
external appearance of a product which may be easily created
by a person of average professional knowledge in the relevant
field;
·
external appearance which results naturally from the technical
specifications of products or which only bears technical
specifications;
·
external appearance of civil or industrial construction
works;
·
appearance of a product which cannot be seen whilst in use;
·
appearance of a product which only has an aesthetic value.
Article
6 Trademarks
1.
A symbol used as a trademark shall be recognized as possessing
distinctive characteristics as stipulated in article 785
of the Civil Code when it satisfies all of the following
conditions:
(a)
Being created from one or more distinctive, recognizable
elements or from elements which are combined into a distinctive
or recognizable whole and not being one of the symbols provided
for in clause 2 of this article.
(b)
Not being identical or similar to any extent that may cause
confusion with any trademark of another person which is
currently protected in Vietnam (including any trademark
which is currently protected in accordance with an international
treaty to which Vietnam has acceded).
(c)
Not being identical or similar to any extent that may cause
confusion with any trademark which has been described in
an application for a certificate of protection of a trademark
filed with the authority on an earlier priority date (including
an application in respect of a trademark filed in accordance
with an international treaty to which Vietnam has acceded).
(d)
Not being identical or similar to any extent that may cause
confusion with any trademark of another person in respect
of which a certificate of protection has expired or been
suspended for less than five years, except where the certificate
of protection has been suspended for failure to use the
trademark in accordance with article 28.2(c) of this Decree.
(e)
Not being identical or similar to any extent that may cause
confusion with any trademark of another person deemed to
be well-known (in accordance with article 6bis of the Paris
Convention) or to any trademark of another person currently
being widely used and recognized.
(f)
Not being identical or similar to any extent that may cause
confusion with any protected trade name or with any protected
geographical instruction (including appellation of origin
of goods).
(g)
Not being identical to any industrial design which is protected
or in respect of which an application for a certificate
of protection has been filed on an earlier priority date.
(h)
Not being identical to a figure or character which is already
under the copyright of another person, except where permission
has been granted by such person.
2.
The following signs shall not be protected by the State
as trademarks:
(a)
Signs which do not possess distinctive characteristics,
such as simple shapes and geometrical shapes, numerical
figures, alphabetical letters, letters which cannot be pronounced
as a word, or letters of foreign languages which are not
commonly used, except where such signs have previously been
widely used and recognized.
(b)
Signs, conventional symbols, common figures or denominations
of goods in any language which have been widely and regularly
used and known by many people.
(c)
Signs expressing time, place, manufacturing process, type,
quantity, quality, nature, composition, purpose, or value
and which are descriptive of products, services or origins
of goods or services.
(d)
Signs which mislead, confuse or deceive consumers as to
the origin, nature, purpose, quality or value of goods or
services.
(e)
Signs which are identical or similar to official stamps
of control, quality, warranty, and so forth, of Vietnam,
foreign countries or international organizations.
(f)
Signs, names (including photographs, names, pseudonyms or
pen-names), shapes or symbols which are identical or similar
to any extent that may cause confusion with the image of
the national flag, national emblem, national leaders or
heroes, geographical denominations, or organizations of
Vietnam or foreign countries, except where permitted by
relevant competent authorities or persons.
Article
7 Appellations of Origin of Goods
1.
In order to be protected, an appellation of origin of goods
must be the geographical name of the country or locality
in which goods are manufactured; and such goods must bear
typical characteristics or qualities due to the unique geographical
conditions (including natural and human elements) of that
country or locality.
If
the above country or locality is not Vietnam or does not
belong to Vietnam, the relevant appellation of origin of
goods shall only be considered for protection in Vietnam
if that appellation of origin of goods is under protection
in the country or locality bearing such geographical name.
2.
The following objects shall not be protected by the State
as appellations of origin of goods:
(a)
Instructions related to origin of goods not being geographical
names (including symbolic signs of the country or locality
in which such goods originated which are not geographical
names of such country or locality).
(b)
An appellation of origin of goods which has become the common
name of goods and is no longer functioning as instructions
related to the origin of such goods.
CHAPTER 3
Establishment
of Industrial Property Rights
Article
8 Basis on Which Industrial Property Rights and Rights of
Authors of Inventions, Utility Solutions and Industrial
Designs Arise
1.
Industrial property rights with respect to an invention,
utility solution, industrial design, trademark or appellation
of origin of goods in accordance with article 780 of the
Civil Code and rights of authors of inventions, utility
solutions or industrial designs in accordance with article
800 of the Civil Code shall only arise upon the issuance
of a certificate of protection by the authorized body in
accordance with the procedures provided for in this Chapter.
2.
Industrial property rights with respect to a trademark in
accordance with article 780 of the Civil Code may also arise
upon the acceptance by the authorized State body of protection
of a trademark which has been internationally registered
in accordance with the Madrid Agreement.
3.
Industrial property rights with respect to a well-known
trademark shall arise upon a decision on recognition of
the well-known trademark by the authorized State body.
Article
9 Certificate of Protection, Registration of Appellations
of Origin of Goods, Acceptance of Protection of Internationally
Registered Trademarks and Recognition of Well-Known Trademarks
1.
A certificate of protection issued by the authorized State
body is the sole certificate of the State evidencing the
industrial property rights of the owner who is issued the
certificate of protection or the rights of the author of
an invention, utility solution or industrial design and
certifying the degree of protection of the industrial property
right.
Certificates of protection shall be valid throughout the
Socialist Republic of Vietnam.
The Department of Industrial Property under the Ministry
of Science, Technology and Environment shall be the above
authorized State body.
2.
Kinds of certificates of protection and duration of validity:
(a)
A certificate of protection of an invention shall be the
exclusive patent in respect of the invention, which shall
take effect from the date of issuance of the certificate
for a period of twenty (20) years calculated from the date
of submission of the proper application.
(b)
A certificate of protection of an utility solution shall
be the exclusive patent in respect of the utility solution,
which shall take effect from the date of issuance of the
certificate for a period of ten (10) years calculated from
the date of submission of the proper application.
(c)
A certificate of protection of an industrial design shall
be the exclusive patent in respect of the industrial design,
which shall take effect from the date of issuance of the
certificate for a period of five years calculated from the
date of submission of the proper application and may be
extended for two successive periods of five years each.
(d)
A certificate of protection of a trademark of goods shall
be the certificate of registration of the trademark of goods,
which shall take effect from the date of issuance of the
certificate for a period of ten (10) years calculated from
the date of submission of the proper application and may
be extended for successive periods of ten (10) years each.
(e)
A certificate of protection of an appellation of origin
of goods shall be the certificate of the right to use the
appellation of origin of goods, which shall take effect
for an indefinite period.
3.
Decisions on acceptance of protection of appellations of
origin of goods, internationally registered trademarks and
well-known trademarks:
A decision on registration of an appellation of origin of
goods, a decision on acceptance of protection of an internationally
registered trademark or a decision on recognition of a well-known
trademark issued by the authorized State body shall be the
basis for evidencing the relevant appellation of origin
of goods or trademark protected by the State and for determining
the scope of protection of such object.
The Department of Industrial Property under the Ministry
of Science, Technology and Environment shall be the above
authorized State body.
Article
10 Duration of Protection; Provisional Rights of Owners
of Inventions, Utility Solutions or Industrial Designs
1.
Industrial property rights and rights of authors of inventions,
utility solutions or industrial designs under a certificate
of protection shall be protected by the State from the date
of issuance of the certificate of protection to the date
of expiry of the duration of validity or the date of termination
of validity of the certificate of protection.
Industrial
property rights with respect to trademarks under a certificate
of international registration shall be protected by the
State from the date of publication of the international
registration in the Official Gazette of International Trademarks
of the World Intellectual Property Organization to the date
of expiry of the duration of validity of the international
registration in accordance with the Madrid Agreement.
Industrial
property rights with respect to a well-known trademark shall
be protected for an indefinite period calculated from the
date on which the trademark is recognized as a well-known
trademark as stated in the decision on recognition of the
well-known trademark.
An
appellation of origin of goods shall be protected for an
indefinite period calculated from the date on which the
authorized State body issues a decision on registration
of the appellation of origin of goods, except where factors
arise which cause distinctive characteristics to no longer
exist as stipulated in article 28.2(e) of this Decree.
2.
During the period from the date of publication of the application
for a certificate of protection of an invention, utility
solution or industrial design in the Official Gazette of
Industrial Property to the date of issuance of a certificate
of protection, if any person commences to use an invention,
utility solution or industrial design which is identical
to the invention, utility solution or industrial design
stated in the application, the applicant has the right to
notify that user of his or her submission of the application.
If the user of the invention, utility solution or industrial
design continues his or her use notwithstanding notice having
been given, after a certificate of protection has been issued,
the owner of the certificate of protection has the right
to request that the person using the invention, utility
solution or industrial design make compensation equivalent
to the payment for the transfer of the right to use the
relevant object of industrial property (licence) to other
persons for a similar period.
Article
11 Application for Certificate of Protection
1.
An application for a certificate of protection shall be
a package of documents representing the request of the applicant
for the issuance of a certificate of protection of an invention,
utility solution, industrial design, trademark or appellation
of origin of goods with the respective contents and scope
of protection or the request for registration of an appellation
of origin of goods or for recognition of a well-known trademark.
2.
An application for a certificate of protection must ensure
uniformity, that is, each application shall be for a certificate
of protection of one object or of several objects of the
same kind which are used for the same purpose.
The
uniformity of objects shall be understood as follows:
Inventions
or utility solutions are uniform when they are closely related
with respect to the realization of a uniform creative intention.
Industrial
designs are uniform when they are designs for different
products used jointly in a set of products or they are alternative
expressions of the same industrial design.
An
application for a certification of protection may include
various products or services bearing the same trademark.
3.
An application for a certification of protection must satisfy
the requirements in relation to form and substance as provided
for by the Ministry of Science, Technology and Environment.
Article
12 Language
An
application for a certificate of protection and all written
communications between the applicant and the Department
of Industrial Property must be in Vietnamese. Any documents
in other languages shall only be used for purposes of comparison,
reference or examination.
Article
13 Conversion from Application for Certificate of Protection
of Invention to Application for Certificate of Protection
of Utility Solution and vice versa
1.
Within the period prior to completion of the verification
of contents, the application for a certificate of protection
of an invention may, at the request of the applicant, be
converted to an application for a certificate of protection
of an utility solution and vice versa. All data relating
to the date of submission or the priority date of the application
shall be determined pursuant to the application prior to
the conversion. The applicant must pay a fee for application
conversion.
2.
Within a time-limit of three months calculated from the
date of announcement of refusal to issue an exclusive patent,
the application for a certificate of protection of an invention
may, at the request of the applicant, be converted to an
application for a certificate of protection of an utility
solution. All data relating to the date of submission or
the priority date of the application shall be unchanged.
If the application for a certificate of protection of an
invention is so converted, the application and verification
fees paid shall not be refunded and the applicant must pay
a fee for application conversion.
Article
14 Right to Apply for Certificate of Protection
The
right to apply for a certificate of protection stipulated
in article 789 of the Civil Code shall be provided for in
detail as follows:
1.
The right to apply for a certificate of protection of an
invention, utility solution or industrial design:
(a)
In the case of an invention, utility solution or industrial
design other than the cases stipulated in (b) and (c) of
this clause, the right to apply for a certificate of protection
shall belong to the author (co-authors) or the beneficiary
of the author.
(b)
When an invention, utility solution or industrial design
is created by the author during the performance of a task
assigned by an organization of which the author is a member
or is created by the author substantially by the use of
funds or physical facilities provided by an organization,
the right to apply for a certificate of protection shall
belong to the organization assigning the task to or providing
the funds or physical facilities for the author.
(c)
In the case of an invention, utility solution or industrial
design which is created by the author during the implementation
of a hire contract with an organization or individual, the
right to apply for a certificate of protection shall belong
to the organization or individual signing the hire contract
with the author, unless otherwise agreed under the contract.
(d)
The person having the right to apply for a certificate of
protection of an invention, utility solution or industrial
design as stipulated in (a), (b) and (c) of this clause
may, on the basis of a contract for the transfer of the
right, transfer to an individual, legal entity or other
subject the right to apply, including in cases where an
application has already been filed.
2.
The right to apply for a certificate of protection of a
trademark:
(a)
An individual, legal entity or other subject lawfully engaged
in production activities has the right to apply for a certificate
of protection of a trademark for the products which he,
she or it manufactures or will manufacture.
(b)
An individual, legal entity or other subject lawfully engaged
in service activities has the right to apply for a certificate
of protection of a trademark for the services which he,
she or it renders or will render.
(c)
An individual, legal entity or other subject lawfully engaged
in commercial activities shall have the right to apply for
a certificate of protection of a trademark for the products
marketed by him, her or it but manufactured by another person
provided that the manufacturer does not use that trademark
for those products and does not object to such application.
(d)
In the case of a collective trademark, the right to apply
for a certificate of protection belongs to the individual
or legal entity representing the collective of individuals,
legal entities or other subjects who or which all comply
with the regulations on use of the relevant trademark.
(e)
The right to file an application, including an application
which has already been filed, may be transferred as in the
case of inventions, utility solutions or industrial designs.
3.
The right to apply for a certificate of protection of an
appellation of origin of goods:
(a)
An individual, legal entity or other subject engaged in
the production or business of products having the distinctive
characteristics or qualities of a country or place bearing
a geographical name which satisfy the provisions of article
7 of this Decree shall have the right to apply for a certificate
of protection of an appellation of origin of goods for his,
her or its products.
(b)
A foreign individual or legal entity being the owner of
a certificate of protection of an appellation of origin
of goods issued by a foreign country shall have the right
to apply for a certificate of the right to use the appellation
of origin of goods for his, her or its products in the market
of Vietnam.
(c)
The right to apply for a certificate of the right to use
an appellation of origin of goods is non-transferable.
(d)
All organizations and individuals engaged in business activities
within the territory bearing the geographical name corresponding
to an appellation of origin of goods and administrative
bodies responsible for management of the territory bearing
the geographical name corresponding to an appellation of
origin of goods shall be entitled to submit an application
for registration of the appellation of origin of goods.
Article
15 Exercise of Right to Apply for Certificate of Protection
1.
For the purpose of enjoying industrial property rights,
entities having the right to file an application as stipulated
in article 14 of this Decree shall file an application for
a certificate of protection with the Department of Industrial
Property. The application shall be verified by the Department
of Industrial Property in accordance with the order and
procedures provided for in this Chapter. A certificate of
protection shall be issued on the basis of the results of
the verification of the application for a certification
of protection. The scope, contents and duration of the relevant
industrial property rights shall be stated in the issued
certificate of protection.
2.
A Vietnamese individual, legal entity or other subject may
directly file an application for a certificate of protection
and carry out the related procedures or may authorize an
industrial property representative service organization
to do so.
3.
An individual or legal entity of a country which is a member
of the Paris Convention or of a country which has signed
a protection agreement with Vietnam or which accepts the
principle of reciprocity in relation to industrial property
protection may exercise the right to apply for a certificate
of protection and carry out the related procedures as follows:
(a)
A foreign individual permanently residing in Vietnam or
a foreign entity having a legal representative or an establishment
actually engaged in production or business activities in
Vietnam may directly file an application for a certificate
of protection and carry out the related procedures or may
authorize an industrial property representative service
organization to do so.
(b)
A foreign individual not permanently residing in Vietnam
or a foreign entity not having a legal representative or
an establishment actually engaged in production or business
activities in Vietnam may only file an application for a
certificate of protection and carry out the related procedures
through an authorized industrial property representative
service organization.
4.
The applicant must ensure the truthfulness of the information
relating to the right to apply for a certificate of protection,
to the applicant and to the author as stated in the application.
Upon the cancellation of validity of a certificate of protection
due to the above information being incorrect, the owner
of the certificate of protection shall be liable for any
consequences of use of the right.
Article
16 Principle of Submission of First Application
1.
Where more than one entity files an application for a certificate
of protection in respect of the same invention, utility
solution, industrial design or trademark used for products
or services of the same kind, a certificate of protection,
if issued, shall be issued to the person who is the first
to file an application.
2.
Where more than one entity files an application for a certificate
of protection in respect of the same invention, utility
solution or industrial design and those applications are
under the same preferential conditions, the Department of
Industrial Property shall request that the entities jointly
file one application in their names and a certificate of
protection, if issued, shall be issued to those entities
as co-owners of the certificate of protection. If any of
those applicants disagrees, a certificate of protection
shall not be issued.
3.
If, for one utility solution, there is one or more applications
for an exclusive patent in respect of an invention and one
or more applications for an exclusive patent, and if the
above applications have the same preferential conditions,
the Department of Industrial Property shall request the
applicants to agree on a form of protection and merge their
applications as stipulated in clause 2 of this article.
4.
Where more than one entity files an application for a certificate
of protection in respect of the same trademark and if the
applications of those entities have the same preferential
conditions, the Department of Industrial Property shall
request that those entities agree amongst themselves that
only one entity shall continue to carry out the application
procedures and that the other entities shall withdraw their
applications on reasonable conditions. If the above applicants
fail to reach an agreement, all applications for a certificate
of protection shall be rejected.
5.
Where more than one entity files an application for a certificate
of protection in respect of the same appellation of origin
of goods, when the registration of the appellation of origin
of goods is made, all those entities shall be issued a certificate
of the right to use the appellation of origin of goods.
Article
17 Preferential Rights
1.
An applicant filing an application for a certificate of
protection of an invention, utility solution, industrial
design or trademark may request to enjoy the preferential
right on the basis of the earlier filing of an application
for a certificate of protection in respect of the same object
in another country or on the basis of display at an international
exhibition officially held, or recognized as officially
held, in Vietnam or another country provided that:
(a)
The other country in which the application has been earlier
filed or the exhibition has been held is a member of the
Paris Convention or signs with Vietnam a bilateral agreement
providing for preferential rights or agrees with Vietnam
to introduce the principle of reciprocity of preferential
rights;
(b)
The applicant is a citizen, resident or person having an
establishment actually engaged in production or business
activities in a country which satisfies the conditions stated
in (a) of this clause;
(c)
The application for a certificate of protection of an invention,
utility solution, industrial design or trademark in Vietnam
is filed within the time-limit provided for in clause 2
of this article.
2.
Time-limits for submission of an application for a certificate
of protection in order to enjoy preferential rights shall
be provided for as follows:
(a)
If an applicant requests preferential rights in accordance
with the Paris Convention, the time-limit for submission
of an application for a certificate of protection in Vietnam
shall be twelve (12) months calculated from the date on
which the first application is filed in the case of an application
for a certificate of protection of an invention or utility
solution, six months calculated from the date on which the
first application is filed in the case of an application
for a certificate of protection of an industrial design
and an application for a certificate of protection of a
trademark, or six months calculated from the date on which
an object is displayed at an exhibition in the case of an
application for a certificate of protection of an invention,
utility solution, industrial design or trademark.
(b)
If an application for a certificate of protection of an
invention or utility solution is filed in accordance with
the PCT Treaty, the above time-limit shall be twenty one
(21) months in the case of an international application
in which Vietnam is designated, or thirty one (31) months
in the case of an international application in which Vietnam
is selected if such selection is made within a time-limit
of nineteen (19) months calculated from the date on which
the first application is filed.
(c)
If preferential rights are required in accordance with a
bilateral agreement or the principle of reciprocity, the
time-limit for submission of an application for a certificate
of protection shall be in compliance with such agreement.
3.
An application for a certificate of protection for the purpose
of enjoyment of preferential rights shall have the relevant
priority date being the date on which the first application
has been filed or the date on which the object has been
displayed at an exhibition or the date provided for in the
bilateral agreement.
4.
In order to enjoy preferential rights, an applicant must
refer to the international treaty which is the basis of
such preferential rights, pay a fee for application for
preferential rights, and submit a copy of the first application
certified by the body receiving the first application or
certificate of exhibition within three months from the date
on which the application for a certificate of protection
is filed. If an applicant fails to submit the above documents
within such time-limit, the application for preferential
rights shall not be considered.
5.
If an application for a certificate of protection requests
preferential rights on the basis of various dates, the calculation
of the time-limit from the date of priority shall be calculated
on the basis of the earliest priority date.
6.
An applicant may withdraw his or her application for preferential
rights in order to delay the announcement of the application
for a certificate of protection.
Article
18 Verification of Application for Certificate of Protection
1.
An application for a certificate of protection in respect
of industrial property, including international applications
in accordance with the PCT Treaty, received by the Department
of Industrial Property shall be verified with respect to
form by the Department of Industrial Property.
The
purpose of the verification of form of applications is to
check whether the applications satisfy the requirements
for a proper application; and to determine the dates of
submission of applications, the number of proper applications
and the priority date where applications are considered
proper.
2.
All applications for a certificate of protection which are
considered to be proper shall be published in the Official
Gazette of Industrial Property by the Department of Industrial
Property.
3.
The Department of Industrial Property shall verify the contents
of an application for a certificate of protection of a trademark,
industrial design and appellation of origin of goods where
the application has been considered proper and the applicant
has paid a fee for verification of contents as stipulated;
as well as the contents of an application for international
registration of a trademark in accordance with the Madrid
Agreement.
Verification
of the contents of an application for a certificate of protection
of an invention or utility solution shall only be conducted
in cases where an application has been considered proper
and at the request of the applicant or a third person provided
that the request for verification of the contents of an
application is submitted to the Department of Industrial
Property within the stipulated time-limit.
The
purpose of verification of the contents of an application
is to evaluate the possibility of protection of the object
stated in the application in accordance with the standards
of protection and to determine the relevant scope (volume)
of protection.
4.
The procedures and time-limit for verification of the form,
publication, verification of the contents of an application
for a certificate of protection shall be provided for by
the Minister of Science, Technology and Environment.
Article
19 Withdrawal of Application for Certificate of Protection
1.
Prior to a decision on issuance or non-issuance of a certificate
of protection being made, the applicant shall, at any time,
have the right to withdraw his or her application for a
certificate of protection upon giving a written declaration
to the Department of Industrial Property.
If an applicant gives a declaration on withdrawal of his
or her application for a certificate of protection through
an industrial property representation service organization,
the authorization to withdraw the application must be clearly
stated in the power of attorney.
2.
From the point of time at which the applicant declares to
withdraw his or her application for a certificate of protection,
all further procedures related to the application shall
be terminated; all fees paid in relation to further work
shall be refunded to the applicant.
3.
An application for a certificate of protection of an invention,
utility solution or industrial design which is withdrawn
or considered to be withdrawn prior to publication or an
application for a certificate of protection of a trademark
which is withdrawn or considered to be withdrawn shall all
be deemed not to have been filed with the Department of
Industrial Property.
Article
20 Right of Third Persons to Provide Opinion on Issuance
or Non-Issuance of Certificate of Protection
During
the time-limit for verification of the contents of an application
for a certificate of protection, any third person shall
have the right to provide his or her opinion on whether
a certificate of protection should be issued or not in respect
of the applications published in the Official Gazette of
Industrial Property. In the event that a third person provides
his or her opinion against the issuance of a certificate
of protection, such person must provide his or her reasons
therefor together with documents or references evidencing
those reasons.
The
opinion of the third person must be made in writing and
provided to the Department of Industrial Property and the
person providing the opinion shall not be liable for payment
of any fee as stipulated.
Article
21 Right to Request Expert Opinion
For
the purpose of ensuring that the issuance of a certificate
of protection satisfies the standards provided for by law,
during the process of verification of an application for
a certificate of protection, the Department of Industrial
Property has the right to request the opinion of specialized
bodies and experts working in relevant fields. The bodies
or experts requested by the Department of Industrial Property
to provide opinions must exercise the obligation truthfully
and objectively and shall be liable for their opinion.
Bodies
or experts requested by the Department of Industrial Property
to provide opinions shall be entitled to remuneration therefor;
the rate of remuneration shall depend on the volume and
quality of the opinion but shall not exceed forty (40) per
cent of the fee for verification of the contents of the
relevant object.
Article
22 Request for References
1.
From the date on which an application is considered to be
proper, the applicant for a certificate of protection of
an invention or utility solution shall have the right to
request the Department of Industrial Property for references
in respect of the technical status prior to the priority
date. The person requesting references shall pay a fee for
references as stipulated.
2.
Within three months from the date of receipt of the request
for reference, the Department of Industrial Property shall
deliver the references to the requesting person.
Article
23 Decision to Issue Certificate of Protection
1.
If any invention, utility solution, industrial design or
trademark satisfies the standards of protection and the
applicant has paid fees as stipulated, the Department of
Industrial Property shall issue a decision on the issuance
of a certificate of protection, which clearly states the
name and address of the applicant to be issued a certificate
of protection, the number of the application for a certificate
of protection, the date of receipt of the application, and
the relevant priority date; the name of the industrial property
representation service organization; the full name of the
authors of the invention, utility solution or industrial
design; the name of the protected object; the name and number
of the certificate of protection; the scope (volume) of
protection; the period of protection or decision on acceptance
of protection of a trademark being internationally registered
in accordance with the Madrid Agreement.
2.
If any appellation of origin of goods satisfies the standards
of protection and the applicant has paid fees as stipulated,
the Department of Industrial Property shall issue a decision
on registration of the appellation of origin of goods, which
clearly states the name and address of the applicant for
protection of the appellation of origin of goods, the number
of the application for a certificate of protection of the
appellation of origin of goods, the date of receipt of the
application; the name of the industrial property representation
service organization; the appellation of origin of goods
and relevant territories; the list of products bearing the
appellation of origin of goods, the summary of specifications
of qualities of products bearing the appellation of origin
of goods; the list (including names and addresses) of individuals
and organizations entitled to use the appellation of origin
of goods; the registration number of the appellation of
origin of goods.
3.
If any applicant for a certificate of protection of an appellation
of origin of goods satisfies the standards required for
use of the appellation of origin of goods which has been
registered, the Department of Industrial Property shall
issue a decision on the issuance of a certificate of the
right to use the appellation of origin of goods, which clearly
states the name and address of the applicant to be issued
with the certificate of the right to use the appellation
of origin of goods; the number of the application for a
certificate of protection of the appellation of origin of
goods, the date of receipt of the application; the name
of the industrial property representation service organization;
the products bearing the appellation of origin of goods
manufactured by the person who has been issued the certificate;
the appellation of origin of goods, the registration number,
the number of the certificate.
Article
24 Issuance of Certified True Copies of Certificate of Protection
and Copies of Related Documents
The
Department of Industrial Property may, at the request of
individuals, legal entities and other subjects, issue to
co-owners certified true copies of a certificate of protection,
copies of the first application for a certificate of protection
for the purpose of enjoyment of preferential rights overseas
and copies of other documents, except documents which are
considered confidential or not yet announced.
The
Department of Industrial Property may, at the request of
the owner of a certificate, issue certified true copies
of the certificate of protection to the owner of the certificate
if there are proper reasons therefor.
Persons
requesting certified true copies or copies must pay a fee
as stipulated.
Article
25 Notice of Refusal of Issuance of Certificate of Protection
In
cases other than the cases provided for in clauses 1, 2
and 3 of article 23 of this Decree, the Department of Industrial
Property shall issue a notice of refusal to issue a certificate
of protection in which the reasons therefor shall be expressly
stated. This notice shall be given to the applicants and
persons who request verification of the contents of an invention
or utility solution (where the issuance of a certificate
of protection of an invention or utility solution is refused).
Article
26 Contents of Certificates of Protection; Registrations
and Certifications of Protection
1.
The contents of a certificate of protection shall be determined
in accordance with the decision on issuance of a certificate
of protection. In addition to the above information stated
in the decision, the certificate must fully reflect the
nature and the scope (volume) of protection of the protected
right and other necessary information relating thereto.
2.
Certificates of protection shall be recorded in the National
Registration Book of Industrial Property (National Register).
3.
Certificates of protection shall be given to applicants.
If the applicant is a collective, only the first member
in the list of members of the collective shall be given
the certificate of protection and the name of that member
shall be recorded in the National Registration Book of Industrial
Property referred to in clause 2 of this article. The Department
of Industrial Property may, at the request of any other
member of the collective of which the applicant is a member,
issue certified true copies, if that member pays a fee as
stipulated.
Article
27 Complaints Regarding Decisions Relating to Creation of
Industrial Property Rights
1.
The following persons shall have the right to lodge complaints
regarding decisions or notices of the Department of Industrial
Property relating to the creation of industrial property
rights:
(a)
First complaints:
Applicants submitting an application for a certificate of
protection shall have the right to lodge complaints with
the Director of the Department of Industrial Property in
relation to the refusal to receive the application and the
refusal to issue a certificate of protection.
Applicants submitting an application for international registration
of a trademark under the Madrid Agreement shall have the
right to lodge complaints with the Director of the Department
of Industrial Property in relation to the refusal of protection
in Vietnam.
Applicants submitting an application for recognition of
a well-known trademark shall have the right to lodge complaints
with the Director of the Department of Industrial Property
in relation to the refusal to recognize a well-known trademark.
Any third person who has rights and interests directly relating
to the issuance of a certificate of protection, the acceptance
to protect an internationally registered trademark under
the Madrid Agreement or the recognition of a well-known
trademark shall have the right to lodge a complaint with
the Director of the Department of Industrial Property in
relation to such matter.
(b)
Second complaints and legal proceedings:
Where the complainant submitting the first complaint disagrees
with the decision on resolution of the complaint by the
Director of the Department of Industrial Property, he or
she shall have the right to file a complaint (namely, the
second complaint) with the Minister of Science, Technology
and Environment or to initiate legal action in accordance
with administrative legal proceedings.
2.
Complaints must be made in writing and must clearly indicate
the name (full name) and address of the complainant; the
number, signing date and contents of the decision or notice
which is the subject of complaint; the number of the related
application for a certificate of protection; the name of
the object for protection referred to in the application;
the contents of and the arguments and references evidencing
the complaint; and a detailed proposal in relation to correction
or cancellation of the decision or related conclusions.
3.
Limitation periods for lodging first complaints shall be:
·
Ninety (90) days calculated from the date on which the person
entitled to lodge a complaint receives or is aware of a
notice of refusal referred to in clause 1(a) of this article;
or
·
Five years calculated from the date of effectiveness of
the certificate of protection or international registration
and during the duration of protection of industrial property
rights with respect to a well-known trademark; in the case
of creation of an industrial property right due to an unhealthy
motive of the person requesting the creation, the limitation
period for lodging a complaint shall be the whole period
of effectiveness of the certificate of protection or international
registration.
The
limitation period for lodging second complaints shall be
thirty (30) days calculated from the date of expiry of the
time-limit for resolution of the complaint as stipulated
in clause 4 of this article in cases where the first complaint
has not been resolved, or calculated from the date on which
the person authorized to receive second complaints receives
or is aware of the decision on resolution of the first complaint.
Where
an event of force majeure or other objective interference
prevents a complainant from exercising the right to lodge
a complaint within the limitation period, the limitation
period for lodging a complaint shall exclude the duration
of such interference.
4.
The time-limits for resolution of first complaints and second
complaints shall be thirty (30) days and forty five (45)
days respectively, calculated from the date of acceptance
to resolve the complaint. In complex cases, the time-limits
for resolution of first complaints and second complaints
may be extended to forty five (45) days and sixty (60) days
respectively, calculated from the date of acceptance to
resolve the complaint. The period for amendment or addition
to a complaint file shall not be included in the above time-limit.
Complaints shall be dealt with in accordance with the order
and procedures stipulated in the Law on Complaints and Denunciations.
The complainant must pay a fee for the complaint as stipulated.
Article
28 Suspension of Validity of Certificate of Protection
1.
Any third person shall have the right to file an application
with the Department of Industrial Property to request suspension
of the validity of a certificate of protection for the reasons
referred to in clause 2 of this article.
The
application for suspension of validity of a certificate
of protection shall be resolved in accordance with the procedures
for resolution of complaints provided for in clauses 2,
3 and 4 of article 27 of this Decree.
If
consideration of an application for suspension of validity
of a certificate of protection confirms that any of the
circumstances referred to in clause 2 of this article have
arisen, the Director of the Department of Industrial Property
shall issue a decision to suspend the whole or part of the
validity of a certificate of protection and shall publish
such decision in the Official Gazette of Industrial Property
within two months calculated from the date of issuance of
the decision.
2.
The validity of a certificate of protection shall be suspended
upon the occurrence of any of the following circumstances:
(a)
Where the owner of a certificate of protection declares
to surrender the rights granted under the relevant certificate
of protection; in this case, the validity of the certificate
of protection shall be suspended from the date on which
the surrender thereof is declared.
(b)
Where the owner of a certificate of protection fails to
pay in a timely manner the fee required to maintain the
validity of the certificate of protection; in this case,
the validity of the certificate of protection shall be suspended
from the commencement of the first year of validity for
which the fee required for maintaining validity is not paid.
(c)
Where the owner of a certificate of registration of a trademark
or a certificate of use of an appellation of origin of goods
does not use the trademark or appellation of origin of goods
without any proper reason in five successive years prior
to the date on which the request for suspension of validity
is given; in this case, the validity of the certificate
of registration of a trademark or the certificate of use
of an appellation of origin of goods shall be suspended
from the first day after the above time-limit of five years.
(d)
Where the owner of a certificate of registration of a trademark
or a certificate of the right to use an appellation of origin
of goods no longer exists or ceases operation without having
a legal successor; in this case, the validity of the certificate
shall be suspended from the termination of operation or
existence of the owner of the certificate.
(e)
Where geographical factors which create distinctive characteristics
have been changed so that those distinctive characteristics
no longer exist; in this case, the validity of both the
certificate of the right to use an appellation of origin
of goods and the decision on registration of the appellation
of origin of goods shall be suspended on the same date with
the decision of the Department of Industrial Property.
(f)
Where the owner of the certificate of the right to use an
appellation of origin of goods does not have the capacity
to exercise the obligations provided for in article 47.2
of this Decree.
Article
29 Cancellation of Validity of Certificate of Protection
1.
Any third person shall have the right to file an application
with the Department of Industrial Property to request the
cancellation of validity of a certificate of protection
for the reason that the issued certificate of protection
is not in accordance with the provisions in clause 2 of
this article.
The
application for cancellation of validity of the certificate
of protection shall be resolved in accordance with the procedures
for resolution of complaints provided for in clauses 2,
3 and 4 of article 27 of this Decree.
If
consideration of the application for cancellation of validity
of a certificate of protection indicates that the issued
certificate of protection is not in accordance with law,
the Director of the Department of Industrial Property shall
issue a decision to cancel the whole or part of the validity
of a certificate of protection and shall publish such decision
in the Official Gazette of Industrial Property within two
months calculated from the date of issuance of the decision.
2.
The validity of a certificate of protection shall be fully
cancelled on the basis that the issued certificate of protection
is not in accordance with the law in force at the time of
issuance of the certificate of protection for the following
reasons:
(a)
The person being issued a certificate of protection does
not have the right to apply for a certificate of protection
and has not been assigned such right by the person who has
the right to apply for a certificate of protection.
(b)
The right to apply for a certificate of protection of an
invention, utility solution or industrial design belongs
to various individuals, legal entities or other entities
but one of them disagrees, or several disagree, with the
application for a certificate of protection.
(c)
The name of the author recorded in the certificate of protection
of an invention, utility solution or industrial design is
incorrect due to a deliberate act of the applicant.
(d)
The object being protected fails to satisfy the standards
of protection.
3.
The validit
